Filed: July 7, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________________
`
`The Clorox Company
`Petitioner,
`v.
`Auto-Kaps, LLC
`Patent Owner
`____________________________
`
`Case IPR2016-00821
`U.S. Patent 7,490,743
`___________________________
`
`DECLARATION OF JAMES RICE, PHD
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`Declaration of Dr. James Rice
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`

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`Table of Contents
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`I.#
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`II.#
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`INTRODUCTION .............................................................................................................. 1#
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`BACKGROUND AND QUALIFICATIONS..................................................................... 1#
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`III.#
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`SUMMARY OF OPINIONS .............................................................................................. 2#
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`IV.#
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`LEGAL CONSIDERATIONS............................................................................................ 2#
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`A.#
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`B.#
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`C.#
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`One of Ordinary Skill in the Art ............................................................................. 2#
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`Claim Construction ................................................................................................. 3#
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`Patent Validity......................................................................................................... 4#
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`1.#
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`2.#
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`Anticipation................................................................................................. 4#
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`Obviousness ................................................................................................ 5#
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`V.#
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`879B>IFLE; FE K?< o243 PATENT AND THE CLAIMS AT ISSUE ................... 7#
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`VI.#
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`OPINIONS AND BASES THEREOF................................................................................ 9#
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`A.#
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`B.#
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`C.#
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`D.#
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`E.#
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`The Level of Ordinary Skill in the Art.................................................................... 9#
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`9\QY] 9_^cdbeSdY_^ _V mQ S_e‘\Y^W QbbQ^WU]U^dn Q^T mQ ]QdY^W QbbQ^WU]U^dn .... 9#
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`Guss Does Not Anticipate Claim 1 ....................................................................... 11#
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`Bartimes Does Not Anticipate Claim1.................................................................. 13#
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`Guss in View of Campagnolo Does Not Render Claim 1 and Dependent Claim 6
`Obvious ................................................................................................................. 14#
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`VII.# CONCLUSION................................................................................................................. 16#
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`i
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`Declaration of Dr. James Rice
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`List of Figures
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`=YWebU ,) =@>LI< , _V dXU o2/. GQdU^d .......................................................................................... 7#
`Figure 2. Non-Circular Coupling and Mating Arrangements ....................................................... 10#
`Figure 3. Preferred Embodiment of Guss ...................................................................................... 12#
`Figure 4. Preferred Embodiment of Bartimes................................................................................ 13#
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`ii
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`Declaration of Dr. James Rice
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`K/
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`1.
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`It is my understanding that 9\_b_h 9_]‘Q^i %XUbUY^QVdUb m9\_b_hn& XQc filed a
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`petition to institute an inter partes review of claims 1-10 of U.S. Patend E_) 2’/4+’2/. %mdXU p2/.
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`‘QdU^dn&’ currently assigned to Auto-BQ‘c’ CC9%m7ed_-Kapsn&. I have reviewed this petition and
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`the exhibits attached thereto and I am submitting this declaration in support of the Auto-Kaps
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`preliminary response to the petition.
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`KK/
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`DCEMITQWPF!CPF!SWCNKHKECVKQPU!
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`2.
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`I hold Bachelors, Masters, and Ph.D. degrees in Mechanical Engineering. I have
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`over 40 years of professional experience in mechanical engineering design and analysis in both
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`academic and industrial environments. I have worked as a consultant or advisor for over 30
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`companies, including Ford Motor Company, Boeing Aircraft, General Motors, and Siemens. I
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`have authored or co-authored over 30 publications and numerous consulting reports.
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`3.
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`I have extensive background and experience in the area of mechanical engineering
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`design and analysis. In particular, I have extensive education, background, and experience in the
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`fundamental technical areas of relevance to the design and engineering of fluid handling devices
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`such as the manual pump TYcS\_cUT Y^ dXU o2/. ‘QdU^d) A major portion of my professional
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`experience has involved my direct participation in engineering projects involving the design and
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`development of a wide variety of such systems and components.
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`4.
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`A current copy of my curriculum vitae setting forth details of my background and
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`relevant experience is attached as Exhibit A. My curriculum vitae includes a listing of cases for
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`which I have provided expert testimony over the last four years and a list of all of the publications
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`I have authored. Auto-Kaps retained me in connection with the above captioned matter. I am
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`being compensated at my usual rate of $350 per hour. My compensation is not dependent on the
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`outcome of this matter.
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`1
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`Declaration of Dr. James Rice
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`KKK/
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`UWOOCT[!QH!QRKPKQPU!
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`5.
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`As detailed in the following sections of this declaration, I have formed the
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`following opinions.
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`’ A person of ordinary skill in the art would have an undergraduate degree in mechanical or
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`a related field, plus 1-2 years of experience designing fluid handling devices.
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`’ A proper construction of the term mQ S_e‘\Y^W QbbQ^WU]U^dn Yc dXU V_\\_gY^W)
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`coupling arrangement: a non-circular structure fixedly attached to or
`integrally formed with a pump cap body that permits the pump cap to
`detachably couple to the container when a container passageway is aligned
`with a pump passageway
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`’ A proper consdbeSdY_^ _V dXU dUb] mQ ]QdY^W QbbQ^WU]U^dn Yc dXU V_\\_gY^W)
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`mating arrangement: a non-circular structure fixedly attached to or
`integrally formed with a container that permits the pump cap to detachably
`couple to the container when a container passageway is aligned with a
`pump passageway.
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`’ The Guss reference does not disclose all of the features of S\QY] , _V dXU o2/. ‘QdU^d.
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`’ The Bartimes reference does not disclose all of the features of S\QY] , _V dXU o2/. ‘QdU^d)
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`’ The combination of Guss with Campagnolo does not disclose all of the features of Claim
`, _V dXU o2/. ‘QdU^d)
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`KX/
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`6.
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`The following sections present my understanding of the relevant legal principles
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`that I have relied upon in reaching the opinions expressed in this declaration.
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`A. One of Ordinary Skill in the Art
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`7.
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`I understand that claims are interpreted from the perspective of one of ordinary
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`skill in the art at the time of the invention and not from the perspective of the judge, a lay person,
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`those skilled in remote arts, or geniuses in the art at hand. I also understand that whether a
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`claimed invention is obvious is judged from the perspective of this person of ordinary skill in the
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`art at the time of the invention. I further understand that the characteristics of this hypothetical
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`2
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`Declaration of Dr. James Rice
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`person having ordinary skill in the art should be defined before engaging in any claim
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`construction or invalidity analysis. I understand the factors that can be considered in determining
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`the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type
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`of problems encountered in the art; (3) the prior art solutions to those problems; (4) the rapidity
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`with which innovations are made; (5) the sophistication of the technology; and (6) the educational
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`level of active workers in the field.
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`B. Claim Construction
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`8.
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`It is my understanding that the property right protected by a patent is defined by
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`the claims of the patent, which appear as numbered paragraphs at the end of the text. Each claim
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`cdQ^Tc _^ Ydc _g^ gXU^ TUdUb]Y^Y^W Y^VbY^WU]U^d _b fQ\YTYdi) KXUcU QbU dXU m]UdUc Q^T R_e^Tcn
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`that define the scope of the property right. Thus, I understand the first step in analyzing the
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`validity of a patent claim begins with an analysis of the wording of the claim itself, also referred
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`d_ Qc mS\QY] S_^cdbeSdY_^)n
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`9.
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`It is my understanding that the first step in construing a claim is an analysis of how
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`the claim language would be understood by a person having ordinary skill in the art. To
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`understand the perspective of a person of ordinary skill in the art, I understand that one must
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`determine the field of art to which the patent pertains, and then the background of one of ordinary
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`skill in that art. I also understand that dictionaries, encyclopedias, and treatises may be used to
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`demonstrate how one skilled in the art would understand a specific term or phrase recited in a
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`claim. It is my understanding that such terms _b ‘XbQcUc QbU Q\c_ bUVUbbUT d_ Qc mS\QY]
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`\Y]YdQdY_^c’n RUSQecU’ Qc TYcSeccUT RU\_g’ dXUi \Y]Yd gXQd Yc S_fUbUT Ri Q S\QY]) I understand that
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`typically claims that use different claim language are construed to be of different scope.
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`10.
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`It is further my understanding that after reviewing the precise language used in the
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`claim, the patent specification and prosecution history are reviewed to ensure that they do not
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`alter the way one skilled in the art would understand a claim limitation. At times, the
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`specification might provide further clarification as to the meaning of a claim limitation. However,
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`I understand that claims are not limited to the disclosed embodiments, and claim limitations
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`3
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`Declaration of Dr. James Rice
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`should not be narrowly construed solely because the disclosed embodiment contains a particular
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`feature.
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`11.
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`I understand that statements made by a patent applicant during prosecution of the
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`patent application might provide further clarification as to the meaning of a claim limitation. For
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`example, the applicant may argue that certain prior art raised by the examiner is outside the scope
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`of a claim because it fails to disclose a certain claim limitation. In addition to the claim language,
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`patent specification, and prosecution history, which are the preferred sources for claim
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`construction, outside sources such as prior art may be referenced to construe a claim limitation.
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`12.
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`It is my understanding that the when construing claims with respect to a petition
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`for inter partes review, the Patent Trial And Appeal Board applies the broadest reasonable
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`construction of the term in light of the specification of the patent in which the term appears and I
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`have taken this into account in the constructions set forth herein.
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`C. Patent Validity
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`13.
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`I have been informed that validity is determined on a claim-by-claim basis. Thus,
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`even if certain claims are shown to be invalid, the remaining claims remain valid until shown
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`otherwise.
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`1. Anticipation
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`14.
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`It is my understanding that a patent claim is invalid as anticipated (i.e., the claimed
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`invention is not new or not novel) under section 102 of the Patent Act (35 U.S.C. § 102) when a
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`single prior art reference (e.g., a patent or publication) discloses within the four corners of the
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`document every limitation recited in the claim arranged or combined in the same way as recited in
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`the claim. I understand that the claims are first construed, and the properly construed claims are
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`compared to a prior art reference. If that prior art reference teaches all the limitations combined
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`or arranged as recited in the claim in a manner that would enable one skilled in the art to practice
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`the claimed invention, that claim Yc ^_d ^Ug’ Red Yc mQ^dYSY‘QdUTn Ri dXU ‘bY_b Qbd bUVUbU^SU)
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`15.
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`I understand that f_b Q ‘bY_b Qbd bUVUbU^SU d_ mdUQSXn dXU \Y]YdQdY_^c _V Q S\QY]’ Q
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`person of ordinary skill in the art must recognize the limitations as disclosed, expressly or
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`inherently, in that single reference and, to the extent the claim specifies a relationship between the
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`4
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`Declaration of Dr. James Rice
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`limitations, the disclosed limitations must be in the same relationship as recited in the claim.
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`Additionally I understand that Q TYcS\_cebU SQ^ mdUQSXn Q \Y]YdQdY_^ _nly if the disclosure of the
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`reference is enabling. As I understand, this means that a person of ordinary skill in the art, having
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`become familiar with the prior art, must be enabled thereby to practice the invention without
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`undue experimentation.
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`16.
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`It is my understanding that a prior art reference may anticipate a claimed invention
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`gXU^ dXU S\QY] \Y]YdQdY_^c ^_d Uh‘bUcc\i V_e^T Y^ dXQd bUVUbU^SU QbU ^_^UdXU\Ucc mY^XUbU^dn Y^ Yd)
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`However, I understand that a single prior art reference may only anticipate a claimed invention by
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`inherent disclosure when the prior art reference must necessarily include the unstated limitation. I
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`understand that to establish inherency, the extrinsic evidence (evidence outside of the document)
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`must make clear that the missing descriptive matter is necessarily present in the thing described in
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`the reference, and that it would be so recognized by persons of ordinary skill.
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`2. Obviousness
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`17.
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`I understand that where a single prior art reference does not disclose all limitations
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`of a claim, that claim may nonetheless be invalid as obvious under 35 U.S.C. § 103. I understand
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`that for a claim to be obvious, all limitations of the claimed invention must be present in two or
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`more prior art references, or in prior art references combined with the knowledge generally
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`possessed by one of ordinary skill in the art. .
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`18.
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`I further understand that an obviousness finding cannot be made solely on the basis
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`that all of the claim limitations are found in the prior art; most inventions are new combinations of
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`known components. Instead, I understand that there must be some reason to combine the
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`limitations in the fashion claimed by the invention at issue. I understand that factors used to
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`determine the existence of such a reason include: (1) interrelated teachings of multiple patents; (2)
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`the effects of demands known to the design community or present in the marketplace; (3) and the
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`background knowledge and common sense possessed by a person having ordinary skill in the art.
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`Furthermore, I understand that any need or problem known in the field of endeavor at the time of
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`invention and addressed by the patent at issue can provide a reason for combining the limitations
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`in the manner claimed.
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`5
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`Declaration of Dr. James Rice
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`19.
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`I understand that a patent claim is invalid as obvious if the differences between the
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`claimed subject matter and the prior art are such that the subject matter as whole at the time of the
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`invention would have been obvious to a person having ordinary skill in the art of the subject
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`matter to which the patent claim pertains. I also understand that it is improper, however, to use
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`hindsight in assessing obviousness by, for example, using the claim as a template for piecing
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`together components (or steps) found in separate prior art references. Furthermore, I understand
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`that a person skilled in the art must have a reasonable expectation of success that the references
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`combined to establish obviousness would result in the claimed invention.
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`20.
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`It is my understanding that the following factual inquiries are employed in an
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`obviousness determination: (1) the level of ordinary skill in the art; (2) the scope and content of
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`the prior art; (3) the differences between the prior art and the claims at issue; and (4) other
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`objective evidence of non-_RfY_ec^Ucc’ S_]]_^\i bUVUbbUT d_ Qc mcUS_^TQbi S_^cYTUbQdY_^c)n In
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`understand that these secondary considerations may include commercial success of the claimed
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`invention (including success in the face of initial skepticism in the industry), long felt but
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`unresolved needs, copying by others, the failure of others, licensing by others, praise and
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`laudatory comments by others, and unexpected results.
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`6
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`Declaration of Dr. James Rice
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`X/
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`)(*1.85<4+ 54 ;/, A854!RCVGPV!CPF!VJG!ENCKOU!CV!KUUWG!
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`21.
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`As illustrated below in Figure 1, tXU p743 patent describes a pump dispenser
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`assembly. Figure 1 cX_gc _^U U]R_TY]U^d _V dXU o2/. TYc‘U^cUb QccU]R\i)
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`Figure 1. FIGURE 1 _V dXU o743 Patent
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`22.
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`7 [Ui VUQdebU _V dXU Y^fU^dY_^ _V dXU o743 patent that is relevant to this proceeding
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`is that the pump mechanism is fixedly attached to the cap body such that the pump cap is limited
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`in rotation with respect to the pump mechanism 140. As explained further in the following
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`sections of this declaration, this results in the feature that alignment of the pump cap 105 and thus
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`the alignment of the coupling arrangement 160 guides alignment of the pump mechanism.
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`23.
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`As discussed in detail in the following sections of this declaration, the Clorox
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`‘UdYdY_^ SXQ\\U^WUc S\QY]c , dXb_eWX ,+ _V dXU o2/. ‘QdU^d) 9\QY] , Yc dXU c_\U Y^TU‘U^TU^d claim
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`that is challenged and all of the other challenged claims depend either directly or indirectly from
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`claim 1. Claim1 _V dXU o743 patent reads as follows.
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`7
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`Declaration of Dr. James Rice
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`1. A dispenser assembly, comprising:
`a container having a bottom, an open top and a side wall extending
`between the bottom and the open top, and a mating arrangement, the
`side wall having an inner surface;
`at least one container passageway mounted on the inner surface of the
`side wall and extending from the open top of the container to a
`position proximate to the bottom of the container; and
`a pump cap having a cap body, a pump mechanism arranged within the
`cap body, a pump cap passageway coupled to the pump mechanism,
`wherein the pump passageway is non-axial relative to the pump
`mechanism, and a coupling arrangement arranged on the pump cap
`body and configured to detachably couple to the mating arrangement
`of the container, wherein the coupling arrangement and the mating
`arrangement are noncircular in shape such that the coupling
`arrangement and the mating arrangement are coupled only if the
`container passageway is aligned with the pump cap passageway, such
`that the container passageway sealingly engages the pump cap
`passageway in a fluid connection when the pump cap is monnted to
`the container;
`wherein a fluid arranged within the container flows through the
`container passageway and the pump cap passageway when the pump
`mechanism of the pump cap is activated.
`As introduced above, all of the other claims in question depend, either directly or
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`24.
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`indirectly, from claim 1.
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`8
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`Declaration of Dr. James Rice
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`XK/
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`QRKPKQPU!CPF!DCUGU!VJGTGQH!
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`25.
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`In the following sections, I present in detail my opinions concerning the validity of
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`dXU o743 patent.
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`A. The Level of Ordinary Skill in the Art
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`26.
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`In my opinion, one of ordinary skill in the art would have the following
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`educational and professional experience:
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`’ A undergraduate degree in mechanical or related field, plus 1-2 years of experience
`designing fluid handling devices such as a manually operated pump for liquid containers.
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`27.
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`This identification of the level of ordinary skill is based on the fact that the p743
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`patent claims relate to a fluid handling devices, as well as my experience working with and
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`becoming familiar with the educational and professional experience level of engineers and
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`technicians designing fluid handling devices and systems in a wide range of industries and
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`applications. I conducted my analysis and offer my opinions from the perspective of this person
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`of ordinary skill in the art in October of 2004’ dXU TQdU _V dXU o743 patent inventions.
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`B. Claim Construction OG XB DOTPLJNH BQQBNHFMFNSY BNE XB MBSJNH
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`BQQBNHFMFNSY
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`28.
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`9\QY] , _V dXU o743 patent includes the following elements:
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`Q S_^dQY^Ub XQfY^W l a mating arrangement’ l Q^T5
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`Q ‘e]‘ SQ‘ XQfY^W l a coupling arrangement arranged on the pump cap
`body and configured to detachably couple to the mating arrangement of the
`S_^dQY^Ub l)n
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`29.
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`IUVUbbY^W d_ =YW) , _V dXU o2/. ‘QdU^d cX_g^ RU\_g’ dXU p743 patent teaches the
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`mS_e‘\Y^W Q^T ]QdY^W QbbQ^WU]U^dc 160, 165 may include any mechanism, device, construction,
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`and/or shape that permits pump cap 105 to be detachably coupled to container 110)n
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`9
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`Declaration of Dr. James Rice
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`Figure 2. Non-Circular Coupling and Mating Arrangements
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`30.
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`9\QY] , QTTc Q VebdXUb bUcdbYSdY_^ dXQd dXU mdXU coupling arrangement and the
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`mating arrangement are non-circular in shape such that the coupling arrangement and the mating
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`arrangement are coupled only if the container passageway is aligned with the pump cap
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`passagewayln 7c Y\\ecdbQdUT Y^ =@>) .7 _V dXU o2/. ‘QdU^d cX_g^ Y^ dXU QR_fe figure, the
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`coupling arrangement and the mating arrangement of the exemplary embodiments are oval shaped
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`and thus are non-circular and constrain the alignment of the coupling and mating arrangements.
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`31.
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`In their petition, Clorox proposes a construction for dXU dUb] ma coupling
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`arrangementn appearing in claims 1, 7, and 8 Qc many non-circular mechanism, device,
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`construction, and/or shape on a pump cap body that permits the pump cap to detachably couple to
`1
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`the container only if a container passageway is aligned with a pump passageway)n
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`1 Petition for Inter Partes Review, March 30, 2016, p.
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`10
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`Declaration of Dr. James Rice
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`32.
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`In my opinion, this construction is incorrect. The construction offered by Clorox
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`would admit a coupling arrangement which would be free to rotate with respect to the cap body
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`which is clearly not the intent. My proposed construction is the following.
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`coupling arrangement: a non-circular structure fixedly attached to or
`integrally formed with a pump cap body that permits the pump cap to
`detachably couple to the container when a container passageway is
`aligned with a pump passageway
`In line with the prosecution history,2 this construction does not admit the prior art
`?_ bUVUbU^SU Q^T Yc S_^cYcdU^d gYdX dXU ‘bUVUbbUT U]R_TY]U^dc _V dXU o2/. ‘QdU^d) Following
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`33.
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`substantially the same reasoning outlined above, my proposed constructY_^ V_b dXU m]QdYng
`
`QbbQ^WU]U^dn Yc dXU V_\\_gY^W)
`
`mating arrangement: a non-circular structure fixedly attached to or
`integrally formed with a container that permits the pump cap to
`detachably couple to the container when a container passageway is
`aligned with a pump passageway
`
`34.
`
`Note in particular that the construction for the coupling arrangement and the
`
`mating arrangement precludes an arrangement that may rotate freely with respect to either the
`
`pump cap or the container.
`
`C. Guss Does Not Anticipate Claim 1
`
`35.
`
`Clorox contends that U.S. Patent No. Re 33,480 to Guss et al. (hereinafter mGussn)
`
`anticipates claim 1. The preferred embodiment of Guss is illustrated below in Figure 3.
`
`2 Prosecution History, Applicants Response dated October 22, 2004.
`
`11
`
`Declaration of Dr. James Rice
`Cwvq.Mcru-!NNE!Gzjkdkv!3112-!Rcig!25
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`
`

`
`Figure 3. Preferred Embodiment of Guss
`
`36.
`
`As illustrated in Figure 3 above, the pump unit 14 includes a housing 30. The
`
`‘e]‘ e^Yd ,/ Yc S_e‘\UT d_ dXU S_^dQY^Ub ,+ Ri dXU mdeRe\Qb ‘_bdY_^ 11n gXYSX XQc Y^dUb^Q\ dXbUQTc
`
`70. The internal threads 70 cooperate with the external threads 24 on the neck 18 of the container
`
`10. This threaded tubular portion 66 does not meet the required mS_e‘\Y^W QbbQ^WU]U^dn
`
`limitation of claim 1. Petitioner further contends that the rear portion 32 of the housing 30 forms
`
`Q mcUS_^T S_e‘\Y^W QbbQ^WU]U^dn Q^T @ cdb_^W\i TYcQWbee. The rear portion 32 plays no role in
`
`mS_e‘\Y^Wn dXU ‘e]‘ ]USXQ^Yc] d_ dXU S_^dQY^Ub Q^T dXU o2/. ‘QdU^d T_Uc ^_d TYcS\_cU _b UfU^
`
`ceWWUcd Q^i mcUS_^T S_e‘\Y^W QbbQ^WU]U^d)#
`
`37.
`
`First of all, the threaded tubular portion 66 of Guss is a circular structure quite
`
`similar to that of Ho and does not meet the required non-circular mS_e‘\Y^W QbbQ^WU]U^dn of claim
`
`1. In addition, the tubular portion 66 of Guss Yc ^_d mVYhUT\i QddQSXUT _b Y^dUWbQ\\i V_b]UTn gYdX
`
`the pump unit and is free to rotate with respect to the pump unit. Hence, Guss does not include at
`
`least the nS_e‘\Y^W QbbQ^WU]U^dn _V S\QY] , Q^T T_Uc ^_d Q^dYSY‘QdU S\QY] , _V dXU o2/. ‘QdU^d)
`
`12
`
`Declaration of Dr. James Rice
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`

`
`D. Bartimes Does Not Anticipate Claim1
`
`38.
`
`Clorox contends that L)J) GQdU^d E_) 0’-/1’,/1 %XUbUY^QVdUb mBartimesn&
`
`andYSY‘QdUc S\QY] , _V dXU o2/. ‘QdU^d) KXU ‘bUVUbbUT U]R_TY]U^d _V 8QbdY]Uc is illustrated below
`
`in Figure 4.
`
`Figure 4. Preferred Embodiment of Bartimes
`
`39.
`
`As illustrated in FIG. 1 above, the pump 20 includes a threaded nut 66. As
`
`described in the following quoted portion of the specification of Bartimes, the nut 66 secures the
`pump to the container in Bartimes.3
`
`m7c cX_g^ Y^ =@>) .’ dXU V\Q^WUT ‘_bdY_^ 64 serves to retain as part of
`the pump 20 a nut 66. The nut 66 is provided with internal threads 68
`which are engageable with the partial threads 32, 38 of the container neck
`finish 28 so as to fixedly secure the pump 20 on to the container 22)n
`
`3 Bartimes, Col. 3, Lines 13-18.
`
`13
`
`Declaration of Dr. James Rice
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`

`
`40.
`
`The nut 66 of Bartimes does not form the mS_e‘\Y^W QbbQ^WU]U^dn required by
`
`claim 1. First of all, the threaded nut 66 of Bartimes is a circular structure quite similar to that of
`
`Ho and does not meet the non-circular bUaeYbU]U^d V_b dXU mS_e‘\Y^W QbbQ^WU]U^d of claim 1. In
`
`addition, the threaded nut 66 _V 8QbdY]Uc Yc ^_d mVYhUT\i QddQSXUT _b Y^dUWbQ\\i V_b]UTn gYdX dXU
`
`pump unit and is free to rotate with respect to the pump unit. Hence, Bartimes does not include
`
`the mS_e‘\Y^W QbbQ^WU]U^dn of claim 1 and thus T_Uc ^_d Q^dYSY‘QdU S\QY] , _V dXU o2/. ‘QdU^d)
`
`E. Guss in View of Campagnolo Does Not Render Claim 1 and Dependent
`
`Claim 6 Obvious
`
`41.
`
`Petitioner contends that Guss in view of Campagnolo renders claim 1 and
`
`dependent claim 6 obvious. The petitioner apparently recognized that Guss does not meet the
`
`require]U^dc _V dXU mS_e‘\Y^W QbbQ^WU]U^dn of claim 1 and suggests that the combination of Guss
`
`with Campagnolo would include the required non-circular element of claim 1. I note, however,
`
`that it is unclear exactly what element of claim 1 the Petitioner proposed modifying with the
`
`alleged teachings of Campagnolo as this is not stated in the Petition.
`
`In any event, in
`
`Campagnolo, FIG. 3a is a cross-section at the lower level of the flask and indicates that the flask
`
`is of an oval cross-section and is not circular. However, Campagnolo does not disclose the head
`
`(8) is of an oval cross section. In addition, the basic combination is not obvious and would require
`
`extensive modifications to both Campagnolo and Guss in an attempt to combine the two.
`
`42.
`
`First of all however, there is no reason to even attempt to combine the two. The
`
`petitioner suggests that a reason to combine the two Yc d_ U\Y]Y^QdU dXU m‘b_ZUSdY_^ ./ _^ dXU
`4 This projection serves to align the pump with
`the container and to prevent twisting of the pump relative to the container. However, the
`
`container that fits into a receptacle 32 in the cap.n
`
`petitioner apparently failed to note that the Guss specifically addresses the elimination of the
`projection 34 as described below.5
`
`4 Ibid, p. 34.
`5 Guss, Col. 4, Lines 24-28.
`
`14
`
`Declaration of Dr. James Rice
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`

`
`mAlthough in the illustrated embodiment of the invention the pump unit
`14 is specifically configurated (sic) to cooperate with the projection 34 in
`the container, it is to be understood that it is feasible that the pump unit 14
`be secured in place solely by the shell 64.n
`
`43.
`
`Thus Guss specifically addresses the elimination of the projection 34 in a simple
`
`and straightforward manner without resorting to the questionable combination suggested by the
`
`Petitioner.
`
`15
`
`Declaration of Dr. James Rice
`Cwvq.Mcru-!NNE!Gzjkdkv!3112-!Rcig!29
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`
`

`
`XKK/
`
`EQPENWUKQP!
`
`44.
`
`As discussed in some detail in the preceding sections, it is my opinion that neither
`
`the Guss reference nor the Bartimes reference disclose all of the required elements of independent
`
`S\QY] , _V dXU o2/. ‘QdU^d) KXec ^UYdXUb dXU >ecc bUVUbU^SU ^_b dXU 8QbdY]Uc bUVUbU^SU Q^dYSY‘QdU
`
`S\QY] , _V dXU o2/. ‘QdU^d) @^ QTTYdY_^’ dXUbU Yc no reason to combine the Guss reference with the
`
`Campagnolo reference.
`
`45.
`
`I declare that all statements made herein of my own knowledge are true and that all
`
`statements made on information and belief are believed to be true; and further that these
`
`statements were made with the knowledge that willful false statements and the like so made are
`
`punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
`
`46.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`_____________________
`Dr. James Rice
`
`Dated: July 7, 2016
`
`16
`
`Declaration of Dr. James Rice
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`

`
`EXHIBIT A
`
`17
`
`Declaration of Dr. James Rice
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`

`
`James G. Rice, Ph.D.
`Curriculum Vitae
`
`Contact Information
`
`434-326-0148
`804-687-2465 (mobile)
`
`jrice@mechexpert.com
`
`Professional Summary
`
`Dr. Rice has over 40 years of technical and managerial experience in both industry and academia. He
`has a strong technical background in broad areas of mechanical engineering ranging from fluid
`mechanics and heat transfer to basic design. <b) IYSUmc ‘bY]Qbi Uh‘UbdYcU Yc Y^ S_]‘edQdY_^Q\ ]UdX_Tc
`and simulation in mechanical engineering. His mechanical engineering practice has focused in particular
`on the development and application of these methods to a diverse range of applications in industry, and
`he has also used these methods in his litigation support activities.
`
`Dr. Rice has extensive experience as an expert witness in patent litigation involving issues in Mechanical
`Engineering. Over the last fifteen years, he has provided litigation support in more than 75 cases
`including approximately 65 patent cases. This experience has included the preparation of numerous
`expert reports, depositions, and trial testimony for both plaintiff and defense attorneys. His litigation
`support activities have also included testing and analysis as required to support his opinions.
`
`Dr. Rice is the author of over 30 technical publications and has consulted for over fifty companies. He has
`conducted over 200 seminars and short courses in the U.S., Europe, and the Orient, and has been an
`invited speaker at international engineering conferences.
`
`Expertise
`
`& Computational Methods
`& Heat Transfer
`Thermodynamics
`&
`Thermal Sciences
`Fluid Dynamics
`
`&
`
`&
`
`& Combustion
`Solid Mechanics
`&
`& Mechanical Design
`& CAE & CAD Software
`
`Education
`
`Virginia Polytechnic Institute & State University, Blacksburg, VA
`Ph.D.
`MSME Virginia Polytechnic Institute & State University, Blacksburg, VA
`BSME Old Dominion University, Norfolk, VA
`
`1
`
`7/30/2015
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`

`
`James G. Rice, Ph.D.
`Curriculum Vitae
`
`Professional Experience
`
`From:
`To:
`Organization:
`Title:
`Summary:
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`2001
`Presen