UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Borealis AG
`Petitioner
`v.
`Berry Plastics Corporation
`Patent Owner
`
`Case IPR2016-00564
`Patent 8,883,280
`
`DECLARATION OF KRISHNAMURTHY JAYARAMAN, PH.D.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Page 1 of 199
`
`BOREALIS EXHIBIT 1034
`
`

`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION ........................................................................................... 6
`
`II. QUALIFICATIONS ........................................................................................ 6
`
`III.
`
`INFORMATION CONSIDERED .................................................................11
`
`IV. LEGAL STANDARD ...................................................................................19
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART ........................................21
`
`VI. PRIORITY DATES .......................................................................................21
`
`VII. OVERVIEW OF THE ’280 PATENT ..........................................................24
`
`A.
`
`B.
`
`The HMS-PP Formulations .................................................................24
`
`Structures Made From HMS-PP Formulations and Their
`Properties .............................................................................................27
`
`VIII. CLAIM CONSTRUCTION ..........................................................................29
`
`A.
`
`B.
`
`C.
`
`D.
`
`Preamble (claim 1) ..............................................................................29
`
`“cell aspect ratio in at least one direction” (claims 16 and 17) ...........30
`
`“recyclable” (claim 34) .......................................................................31
`
`“strip” (claims 32, 33, 61 and 63) .......................................................32
`
`IX. THE PRIOR ART DISCLOSES AND RENDERS OBVIOUS
`CLAIMS 1, 15-36, 40, 42, 43, 54-61, 63, AND 64 OF THE ’280
`PATENT ........................................................................................................33
`
`A.
`
`The Prior Art Discloses or Renders Obvious Parent
`Formulation Claims 1, 36, 40, 42, and 54 ...........................................33
`
`1.
`
`2.
`
`Anticipation of Claim 1: Formulation claim.............................33
`
`Obviousness of Claims 1 and 54: Formulation Claims ............37
`
`a.
`
`Preamble .........................................................................37
`
`
`
`
`
`Page 2 of 199
`
`

`
`
`
`
`
`b.
`
`c.
`
`d.
`
`HMS-PP ..........................................................................37
`
`Slip agent ........................................................................42
`
`Other formulation elements ............................................45
`
`3.
`
`Claims 36, 40, and 42: Chemical Blowing Agent and
`Catalyst ......................................................................................48
`
`B. Density Claim 20 is Disclosed by EP ’716 .........................................51
`
`C.
`
`Property Claims 15-19, 21-35, 43, and 56-60 Would Have Been
`Obvious................................................................................................52
`
`1.
`
`2.
`
`3.
`
`4.
`
`The structure having average cell size and average cell
`aspect ratio of claims 15-17 and 43 would have been
`obvious over EP ’716 in view of Park and Barger ...................52
`
`a.
`
`b.
`
`Recited cell aspect ratios would have been obvious ......55
`
`Recited cell sizes would have been obvious...................58
`
`The structure having melting temperature, crystallization
`temperature, and degree of crystallinity of claims 18 and
`19 would have been obvious over EP ’716 in view of
`Tabatabaei and the general knowledge in the art as
`evidenced by Naguib and PP Handbook...................................61
`
`a.
`
`b.
`
`There was motivation to control the claimed
`properties ........................................................................63
`
`The claimed numerical ranges and values would
`have been obvious by routine optimization of prior
`art ranges .........................................................................65
`
`The structure having density of claims 21 and 22 would
`have been obvious over EP ’716 in view of Park .....................73
`
`The structure having microwavability of claim 23 would
`have been obvious over EP ’716 ...............................................77
`
`a.
`
`Routine optimization of the HMS-PP formulation
`and structure ....................................................................79
`
`
`
`Page 3 of 199
`
`

`
`
`
`
`
`b.
`
`Detailed account of estimation of maximum
`tolerable microwave energy ............................................83
`
`5.
`
`The structure having the maximum exterior surface
`temperature of claim 31 would have been obvious over
`EP ’716 ......................................................................................86
`
`a. Motivation and routine methods to form a foam
`structure with the claimed thermal insulation ................90
`
`b.
`
`Detailed account of estimation of maximum
`exterior surface temperature ...........................................95
`
`The structure having thermal conductivity of claims 32
`and 33 would have been obvious over EP ’716 in view of
`Antunes and the general knowledge in the art as
`evidenced by Martínez-Díez ...................................................100
`
`a.
`
`b.
`
`Routine optimization of thermal conductivity
`would have been obvious .............................................102
`
`Detailed account of estimation of thermal
`conductivity at 21 ºC and 93 ºC ....................................107
`
`The structure being recyclable according to claim 34
`would have been obvious over EP ’716 ..................................113
`
`The structure having printable surface of claim 35 would
`have been obvious over EP ’716 in view of US ’296 .............115
`
`6.
`
`7.
`
`8.
`
`9. Mechanical properties of foam structure in claims 24-30
`and 55-60 would have been obvious .......................................121
`
`a.
`
`b.
`
`c.
`
`The structure having puncture resistance of claim
`25 would have been obvious over EP ’716 ..................123
`
`The structure having tear resistance of claims 26-
`30 would have been obvious over EP ’716 in view
`of Eichbauer ..................................................................131
`
`The structure having rigidity of claims 24 and 54-
`60 would have been obvious over EP ’716 in view
`
`
`
`Page 4 of 199
`
`

`
`
`
`of Borealis 2010 Webpage or 2010 Brochure, and
`further in view of Sheppard and PP Handbook ............141
`
`D.
`
`Claims 61, 63 and 64 Would Have Been Obvious over EP ’716
`in View of Borealis 2010 Webpage or 2010 Brochure, and
`Further in View of US ’107 ...............................................................168
`
`X. Declaration ...................................................................................................175
`
`
`
`
`
`
`
`Page 5 of 199
`
`

`
`
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained on behalf of Borealis AG (“Petitioner”) as an
`
`independent expert consultant in this proceeding before the United States Patent
`
`and Trademark Office. Although I am being compensated at my usual rate of $300
`
`per hour for the time I spend on this matter, no part of my compensation depends
`
`on the outcome of this proceeding, and I have no other interest in this proceeding.
`
`2.
`
`I understand that this proceeding involves U.S. Patent No. 8,883,280
`
`(“the ’280 patent”) (Ex. 1001).
`
`3.
`
`I have been asked to consider whether the subject matter of claims
`
`1, 15-36, 40-43, 54-61, 63, and 64 of the ’280 patent was known or would have
`
`been obvious to a person of ordinary skill in the art. My opinions are set forth
`
`below.
`
`4.
`
`I have previously authored a Declaration regarding the ’280 patent,
`
`including some of the same claims, in IPR2016-00235. Ex. 1002 (Declaration of
`
`Krishnamurthy Jayaraman, Ph.D. in IPR 2016-00235, Exhibit 1002.) I continue to
`
`maintain my opinions stated in that Declaration in IPR2016-00235.
`
`II. QUALIFICATIONS
`
`5.
`
`A copy of my resume is attached as Appendix A and includes details
`
`of my educational, professional, research, and employment credentials. A
`
`
`
`
`
`Page 6 of 199
`
`

`
`
`
`summary, which focuses on my experience relating to polypropylene blends and
`
`polymer foam processing, is set forth below.
`
`6.
`
`I am a Professor in the Chemical Engineering & Materials Science
`
`Department at Michigan State University in East Lansing, Michigan. For the last
`
`40 years, I have taught courses in chemical engineering and polymer sciences,
`
`including structure, processing, and properties of polymers and composites.
`
`7.
`
`I obtained a Bachelor of Science degree in chemical engineering from
`
`Indian Institute of Technology in Kanpur, India in 1971. I obtained a Ph.D. in
`
`Chemical Engineering from Princeton University, New Jersey, USA, in 1975.
`
`8.
`
`After receiving my Ph.D., I was appointed as a Visiting Assistant
`
`Professor in the department of chemical engineering at University of Washington
`
`in Seattle, WA, between 1975 and 1976. In 1976, I joined the Chemical
`
`Engineering Department at Michigan State University as an Assistant Professor.
`
`Between 1981 and 1993, I was promoted to Associate Professor, then to Professor
`
`in the same department. Between 1985 and 1986, I was awarded a year-long
`
`National Research Council Senior Research Associateship at the National Institute
`
`of Occupational Safety and Health (NIOSH) laboratory in Morgantown, WV. In
`
`1999, I was recognized as the Withrow Distinguished Scholar in the College of
`
`Engineering at Michigan State University. I have supervised the thesis research of
`
`20 doctoral students and 18 master’s students.
`
`
`
`
`
`Page 7 of 199
`
`

`
`
`
`9. My areas of expertise include melt processing, solid-state processing,
`
`and rheological, thermal, and mechanical characterization of polymeric blends,
`
`polymer foams, polymer composites and nanocomposites, and thermoplastic
`
`elastomers.
`
`10. During my research career, I have made many contributions to the
`
`development of polypropylene blends and structures suitable for various
`
`applications. I have co-authored over seventy publications, including publications
`
`related to polypropylene, polyethylene, their copolymers and thermoplastic
`
`polyolefin (TPO) blends, and also publications related to polypropylene foams and
`
`polypropylene nanocomposites.
`
`11.
`
`I am a co-inventor of four patents, and one patent application
`
`(currently allowed) on polypropylene foams with nanoclay. I am also a
`
`co-inventor of two provisional patent applications on polypropylene films and
`
`foams.
`
`12.
`
`I also have delivered invited lectures and keynote speeches, focusing
`
`on polypropylene, polypropylene blends, polypropylene foams and
`
`nanocomposites, including:
`
`• “Extrusion of Oil Extended Thermoplastic Vulcanizates,” in the
`
`Symposium on Elastomers and Elastomer Processing at the 20th
`
`
`
`
`
`Page 8 of 199
`
`

`
`
`
`International Polymer Processing Society Meeting, Akron, OH, in
`
`2004;
`
`• “Extensional Melt Flow of Polypropylene-Layered Silicate
`
`Nanocomposites with Variations in Coupling Agent, Loading and
`
`Temperature,” in the Symposium on Nanostructured Materials at the
`
`24th International Polymer Processing Society Meeting, Salerno, Italy,
`
`in 2008; and
`
`• “Development of Crystalline Texture during Die-Drawing of
`
`Expanded Polypropylene-Talc Composites and Neat Polypropylene,”
`
`in the Gunter Gottstein Symposium on Texture of Materials at
`
`Thermec ’13, Las Vegas, USA, in 2013.
`
`13.
`
`I have also collaborated with and consulted for private companies,
`
`government agencies, research organizations, and attorneys’ clients, such as
`
`ExxonMobil Chemical Co., Dow Chemical Co., Lyondell-Basell, Advanced
`
`Elastomer Systems, Siemens, BASF, Summit Polymers, North Coast Innovation,
`
`Petoskey Plastics, Nanocor, ViChem Industries, and Eovations LLC. I have also
`
`collaborated with the US Army Tank Automotive Command on the manufacturing
`
`of polymer composite products for military applications.
`
`14.
`
`In my consulting activities, my work has included teaching related to
`
`rheological tests to understand flow and deformation, as well as flow-induced
`
`
`
`
`
`Page 9 of 199
`
`

`
`
`
`microstructure of polypropylene, polyethylene, copolymers of ethylene and
`
`propylene with other olefins and TPO as well as their foams, composites, and
`
`nanocomposites. I have also provided technical analysis of flow marks in injection
`
`molding, processing, rheology, and properties of polymer-clay nanocomposites,
`
`foamed polymers, and solid state die-drawing of expanded and oriented polymer
`
`composites.
`
`15.
`
`I have served in various leadership positions in the field of polymer
`
`science. From 1992 to 1997, I served as a Research Thrust Leader in the National
`
`Science Foundation funded State/Industry/University Co-operative Research
`
`Center (NSF SIUCRC) on Low-Cost High-Speed Processing of Polymer
`
`Composites at Michigan State University. From 1999 to 2006, I directed a US
`
`Department-of-Education funded GAANN (Graduate Assistance in Areas of
`
`National Need) program on Interdisciplinary Graduate Education in Polymer
`
`Composites.
`
`16. From 2003 to 2007, I also served on the executive board of the
`
`Composites Division of the Society of Plastics Engineers (SPE) as Director of
`
`Educational Activities, which included organization of tutorials and workshops in
`
`compounding and molding of polymer composites and nanocomposites for
`
`industry personnel. In 1996 to 1998, I also served as Chair of the Composites
`
`
`
`
`
`Page 10 of 199
`
`

`
`
`
`Section in the Materials Engineering and Science Division of the American
`
`Institute of Chemical Engineers.
`
`17.
`
`I served as a reviewer of polymer blends and processing proposals for
`
`several international organizations, including the National Science Foundation,
`
`American Chemical Society Petroleum Research Fund (ACS-PRF), and Science
`
`and Engineering Research Council in Singapore.
`
`18.
`
`I am a reviewer for several polymer science and engineering journals
`
`as well as rheology related journals, including Polymer, Polymer Engineering and
`
`Science, Polymer Composites, J. Applied Polymer Science, Rheologica Acta,
`
`Journal of Rheology, Chemical Engineering Communications, Industrial &
`
`Engineering Chemistry Research, Materials Science and Eng., AIChE Journal,
`
`Nanoengineering and Nanosystems.
`
`19.
`
`I have previously authored a Declaration in IPR 2016-00235 for
`
`the ’280 patent. Ex. 1002.
`
`20.
`
`I have not testified as an expert witness at trial or by deposition in any
`
`other cases.
`
`III.
`
`INFORMATION CONSIDERED
`
`The opinions summarized in this Declaration are based on the documents I
`
`reviewed and my education, knowledge, professional judgment, and 44 years of
`
`experience in the field. The documents I reviewed are as follows:
`
`
`
`
`
`Page 11 of 199
`
`

`
`
`
`
`
`• U.S. Patent No. 8,883,280 to Leser et al. (“the ’280 patent”) (Ex.
`
`1001);
`
`• The 1st IPR Declaration of Dr. Krishnamurthy Jayaraman, Ph.D. in
`
`IPR2016-00235 (Ex. 1002);
`
`• Affidavit of Christopher Butler of Internet Archive with Exhibit A,
`
`Borealis Webpage dated January 20, 2010 (“2010 Webpage”) (Ex.
`
`1004);
`
`• Excerpts from Patent Prosecution History of U.S. Patent No.
`
`8,883,280, as obtained from USPTO PAIR database (Ex. 1005);
`
`• European Patent Application Publication No. 1479716 A1 (“EP ’716”)
`
`(Ex. 1006);
`
`• U.S. Patent No. 5,116,881 to Park et al. (“Park”) (Ex. 1007);
`
`• U.S. Patent No. 6,455,150 to Sheppard et al. (“Sheppard’) (Ex. 1008);
`
`• U.S. Patent Application Publication No. 2008/0020162 to Fackler et
`
`al. (“Fackler”) (Ex. 1009);
`
`• U.S. Patent No. 7,070,852 to Reiners et al. (“Reiners”) (Ex. 1010);
`
`• U.S. Patent No. 5,895,614 to Rivera et al. (“Rivera”) (Ex. 1011);
`
`• Reichelt et al., Cellular Polymers, Vol. 22, No. 5 (2003) 315-328
`
`(“Reichelt”) (Ex. 1014);
`
`
`
`Page 12 of 199
`
`

`
`
`
`
`
`• Ratzsch et al., Prog. Polym. Sci., 27 (2002), 1195-1282 (“Ratzsch”)
`
`(Ex. 1015);
`
`• U.S. Patent Application Publication No. 2008/0045638 to Chapman
`
`et al. (“Chapman”) (Ex. 1016);
`
`• Excerpts from Encyclopedia of Polymer Science and Technology:
`
`Plastics, Resins, Rubbers, and Fibers, Vol. 2, John Wiley & Sons,
`
`Inc. (1965) (“Encyclopedia”) (Ex. 1017);
`
`• U.S. Patent No. 7,883,769 to Seth et al. (“Seth”) (Ex. 1018);
`
`• U.S. Patent No. 4,604,324 to Nahmias et al. (“Nahmias”) (Ex. 1019);
`
`• Excerpts from Shau-Tarng Lee, Chul B. Park, and N.S. Ramesh,
`
`Polymer Foams: Science and Technology, CRC Press (2007) (“Lee”)
`
`(Ex. 1020);
`
`• Definition of “inert”, Grant & Hackh’s Chemical Dictionary, 5th ed.,
`
`McGraw-Hill, Inc. (1987), page 303 (Ex. 1021)
`
`• Definition of “article” and “strip”, Merriam-Webster’s Collegiate
`
`Dictionary, 11th ed. (2003), pages 70 and 1237 (“Merriam-Webster’s
`
`Dictionary”) (Ex. 1022);
`
`• Definition of “inert gas” and “talc”, Hawley’s Condensed Chemical
`
`Dictionary, 14th ed. (2001) (“Hawley’s Dictionary”), pages 606,
`
`1066 (Ex. 1023);
`
`
`
`Page 13 of 199
`
`

`
`
`
`
`
`• U.S. Patent No. 7,825,166 to Sasaki et al. (“Sasaki”) (Ex. 1024);
`
`
`
`• U.S. Patent No. 5,925,450 to Karabedian et al. (“Karabedian”) (Ex.
`
`1025).
`
`• A copy of a brochure “Borealis Dapoly™ HMS Polypropylene for
`
`Foam Extrusion” obtained from Borealis webpage obtained from the
`
`Internet Archive’s “Wayback Machine” as of November 16, 2008
`
`(https://web.archive.org/web/20081116085125/http://www.borealisgr
`
`oup.com/pdf/literature/borealis-
`
`borouge/brochure/K_IN0020_GB_FF_2007_10_BB.pdf)(“2008
`
`Brochure”) (Ex. 1033);
`
`• U.S. Provisional Application No. 61/529, 632 to Leser et al. (Ex.
`
`1035);
`
`• U.S. Provisional Application No. 61/618,604 to Leser et al. (Ex.
`
`1036);
`
`• U.S. Patent No. 6,413,625 to Rolle et al. (“Rolle”) (Ex. 1037);
`
`• U.S. Patent Application Publication No. 2009/0263645 to Barger et al.
`
`(“Barger”) (Ex. 1038);
`
`• Excerpts from Gibson and Ashby, Cellular solids: structure and
`
`properties, 2nd ed., Cambridge University Press (1997) (“Ashby”) (Ex.
`
`1039);
`
`
`
`Page 14 of 199
`
`

`
`
`
`
`
`• Excerpts from C. Maier and T. Calafut, Polypropylene: the Definitive
`
`User’s Guide and Databook, Plastics Design Library, William
`
`Andrew Inc. (1998) (“PP Handbook”) (Ex. 1040);
`
`• ASTM D3763-86, an American Society for Testing of Materials
`
`(ASTM) standard method for high-speed puncture properties of
`
`plastics using load and displacement sensors (1986 Edition) (Ex.
`
`1041);
`
`• ASTM D1922-93, an American Society for Testing of Materials
`
`(ASTM) standard method for propagation tear resistance of plastic
`
`film and thin sheeting by pendulum method (1993 Edition) (Ex.
`
`1042);
`
`• Naguib et al., Ind. Eng. Chem. Res., 44 (2005), 6685-6691 (“Naguib”)
`
`(Ex. 1043);
`
`• Tabatabaei et al., Chemical Engineering Science, 64 (2009), 4719-
`
`4731(“Tabatabaei”) (Ex. 1044);
`
`• Almanza et al., Journal of Polymer Science: Part B: Polymer Physics,
`
`Volume 42 (2004), 1226–1234 (“Almanza”) (Ex. 1045);
`
`• European Patent No. 0588321 B1 (“EP ’321”) (Ex. 1046);
`
`• European Patent Application Publication No. 1323779 A1 (“EP ’779”)
`
`(Ex. 1047);
`
`
`
`Page 15 of 199
`
`

`
`
`
`
`
`• European Patent No. 0520028 B1 (“EP ’028”) (Ex. 1048);
`
`• International Patent Publication No. WO 00/02800 (“WO ’800”) (Ex.
`
`1049);
`
`• A copy of webpage,
`
`web.archive.org/web/20080926114057/http:/www.burnfoundation.or
`
`g/programs/resource.cfm?c=1&a=3, dated September 26, 2008 (Ex.
`
`1050);
`
`• A copy of webpage,
`
`web.archive.org/web/20080517041952/http:/www.antiscald.com/pre
`
`vention/general_info/table.php, dated May 17, 2008 (Ex. 1051);
`
`• A copy of webpage, http://www.nist.gov/fire/fire_behavior.cfm (Ex.
`
`1052);
`
`• A copy of webpage,
`
`web.archive.org/web/20071010183358/http://hypertextbook.com/fact
`
`s/2007/TatyanaNektalova.shtml, dated October 10, 2007 (Ex. 1053);
`
`• A copy of webpage,
`
`web.archive.org/web/20090302090144/http://www.hps.org/publicinf
`
`ormation/ate/faqs/microwaveovenq&a.html, dated March 2, 2009 (Ex.
`
`1054);
`
`
`
`Page 16 of 199
`
`

`
`
`
`
`
`• A copy of webpage, http://www.cooksinfo.com/microwave-ovens
`
`(Ex. 1055);
`
`• Antunes et al., Advanced Engineering Materials, 11, No. 10 (2009),
`
`811-817 (“Antunes”) (Ex. 1056);
`
`• U.S. Patent No. 6,383,425 to Wu et al. (“US ’425”) (Ex. 1057);
`
`• U.S. Patent No. 6,982,107 to Hennen (“US ’107”) (Ex. 1058);
`
`• U.S. Patent No. 6,083,611 to Eichbauer et al. (“Eichbauer”) (Ex.
`
`1059);
`
`• Excerpts from Frank Kreith, Principles of Heat Transfer, 3rd ed.,
`
`Intext Educational Publishers (1973) (“Kreith”) (Ex. 1060);
`
`• Excerpts from James M. Gere, Mechanics of Materials, 5th ed.,
`
`Brooks/Cole (2001) (“Gere”) (Ex. 1061);
`
`• A copy of the technical data sheet of HIFAX CA 60 A (Ex. 1063);
`
`• Michel Biron, Thermoplastics and Thermoplastic Composites,
`
`Technical Information for Plastics Users, Elsevier Ltd. (2007), 217–
`
`714 (“Biron”) (Ex. 1064);
`
`• Excerpts from Cornelia Vasile, Handbook of Polyolefins, 2nd ed.,
`
`Marcel Dekker, Inc. (2000) (“Polyolefins Handbook”) (Ex. 1066);
`
`• U.S. Patent No. 3,227,784 to Blades et al. (“US ’784”) (Ex. 1067);
`
`• U.S. Patent No. 5,713,512 to Barrett (“US ’512”) (Ex. 1068);
`
`
`
`Page 17 of 199
`
`

`
`
`
`
`
`• Williams and Aldao, Polymer Engineering and Science, April, 1983,
`
`Vol. 23, No. 6., 293-298 (“Williams”) (Ex. 1069);
`
`• U.S. Patent Application Publication No. 8,512,837 to Martinez
`
`(“US ’593”) (Ex. 1070);
`
`• Excerpts from M.C. McCrum et al., Principles of Polymer
`
`Engineering, 2nd ed., Oxford Science Publications (1997) (“McCrum”)
`
`(Ex. 1071);
`
`• Excerpts from Robert H. Perry, Perry’s Chemical Engineers
`
`Handbook, 7th ed., The McGraw-Hill Companies, Inc. (1997) (“Perry
`
`Handbook”) (Ex. 1072);
`
`• Martínez-Díez et al., Journal of Cellular Plastics, Volume 37 (2001),
`
`21-42 (“Martínez-Díez”) (Ex. 1073);
`
`• U.S. Patent Application Publication No. 2009/0110855 to McCarthy
`
`et al. (“US ’855”) (Ex. 1074);
`
`• U.S. Patent No. 7,655,296 to Haas et al. (“US ’296”) (Ex. 1075);
`
`• Borealis Product Brochure, DAPLOY™ HMS Polypropylene for
`
`Foam Extrusion (2010), submitted in IPR2016-00235, Exhibit 2001
`
`(“2010 Brochure”) (Ex. 1077);
`
`• Coquard R. and Baillis D., Journal of Heat Transfer, 2006, 128(6):
`
`538-549 (“Coquard”) (Ex. 1088);
`
`
`
`Page 18 of 199
`
`

`
`
`
`• A. R. Katritzky, S. Sild, and M. Karelson, “Correlation and
`
`Prediction of the Refractive Indices of Polymers by QSPR,” J. Chem.
`
`Inf. Comput. Sci., 38 (1998), 1171-1176 (“Katritzky”) (Ex. 1090);
`
`• U.S. Patent No. 4,421,867 to Nojiri et al. (Ex. 1091);
`
`• M. Antunes et al., “Heat Transfer in Polyolefin Foams,” in Heat
`
`Transfer in Multi-Phase Materials, A. Öchsner and G. E. Murch, Eds.
`
`Springer-Verlag Berlin Heidelberg, 2011, 131–161(“Antunes II”) (Ex.
`
`1092).
`
`IV. LEGAL STANDARD
`
`21.
`
`In formulating my opinions and conclusions, I have been provided
`
`with an understanding of the prevailing principles of U.S. patent law that govern
`
`the issues of patentability.
`
`22.
`
`I understand that assessing the patentability of a patent claim involves
`
`a two-step analysis. In the first step, the claim language must be properly
`
`construed to determine its scope and meaning. In the second step, the claim as
`
`properly construed must be compared to the prior art to determine whether the
`
`claim is invalid.
`
`23.
`
`I am informed that a claim is invalid as anticipated under 35 U.S.C.
`
`§ 102 if a single prior art reference discloses each and every element of the claimed
`
`invention to a person of ordinary skill in the art.
`
`
`
`
`
`Page 19 of 199
`
`

`
`
`
`24.
`
`I am informed that even if a single prior art reference does not fully
`
`anticipate a patent claim, the claim may be invalid as obvious if the differences
`
`between the claim and one or more prior art references are such that the claim as a
`
`whole would have been obvious at the time the invention was made to a person of
`
`ordinary skill in the art. In arriving at a conclusion of whether a claim is obvious, I
`
`understand that several factors are to be considered: (1) the scope and content of
`
`the prior art; (2) the differences between the art and the claims at issue; (3) the
`
`level of ordinary skill in the art; and (4) objective evidence of non-obviousness.
`
`25.
`
`I have also been informed that determining whether there are any
`
`material differences between the scope and content of the prior art and each
`
`asserted claim of the challenged patent requires consideration of the claimed
`
`invention as a whole to determine whether or not it would have been obvious in
`
`light of the prior art. If the prior art discloses all the limitations in separate
`
`references, consideration should be given to whether it would have been obvious to
`
`combine those references. I understand that a claim is not obvious merely because
`
`all of the features of that claim already existed in the prior art. Further, a person of
`
`ordinary skill in the art who is combining references should have a reasonable
`
`expectation of success of the combination.
`
`
`
`
`
`Page 20 of 199
`
`

`
`
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`26.
`
`In my opinion, given the subject matter of the patent, and based on my
`
`experience, a person of ordinary skill in the art would have had a bachelor’s degree
`
`in a field such as chemistry, chemical engineering, or materials science, and at
`
`least two years of experience studying, analyzing, or preparing formulations of
`
`polymeric blends and foam/cellular structures made therefrom. I have used this
`
`definition in my analysis below.
`
`VI. PRIORITY DATES
`
`27.
`
`I understand that this patent claims priority to provisional application
`
`no. 61/529, 632 filed August 31, 2011 (Ex. 1035), and no. 61/618,604 filed March
`
`30, 2012 (Ex. 1036). The application that ultimately issued as the ’280 patent was
`
`filed on Jun 7, 2012.
`
`28.
`
`I have used the August 31, 2011, filing date of the earliest provisional
`
`application as the priority date in my analysis, and I have viewed the prior art from
`
`the perspective of one of ordinary skill in the art as of that date, except where
`
`stated otherwise.
`
`29.
`
`I note that claims 15-19, 23-33, 43, 55-60, 63, and 64 of the ’280
`
`patent recited structural properties of cell size (15 and 43), aspect ratio (16, 17),
`
`melting and other temperatures (18, 19), microwave exposure (23), puncture
`
`resistance (25), tear resistance (26-30), maximum surface temperature (31),
`
`
`
`
`
`Page 21 of 199
`
`

`
`
`
`thermal conductivity (32, 33), rigidities under different conditions (24, 55-60),
`
`additional structural elements (63, 64). The August 31, 2011, ’632 provisional
`
`application, however, does not disclose the specifically claimed properties and
`
`their values, and thus lack written description support for these claims.
`
`30. At best, the claimed properties and values in claims 15, 23-31, 43, 55-
`
`60, 63, and 64 were first introduced in the ’604 provisional application filed March
`
`30, 2012. Compare Ex. 1035 at ¶¶ [0045]-[0047] (Example 1) with Ex. 1036 at
`
`¶¶ [0051]-[0059] (Example 1 with Tables), for example. Accordingly, I have
`
`considered March 30, 2012, to be the priority date for these claims.
`
`31. Furthermore, some of the claims, e.g., claims 16-19, 32, and 33 also
`
`lack support in the ’604 provisional application. Accordingly, for these claims,
`
`discussed below, I have considered Jun 7, 2012, to be the priority date for these
`
`claims.
`
`32.
`
`In particular, the specific numerical values for “aspect ratio” in
`
`claims 16 and 17 are not supported by written description in the August 31,
`
`2011, ’632 provisional application or the March 30, 2012, ’604 provisional
`
`application, which do not disclose the claimed numerical limitations for aspect
`
`ratio.
`
`33. Claims 18 and 19 are also not supported by written description in the
`
`August 31, 2011, ’632 provisional application or the March 30, 2012, ’604
`
`
`
`
`
`Page 22 of 199
`
`

`
`
`
`provisional application. Each of these claims recites specific numerical limitations
`
`for the “melting temperature,” “crystallization temperature,” and “percent
`
`crystallinity . . . at 10 degrees per minute heating and cooling rate” of the insulative
`
`cellular non-aromatic polymer structure. Neither of the two provisional
`
`applications provides any disclosure of the claimed numerical limitations for any
`
`of “melting temperature,” “crystallization temperature,” and “percent
`
`crystallinity . . . at 10 degrees per minute heating and cooling rate.” Indeed,
`
`Example 2 of the ’280 patent in which the above properties are measured first
`
`appeared in the non-provisional application filed June 7, 2012.
`
`34. Similarly, claims 32 and 33 are not supported by written description in
`
`the August 31, 2011, ’632 provisional application or the March 30, 2012, ’604
`
`provisional application. These claims each recite specific numerical limitations for
`
`the “thermal conductivity” of the insulative cellular non-aromatic polymer
`
`structure. However, the provisional applications do not provide any disclosure of
`
`the claimed numerical limitations for any of “thermal conductivity.” Again,
`
`Example 2 of the ’280 patent in which the thermal conductivity was measured first
`
`appeared in the non-provisional application filed June 7, 2012.
`
`
`
`
`
`Page 23 of 199
`
`

`
`
`
`VII. OVERVIEW OF THE ’280 PATENT
`
`A. The HMS-PP Formulations
`35. The ’280 patent discloses polymer-based formulations that can be
`
`formed to produce an insulative cellular non-aromatic polymeric material. Ex.
`
`1001, 1:16-32.
`
`36.
`
`In particular, the ’280 patent discloses an insulative cellular non-
`
`aromatic polymeric material comprising known polypropylene base resins having a
`
`high melt (“HMS-PP”) strength and known polypropylene copolymers or
`
`homopolymers. Ex. 1001, 1:33-36. The insulative cellular non-aromatic
`
`polymeric material also includes standard cell-forming agents, such as at least one
`
`nucleating agent and a blowing agent. Ex. 1001, 1:36-38.
`
`37.
`
`In illustrative embodiments, the insulative cellular non-aromatic
`
`polymeric material further comprises a standard slip agent. Ex. 1001, 1:38-40. As
`
`an example of a suitable polypropylene base resin, the patent specification
`
`discloses DAPLOY™ WB140 HMS (Borealis), “a high melt strength structural
`
`isomeric modified polypropylene homopolymer (melt strength=36, as tested per
`
`ISO 16790, melting temperature=325.4° F. (163° C.) using ISO 11357).” Ex. 1001,
`
`4:20-26.
`
`38. DAPLOY™ WB140 HMS was used in Example 1 as the
`
`polypropylene base resin. Ex. 1001, 13:60-62. F020HC (Braskem), a
`
`
`
`
`
`Page 24 of 199
`
`

`
`
`
`polypropylene homopolymer resin, was used as the secondary resin. Ex. 1001,
`
`13:62-63. The two resins were blended with Hydrocerol™ CF-40E as a primary
`
`nucleation agent, talc as a secondary nucleation agent, CO2 as a blowing agent, and
`
`titanium dioxide as a colorant. Ex. 1001, 13:64-67. As a slip agent, Ampacet™
`
`102823 LLDPE (linear low density polyethylene) was used. Ex. 1001, 14:8-10.
`
`Another embodiment, Example 2, also uses DAPLOY™ WB140 HMS-PP
`
`homopolymer along with other known components similar to the formulation of
`
`Example 1. Ex. 1001, 19:35-44.
`
`39. Such HMS-PP-based formulations for forming an insulative cellular
`
`non-aromatic polymeric material were already well known in the art prior to the
`
`time that the application leading to the ’280 patent or August 2011, as detailed
`
`below.
`
`40. The ’280 patent states that the formulation and insulative cellular non-
`
`aromatic polymeric materials formed therefrom satisfy a long-felt need for a
`
`material that can be formed into an article, such as a cup, that includes many if not
`
`all of the features of insulative performance, ready for recyclability, puncture
`
`resistance, frangibility resistance, microwavability and other features, whereas
`
`others have failed to do so. Ex. 1001, 13:24-30. As discussed below, however,
`
`HMS-PP blend materials providing these properties were already known and were
`
`obvious.
`
`
`
`
`
`Page 25 of 199
`
`

`
`
`
`41. The ’280 patent also states that others have created insulative
`
`materials and structures but that these suffer from poor puncture resistance,
`
`inability to effectively be recyclable, and lack microwavability. Ex. 1001,
`
`13:34-37. The patent, however, does not show that the disclosed formulations and
`
`materials overcome the failures of others by using an insulative cellular non-
`
`aromatic polymeric material. Ex. 1001, 13:37-39. Moreover, while not recognized
`
`in the patent, as discussed below, HMS-PP-blend