Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`In re Inter Partes Review of:
`U.S. Patent No. 7,757,459
`Issued: July 20, 2010
`Application No. 11/141,304
`Filing Date: May 31, 2005
`
`For: Web and Method for Making Fluid Filled Units
`
`
`)
`)
`)
`)
`)
`
`
`
`
`
`
`
`
`FILED VIA PRPS
`
`DECLARATION OF DR. ROBERT M. KIMMEL IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,757,459
`
`
`
`
`
`For ease of reference, Dr. Kimmel refers to this declaration as being in support of
`the “’459 Petition” challenging claims Nos. 1, 3 and 4 (collectively, the
`“Challenged Claims”).
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 001
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction And Qualifications ...................................................................... 1
`
`The Person Of Ordinary Skill In The Art ........................................................ 6
`
`III.
`
`Perspective Applied In This Declaration ......................................................... 7
`
`IV. Understanding Of The Governing Law ........................................................... 8
`
`Invalidity By Anticipation Or Obviousness .......................................... 8
`A.
`Interpreting Claims Before The Patent Office .................................... 10
`B.
`C. Materials Relied on in Forming My Opinion ...................................... 10
`
`V. Overview Of The ’459 Patent ........................................................................ 11
`
`A. Disclosure of the ’459 Patent .............................................................. 11
`B.
`Prosecution History of the ’459 Patent ............................................... 15
`
`VI. Summary Of Opinions ................................................................................... 18
`
`VII. Background Knowledge Of A POSA Of The ’459 Patent ............................ 19
`
`A.
`
`B.
`
`C.
`
`The Prior Art Taught Plastic Webs for Forming Inflatable,
`Easily Separable Bags, Including Inflatable Dunnage Units .............. 19
`The Prior Art Taught The Use of Gap Forming Lines in the
`Plastic Webs for Easy Separation of Adjacent Units .......................... 20
`The Prior Art Taught The Use of Guide Pins in Inflation
`Machines for Precise Alignment of Dunnage Units ........................... 23
`
`VIII. The Invalidating Prior Art Relied Upon ........................................................ 25
`
`A.
`B.
`C.
`D.
`
`Fuss (Ex. 1005) .................................................................................... 25
`Peper (Ex. 1006) .................................................................................. 27
`Simhaee (Ex. 1007) ............................................................................. 29
`Titchenal (Ex. 1008) ............................................................................ 31
`
`IX. Motivation To Combine The Prior Art .......................................................... 32
`
`- i -
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 002
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`
`A. Motivation to Combine Fuss with Peper ............................................. 32
`1.
`A POSA at the Time Would Have No Reason to Doubt
`that Combining Fuss with Peper Would Succeed ..................... 35
`B. Motivation to Combine Fuss with Peper and Simhaee ....................... 36
`1.
`A POSA at the Time Would Have No Reason to Doubt
`that Combining Fuss with Peper and Simhaee Would
`Succeed ..................................................................................... 38
`C. Motivation to Combine Fuss with Titchenal ....................................... 38
`1.
`A POSA at the Time Would Have No Reason to Doubt
`that Combining Fuss with Titchenal Would Succeed ............... 41
`D. Motivation to Combine Fuss with Titchenal and Simhaee ................. 41
`1.
`A POSA at the Time Would Have No Reason to Doubt
`that Combining Fuss with Titchenal and Simhaee Would
`Succeed ..................................................................................... 42
`
`X.
`
`Claim Constructions ...................................................................................... 43
`
`XI. The Challenged Claims Are Obvious ............................................................ 43
`
`C.
`
`A. Overview ............................................................................................. 43
`B.
`Ground 1: Claim 1 is Invalid under 35 U.S.C. § 103 on the
`Ground That It Is Rendered Obvious by Fuss in View of Peper ........ 44
`1.
`Claim 1 ...................................................................................... 44
`Ground 2: Claims 3 and 4 are Invalid under 35 U.S.C. § 103 on
`the Ground That They Are Rendered Obvious by Fuss in View
`of Peper and the Knowledge of a Person of Ordinary Skill in
`the Art .................................................................................................. 52
`1.
`Claim 3 ...................................................................................... 52
`2.
`Claim 4 ...................................................................................... 54
`D. Ground 3: Claims 3 and 4 are Invalid under 35 U.S.C. § 103 on
`the Ground That They Are Rendered Obvious by Fuss in View
`of Peper and Simhaee .......................................................................... 56
`1.
`Claim 3 ...................................................................................... 56
`2.
`Claim 4 ...................................................................................... 58
`
`- ii -
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 003
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`
`E.
`
`Ground 4: Claim 1 is Invalid under 35 U.S.C. § 103 on the
`Ground That It Is Rendered Obvious by Fuss in View of
`Titchenal .............................................................................................. 61
`1.
`Claim 1 ...................................................................................... 61
`Ground 5: Claims 3 and 4 are Invalid under 35 U.S.C. § 103 on
`the Ground That They Are Rendered Obvious by Fuss in View
`of Titchenal and the Knowledge of a Person of Ordinary Skill
`in the Art .............................................................................................. 70
`1.
`Claim 3 ...................................................................................... 70
`2.
`Claim 4 ...................................................................................... 70
`G. Ground 6: Claims 3 and 4 are Invalid under 35 U.S.C. § 103 on
`the Ground That They Are Rendered Obvious by Fuss in View
`of Titchenal and Simhaee .................................................................... 71
`1.
`Claim 3 ...................................................................................... 71
`2.
`Claim 4 ...................................................................................... 72
`
`F.
`
`XII. Secondary Considerations Fail To Overcome The Strong Evidence Of
`Obviousness ................................................................................................... 73
`
`XIII. Conclusion ..................................................................................................... 73
`
`- iii -
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 004
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`
`EXHIBIT LIST
`
`1001 U.S. Patent No. 7,757,459 (“the ’459 patent”)
`
`1002 File History Excerpts for the ’459 patent
`
`1003 Declaration of Robert M. Kimmel, Sc.D. in Support of Petition for Inter
`Partes Review of U.S. Patent No. 7,757,459
`
`1004 Curriculum Vitae of Robert M. Kimmel, Sc.D.
`
`1005 U.S. Patent Application No. 09/488,622, “System, Method and Material
`for Making Pneumatically Filled Packing Cushions,” filed on January,
`2001, published August 16, 2001 (“Fuss”)
`
`1006 U.S. Patent Application No. 10/295,625, “Inflatable Packaging System,”
`filed on November 15, 2002, published May 22, 2003 (“Peper”)
`
`1007 U.S. Patent No. 5,752,666, “Plastic Bag Roll,” filed on June 20, 1997,
`issued May 19, 1998 (“Simhaee”)
`
`1008 U.S. Patent No. 3,791,573, “Bag Construction,” filed on November 15,
`1971, issued February 12, 1974 (“Titchenal”)
`
`1009 U.S. Patent No. 5,340,632, “Padding Element for the Packing of Objects
`and Device for the Manufacturing of the Same,” filed on April 19, 1992,
`issued August 23, 1994 (“Chappuis”)
`
`1010 U.S. Patent No. 3,033,257, “Bag Forming Tube and Method of Forming
`and Accumulating the Same,” filed on August 21, 1957, issued May 8,
`1962 (“Weber”)
`
`1011 U.S. Patent No. 3,173,601, “Dispensing Sheet Material in Predetermined
`Lengths,” filed on August 23, 1962, issued March 16, 1965 (“Osborn”)
`
`1012 U.S. Patent No. 3,559,874, “Series Bag Construction,” filed on May 8,
`1968, issued February 2, 1971 (“Titchenal II”)
`
`
`
`- iv -
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 005
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`
`I, Dr. Robert M. Kimmel, resident of Simpsonville, South Carolina, hereby
`
`declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`1.
`
`I have been retained by Free-Flow Packaging International, Inc.
`
`(“Petitioner”) to provide my opinions concerning the invalidity of claims 1, 3 and 4
`
`of U.S. Patent No. 7,757,459 (“the ’459 patent”) (Ex. 1001) in support of Petition
`
`for Inter Partes Review of U.S. Patent No. 7,757,459 (the “’459 Petition”). I have
`
`previously been retained by the Petitioner to provide an opinion as to the validity
`
`of U.S. Patent Nos. 7,550,191, 7,767,288, 7,897,220, 8,425,994, and 8,357,439 in
`
`petitions for Inter Partes Review accorded case numbers IPR2016-00350,
`
`IPR2016-00351, IPR2016-00444, IPR2016-00445, and IPR2016-00447 (to be filed
`
`concurrently) respectively.
`
`2.
`
`I received a Bachelor of Science degree in Materials Engineering in
`
`1964, a Master of Science degree in 1965, a Materials Engineer degree in 1967,
`
`and a Doctor of Science degree in Materials Engineering in 1968, all from the
`
`Massachusetts Institute of Technology.
`
`3.
`
`I have worked in the plastics and packaging industry and taught
`
`courses related to packaging for over fifty years. I was employed by the Hoechst
`
`Celanese Corporation and its predecessor companies from 1968 through 1998. I
`
`held a variety of technical and marketing positions of increasing responsibility,
`
`- 1 -
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 006
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`including over 25 years in positions relating to packaging. Among my
`
`responsibilities in the later stages of my career was development of materials, and
`
`processes for specialized packaging applications.
`
`4.
`
`In 1999, I joined the faculty of the Packaging Science Department at
`
`Clemson University in Clemson, South Carolina. In December 2006, I was
`
`appointed Chair of the Packaging Science Department, a position I held until
`
`September 2010, when the Department was merged with another department in the
`
`College to form a larger entity.
`
`5.
`
`In addition to my other responsibilities, I now serve as Director of the
`
`Packaging Science Program. In this role, I am responsible for curriculum
`
`development and assessment for the Program. In addition, I develop and manage
`
`relationships with companies around the world who interface and support research
`
`and service work with the Packaging Science Program. These companies cover the
`
`entire range of industries involved with the packaging industry, including materials
`
`suppliers, machinery suppliers, converters of materials into containers, and end
`
`users.
`
`6. My teaching responsibilities in the Packaging Science Department
`
`have included developing and teaching two core curriculum courses: Applications
`
`of Polymers in Packaging and Converting for Flexible Packaging. The term
`
`project for one of those courses is an analysis of a patent related to plastics and
`
`- 2 -
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 007
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`packaging. I have also developed and taught graduate courses in flexible
`
`packaging and semi-rigid/rigid packaging. The subject matter of all of these
`
`courses includes selection, design and manufacture of materials for packaging
`
`applications.
`
`7.
`
`Among the courses I teach at Clemson is the capstone course of the
`
`Packaging Science curriculum, titled Package Design and Development. This
`
`course focuses on a systematic procedure for package design. This course explains
`
`that one begins with defining the needs and constraints of the desired package
`
`through research and discussion with the ultimate package users. Next, the course
`
`discusses how and why to characterize the desired product to be packaged using
`
`available documentation and scientific testing, such as the characteristics of the
`
`product that will determine its shelf life, the chemical and physical attributes of the
`
`product, the environment in which the package will be sold or opened, and the
`
`physical and environmental conditions that the package will experience during the
`
`transport and distribution cycle. The course then explains how, based on all of this
`
`information, the package is designed in a multi-stage process: distribution design,
`
`geometric design, structural design, shelf-life design, visual design, and packaging
`
`process design. The course then explains how to construct and test prototype
`
`packages. Costs are detailed and specifications for the package and packaging
`
`materials are written. In the course, I guide teams of students through this process
`
`- 3 -
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 008
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`using real-world problems.
`
`8.
`
`The end result of this process is the design of a packaging system that
`
`fulfills the four primary functions of a package in a cost effective way: (1)
`
`containment of the product, (2) preservation and protection of the product through
`
`distribution and storage, (3) identification and marketing of the product, and (4)
`
`convenience of use, including providing access to the product. The basic principle
`
`of this course and, in fact, the basic principle of the Department’s entire
`
`undergraduate curriculum is that the process of designing a package is the same for
`
`any type of article to be packaged.
`
`9.
`
`During the past twelve years of my involvement with this course, I
`
`have advised and guided more than 120 industry-sponsored team projects to
`
`address the design, prototyping and testing of packaging solutions for a diverse
`
`assortment of problems including, for example, frozen layer cakes, carpet cleaner,
`
`golf club wipes, synthetic materials for nerve repair, M&Ms, BMW doors, electric
`
`ranges, and large cartridge filters. The same systematic design process was applied
`
`to each of these problems.
`
`10.
`
`In 2004, one of my colleagues and I co-founded the Clemson
`
`University Center for Flexible Packaging. Since its founding, I have served as
`
`Director of the Center. The Center is an academic-industry consortium dedicated
`
`to teaching, research, and service in flexible packaging. Members include
`
`- 4 -
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 009
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`materials suppliers, converters, and end-users.
`
`11.
`
`I have and continue to serve as a technical consultant to a wide variety
`
`of organizations and companies in the plastics and packaging fields. Among my
`
`clients are leading manufacturers of consumer goods who have packaging and
`
`cushioning needs.
`
`12.
`
`I am the author or co-author of dozens of articles relating to plastics
`
`and materials engineering, multi-layer or multi-component plastic materials for
`
`packaging, biopolymers (i.e., plastics derived from biological sources), and other
`
`subjects in packaging. I have also published a book on the environmental impact
`
`of plastic and other grocery bags in the United States, and contributed chapters to
`
`other books related to various issues in packaging.
`
`13. Over the course of my five decade-long career, I have presented at
`
`numerous scientific and
`
`industry conferences,
`
`including The International
`
`Association of Packaging Research Institutes (“IAPRI”) conferences across the
`
`world. I was the program chair for Flex-Pack ’99 Europe conference in 1999 and
`
`the organizer and program chair for the 24th IAPRI Symposium on Packaging in
`
`May 2009. I have served for the past two years as a member of the three-person
`
`judging panel for the Flexible Packaging Achievement Awards of the Flexible
`
`Packaging Association.
`
`14.
`
`I have been recognized for my work in the field of packaging by my
`
`- 5 -
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 010
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`peers and am a member of the Institute of Packaging Professionals and the Society
`
`of Plastics Engineers.
`
`15.
`
`I am a named inventor on six U.S. and four foreign patents relating to
`
`polymers (i.e., plastics), six of which relate to multi-component plastics for
`
`packaging applications.
`
`16. My curriculum vitae is attached as Exhibit 1004. I am being
`
`compensated for the time I have spent on this matter at my standard consulting rate
`
`of $450 per hour. My compensation is not in any way contingent upon the
`
`outcome of any Inter Partes Review. I have no financial or personal interest in the
`
`outcome of this proceeding or any related proceeding or litigation.
`
`II. THE PERSON OF ORDINARY SKILL IN THE ART
`17. The purported inventions of the ’459 patent involve an understanding
`
`of several common concepts in the field, such as the materials typically used for
`
`packaging and cushioning, the advantages and disadvantages of known filling and
`
`sealing techniques, and the standard approaches to separating individual items or
`
`packages that are created as multiple units. A “person of ordinary skill in the art”
`
`(“POSA”) with this knowledge and understanding thus has: a Bachelors-level
`
`degree in materials science, materials engineering, packaging science, or a
`
`comparable discipline and at least two years of experience as a packaging engineer
`
`or two years of experience as an engineer in developing and testing cushioning and
`
`- 6 -
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 011
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`packaging applications. This description is approximate, and a higher level of
`
`education or skill might make up for less experience, and vice-versa.
`
`III. PERSPECTIVE APPLIED IN THIS DECLARATION
`18.
`I believe that I would have qualified as at least a person of ordinary
`
`skill in the art in June 2004, and that I have a sufficient level of knowledge,
`
`experience and education to provide an opinion in the field of the ’459 patent.
`
`19. Specifically, my own level of skill likely exceeds that of one of
`
`ordinary skill in the art as of June 2004. Regardless, I am well acquainted with the
`
`actual performance and capabilities of a POSA as defined above in Section II.
`
`This is because, during the relevant timeframe, I collaborated with a large number
`
`of engineers and packaging professionals having the requisite education and
`
`experience. I observed and collected data on projects performed by myself and
`
`other engineers and packaging professionals in order to study the advances in
`
`packaging science. I also regularly attended and presented at packaging
`
`professionals’ conferences where techniques and improvements were shared
`
`among the community.
`
`20. My testimony in this declaration is given from the perspective of a
`
`person of ordinary skill in the art as of June 2004, and for some time before then,
`
`unless otherwise specifically indicated. This is true even if the testimony is given
`
`in the present tense and even though my skill level likely exceeds that of one of
`
`- 7 -
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 012
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`ordinary skill.
`
`IV. UNDERSTANDING OF THE GOVERNING LAW
`
`A.
`21.
`
`Invalidity By Anticipation Or Obviousness
`
`I have been informed by counsel for Petitioner that a patent claim is
`
`invalid if it is anticipated or obvious in view of the prior art. I have been further
`
`informed by counsel for Petitioner that a finding of invalidity requires that a claim
`
`be anticipated or obvious from the perspective of a POSA, at the time the invention
`
`was made.
`
`22.
`
`In analyzing obviousness, I have been informed by counsel for
`
`Petitioner that it is important to understand the scope of the claims, the level of
`
`skill in the relevant art, the scope and content of the prior art, and the differences
`
`between the prior art and the claims.
`
`23.
`
`I have also been informed by counsel for Petitioner that when there is
`
`some recognized reason to solve a problem, and there are a finite number of
`
`identified, predictable solutions, a POSA has good reason to pursue the known
`
`options within his or her technical grasp. I have been informed by counsel for
`
`Petitioner that if such an approach leads to the anticipated success, it is likely the
`
`product not of innovation but of ordinary skill and common sense. I have been
`
`informed by counsel for Petitioner that in such a circumstance, when a patent
`
`simply arranges old elements with each performing the same function it had been
`
`- 8 -
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 013
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`known to perform and yields no more than one would expect from such an
`
`arrangement, the combination is obvious.
`
`24.
`
`I have also been informed by counsel for Petitioner that if a technique
`
`has been used to improve one device, and a POSA would recognize that it would
`
`improve similar devices in the same way, using the technique is obvious unless its
`
`actual application is beyond his or her skill. I have been informed by counsel for
`
`Petitioner that there may also be a specific teaching, suggestion or motivation to
`
`combine any first prior art reference with a second prior art reference. I have also
`
`been informed by counsel for Petitioner that such a teaching, suggestion, or
`
`motivation to combine the first prior art reference with the second prior art
`
`reference can be explicit or implicit in the first or second prior art references.
`
`25.
`
`I have also been informed by counsel for Petitioner that certain
`
`factors, sometimes known as “secondary considerations,” must be considered, if
`
`present, in an obviousness determination. I have been informed by counsel for
`
`Petitioner that these secondary considerations include: (i) long-felt need, (ii)
`
`unexpected results, (iii) skepticism of the invention, (iv) teaching away from the
`
`invention, (v) commercial success, (vi) praise by others for the invention, and (vii)
`
`copying by other companies.
`
`26.
`
`I have also been informed by counsel for Petitioner that the earliest
`
`patent application leading to the ’459 patent was filed on June 1, 2004. I have
`
`- 9 -
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 014
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`therefore analyzed obviousness as of that day or somewhat before, understanding
`
`that as time passes, the knowledge of a POSA will increase.
`
`B.
`27.
`
`Interpreting Claims Before The Patent Office
`I have been informed by counsel for Petitioner that “Inter Partes
`
`Review” is a proceeding before the United States Patent & Trademark Office
`
`(“Patent Office”) for evaluating the validity of an issued patent claim. I have been
`
`informed by counsel for Petitioner that claims in an Inter Partes Review are given
`
`their broadest reasonable interpretation that is consistent with the patent
`
`specification.
`
`28.
`
`I have been informed by counsel for Petitioner that a patent’s
`
`“specification” includes all the figures, discussion, and claims within the patent
`
`document. I have also been informed that the Patent Office will look to the
`
`specification to see if there is a definition for a claim term, and if not, will apply
`
`the broadest reasonable interpretation from the perspective of a person of ordinary
`
`skill in the art.
`
`C. Materials Relied on in Forming My Opinion
`29.
`In forming my opinions herein, I have relied on the ’459 patent’s
`
`claims, disclosure, and file history, on the prior art exhibits to the ’459 Petition,
`
`and other materials cited in this declaration, the knowledge of the POSA in the
`
`relevant timeframe, and my own experience and expertise.
`
`- 10 -
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 015
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`V. OVERVIEW OF THE ’459 PATENT
`
`A. Disclosure of the ’459 Patent
`30. The ’459 patent uses complex vocabulary to describe an otherwise
`
`simple process: inflating and sealing a string of preformed, separable, plastic bags
`
`to create packaging cushions (“dunnage units”). The ’459 patent admits that
`
`“[m]achines for forming and filling dunnage units from sheets of plastic are
`
`known” and that “[m]achines which produce dunnage units by inflating preformed
`
`pouches in a preformed web are also known.” (Ex. 1001 at 1:23-26.) “Typically,
`
`the entire length of sides of adjacent dunnage units formed from a preformed web
`
`are connected by perforations.” (Id. at 1:28-30.)
`
`31. According to the ’459 patent, the perforations connecting adjacent
`
`dunnage units were problematic because workers had to “carefully tear[] the
`
`dunnage units apart to separate the adjacent dunnage units.” (Ex. 1001 at 1:28-33.)
`
`Furthermore, according to the ’459 patent, the prior art plastic webs suffered from
`
`undesirable stresses and “foreshortening” problems. (Id. at 3:59-4:23.) As
`
`recognized in the ’459 patent, foreshortening refers to the tendency of the sides of
`
`the individual plastic pouches making up the plastic webs to draw inward and
`
`shorten upon inflation. (Id. at 3:59-4:23.) According to the ’459 patent, because
`
`the sides of the prior art plastic pouches were constrained by their attachment to
`
`adjacent plastic pouches, the degree of inflation was limited and upon inflation,
`
`- 11 -
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 016
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`foreshortening caused wrinkles to develop in the layers of plastic making up the
`
`web. (Id. at 3:59-4:23.) These wrinkles could extend into the dunnage unit’s
`
`inflation opening and ultimately compromise the seal at that opening. (Id. at 4:9-
`
`23.)
`
`32. The ’459 patent purports to disclose methods for forming dunnage
`
`units from an improved plastic web that allegedly facilitates separation of adjacent
`
`pouches and reduces the undesirable foreshortening stresses in the constrained
`
`prior art webs. (Ex. 1001 at 1:37-2:40, 4:24-32.) The ’459 allegedly provides a
`
`“gap [that] develops between each pair of adjacent” dunnage units. (Id. at 1:40-
`
`41.) That gap purportedly “makes separating adjacent pouches easier and more
`
`efficient than with existing interconnected arrays of dunnage units.” (Id. at 1:37-
`
`2:40.) Thus, “[t]o separate a pair of adjacent dunnage units 12, a worker simply
`
`inserts an object or objects, such as a hand or hands, into the gap 13 and pulls one
`
`dunnage unit 12' away from the other dunnage unit 12.” (Id. at 3:51-55.) In the
`
`alternative, a “machine can be configured to insert an object between adjacent
`
`dunnage units 12' and apply a force to separate the units.” (Id. at 3:56-58.)
`
`Furthermore, the ’459 patent asserts that the gap “allows foreshortening of the
`
`connected pouch sides and thereby reduces the undesirable stresses that are
`
`introduced during inflation as compared with prior art webs.” (Id. at 4:26-29.)
`
`Specifically, the gap “maintains the inflation . . . opening substantially free of
`
`- 12 -
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 017
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`wrinkles as the inflation opening is sealed.” (Id. at 4:30-32; see also id. at 5:47-50,
`
`6:56-57.)
`
`33. The disclosed plastic webs purportedly consist of superposed top and
`
`bottom layers of plastic connected to each other on all sides by either a fold or a
`
`transverse seal, creating dunnage units. (Ex. 1001 at 3:3-15.) Before inflation,
`
`each pouch is comprised of “an elongate flattened thermoplastic tube having an
`
`inflation edge and an opposite edge.” (Id. at Abstract.) The specification states
`
`that “[t]he tube includes spaced transverse seals that define sides of pouches.” (Id.)
`
`34. Figure 7A of the ’459 patent (annotated and reproduced below)
`
`depicts such a web, which consists of more than one inflatable pouch (annotated in
`
`teal as the “Inflatable Pouch” and “10” in Figure 7A below) having a top elongated
`
`layer of plastic (14) superposed onto a bottom layer of plastic (16), an inflation
`
`edge (annotated in green as the “Inflation Edge” and “18” in Figure 7A below),
`
`and an opposite edge (annotated in red as the “Opposite Edge” and “20” in Figure
`
`7A below). (Ex. 1001 at 2:66-3:17.) Also shown are the transverse seals that
`
`define the sides of the pouches (annotated in yellow as the “Transverse Seal” and
`
`“22” in Figure 7A below). (Id. at 2:66-3:17.)
`
`- 13 -
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 018
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`
`
`
`35. Figure 7A also depicts a guide pin 56 (annotated in navy as the
`
`“Guide Pin” and “56” above) inserted into the web “in a pocket bounded by the top
`
`and bottom layers 14, 16 of the inflation edge 18, and the transverse seals 22”
`
`(annotated in gray as the “Inflation Pocket”). (Ex. 1001 at 6:18-20.) The guide pin
`
`allegedly “aligns the web as it is pulled through the machine.” (Id. at 6:20-21.)
`
`36. Additionally, the ’459 patent describes “a gap forming area”
`
`(annotated in purple as the “Gap Forming Area” and “28” in Figure 7A above) that
`
`extends between lines of perforations (annotated in blue as the “Surrounding
`
`Perforations” and “24” and “26” in Figure 7A above). (Ex. 1001 at 3:28-29, Fig.
`
`1.) As shown in Figure 3 of the ’459 patent (annotated and reproduced below),
`
`- 14 -
`
`Free-Flow Packaging Int'l, Inc.
`Exhibit 1003
`Page 019
`
`

`
`Decl. of Dr. Robert M. Kimmel in Support of Petitioner’s Petition for Inter Partes
`Review of U.S. Patent No. 7,757,459
`
`these gap forming lines (annotated in purple as the “Gap Forming Lines” and “22,”
`
`“38,” “40”, “43a,” and “43b” in Figure 3 below) open to form a gap when the
`
`pouches are inflated and sealed (annotated in pink as the “Parallel Seal” and “42”
`
`below). (Id. at 3:30-31, Fig. 1.) According to the ’459 patent, it is this “gap”
`
`which both makes separation of adjacent dunnage units easier and reduces the
`
`stresses caused by foreshortening. (Id. at 3:3-21, Fig. 1.)
`
`
`
`(Id. at 4:28-30, Fig. 3.) “The gap forming area 28 can take on a number of
`
`embodiments.” (Id. at 3:36-38.)
`
`B.
`37.
`
`Prosecution History of the ’459 Patent
`
`I have reviewed the prosecu