IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________
`
`CHANGER & DRESSER, INC.
`Petitioner
`
`v.
`
`002152706 ONTARIO LIMITED
`Patent Owner
`_______________________
`
`Inter Partes Review No.: Unassigned
`U.S. Patent No. 9,393,639
`Issue Date: July 19, 2016
`Title: SPOT WELDING CAP CHANGER
`
`DECLARATION OF VERNON L. MANGOLD JR.
`
`Ex. C&D 1002, page 1
`
`

`
`TABLE OF CONTENTS
`INTRODUCTION .........................................................................................1
`I.
`PROFESSIONAL BACKGROUND............................................................1
`II.
`III. COMPENSATION ........................................................................................4
`IV. LEGAL STANDARDS..................................................................................4
`A.
`Claim Construction Principles...........................................................4
`B.
`Anticipation..........................................................................................5
`C.
`Obviousness..........................................................................................5
`LEVEL OF ORDINARY SKILL IN THE ART ........................................7
`V.
`VI. BACKGROUND OF THE TECHNOLOGY..............................................8
`VII. OVERVIEW OF THE ‘639 PATENT.......................................................11
`VIII. CONSTRUCTION OF RELEVANT CLAIM TERMS ..........................12
`IX. OVERVIEW OF THE PRIOR ART .........................................................14
`A.
`Overview of Lilley .............................................................................14
`B.
`Overview of Takaba..........................................................................17
`C.
`Overview of Koch..............................................................................19
`INVALIDITY ANALYSIS..........................................................................21
`A.
`Lilley Discloses All Of The Features Of Claims 1 And 35.............21
`1.
`Claim 1 .....................................................................................21
`2.
`Claim 35 ...................................................................................27
`Claims 1 and 35 Are Obvious In View of Lilley.............................30
`1.
`Lilley And The ‘639 Patent Are Analogous Art...................30
`2.
`Lilley Discloses Or Suggests All Of The Features Of
`Claims 1 and 35 .......................................................................32
`Claim 17 Is Obvious In View Of Lilley And Applicant’s
`Admitted Prior Art............................................................................36
`Claims 1, 17, And 35 Are Obvious Over Takaba In View Of
`Lilley ...................................................................................................41
`1.
`Claims 1 and 35 .......................................................................41
`2.
`Claim 17 ...................................................................................46
`
`X.
`
`B.
`
`C.
`
`D.
`
`Ex. C&D 1002, page 2
`
`

`
`E.
`
`Claims 1, 17, And 35 Are Obvious In View Of Takaba And
`Koch....................................................................................................47
`XI. CONCLUSION ............................................................................................50
`
`Ex. C&D 1002, page 3
`
`

`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by the firm of Burr & Forman LLP to opine on
`
`certain matters regarding U.S. Patent No. 9,393,639 (Ex. 1001). Specifically, this
`
`declaration addresses the lack of novelty or obviousness of all of the challenged
`
`claims of the ‘'639 patent in view of the prior art.
`
`2.
`
`In preparing this declaration, I have examined the ‘639 patent and its
`
`file history, U.S. Patent No. 4,986,251 ("Lilley"), Japanese Patent Publication No.
`
`2002-79381 ("Takaba"), German Patent Publication No. DE 199 05 477 ("Koch"),
`
`and the prior art of record for the ‘639 patent.
`
`II.
`
`PROFESSIONAL BACKGROUND
`
`3.
`
`My name is Vernon L. Mangold, Jr. and at
`
`the time of this
`
`Declaration, I am the managing partner of Kaysafety LLC, a robot system
`
`engineering and safety consulting firm based in Dayton, Ohio.
`
`4.
`
`My
`
`educational
`
`background,
`
`professional
`
`achievements
`
`and
`
`qualifications as an expert in spot welding are detailed in my curriculum vitae,
`
`which is attached hereto as Exhibit 1003. Briefly, my educational background
`
`includes a Bachelor of Arts degree with a minor in mechanical engineering
`
`awarded by the University of Dayton, located in Dayton, Ohio. In addition to my
`
`bachelor's degree, I have approximately 35 years of experience dealing with
`
`various robotic systems, including spot welding systems. For example, I was
`
`1
`
`Ex. C&D 1002, page 4
`
`

`
`employed by Unimation Incorporated, formerly located in Danbury Connecticut.
`
`My duties at Unimation involving robot spot welding equipment included, but
`
`were not limited to, direct sales and marketing of equipment, as well as the design
`
`of ancillary tooling, specifically spot welding guns and their accessories.
`
`In
`
`addition to my hands-on experience in the field of spot welding robots, I have
`
`received formal training with respect to spot welding during the course of my
`
`career. For example, I have successfully completed advanced robot programming
`
`training with the following robot manufacturers: Unimation, Cincinnati Milacron
`
`Panasonic, and Static. I have also received OSHA training on a similar basis both
`
`in Dallas Texas and Dayton Ohio.
`
`5.
`
`I have also made additional contributions to the welding industry in
`
`the form of my volunteer activities with several of the leading professional
`
`organizations that are intimate and embedded in the automation industry. These
`
`organizations include but are not limited to the American Welding Society, the
`
`North American Die Casting Association, the American Foundryman’s Society,
`
`the Institute of Plastic Engineering, Society of Manufacturing Engineering and the
`
`Robotics Industrial Association. I have participated in and been principal author of
`
`a wide variety of technical reports and standards documents, many of which have
`
`been peer-reviewed, vetted by industry and have been ostensibly adopted as
`
`2
`
`Ex. C&D 1002, page 5
`
`

`
`American National Standards by the American National Standards Institute
`
`(ANSI).
`
`6.
`
`The American Welding Society (AWS), with which I am heavily
`
`involved, has been the leading professional organization in the field of advanced
`
`material joining for over 90 years. The AWS is responsible for developing peer-
`
`reviewed and authoritative manufacturing standards that are commonly used in the
`
`United States and by international organizations. AWS standards are routinely
`
`codified as a matter of law by states and municipalities across the country.
`
`7.
`
`In addition to my experience with the various professional
`
`organizations described above, I have been retained by numerous companies to
`
`provide consulting services that apply to the use of tools in a wide variety of
`
`industrial applications. For example, I was recently retained by Nissan Motor
`
`Company as a consultant at Nissan's 1.7 million square foot automobile and truck
`
`manufacturing facility located in Smyrna, Tennessee.
`
`The facility utilizes
`
`hundreds of industrial robots performing a variety of the resistance welding
`
`processes known colloquially in the welding industry as spot welding.
`
`8.
`
`In the various positions mentioned above, I have been heavily
`
`involved in the design and implementation of various types of both fixed sequence
`
`and robotic spot welding systems.
`
`I therefore have a thorough understanding of
`
`the state of the art and practical application of spot welding in the early to mid-
`
`3
`
`Ex. C&D 1002, page 6
`
`

`
`2000s. My roles in the application of robotic spot welding as well as my
`
`experience with the manufacture of the systems required to perform spot welding
`
`provide me with the required acumen in the field to opine on how persons of skill
`
`in the art at that time would have understood the technical issues relating to the
`
`‘639 patent.
`
`III. COMPENSATION
`
`9.
`
`I am being compensated for my time in connection with this
`
`declaration at the rate of $180 per hour for normal consulting time, and $350 per
`
`hour for court testimony and deposition time.
`
`IV. LEGAL STANDARDS
`
`10.
`
`I am not an attorney. For the purposes of this declaration, I have been
`
`informed about certain aspects of the law that are relevant to my analysis and
`
`opinion.
`
`In formulating my opinions, I have taken into account the following
`
`principles of law regarding claim construction and patent invalidity, which I
`
`understand to be accurate statements of the law.
`
`A.
`
`11.
`
`Claim Construction Principles
`I have been informed that in an inter partes review, the patent claim
`
`terms are interpreted according to their broadest reasonable construction in light of
`
`the specification of the ‘639 patent. I have also been informed that claim terms are
`
`given their ordinary and customary meaning, as would be understood by one of
`
`4
`
`Ex. C&D 1002, page 7
`
`

`
`ordinary skill in the art in the context of the entire disclosure of the ‘639 patent. I
`
`understand that the intrinsic record is to be considered when construing patent
`
`claims, which includes the claims, the patent specification and drawings, and the
`
`prosecution history.
`
`I further understand that information external to the patent,
`
`including expert and inventor testimony, unlisted prior art, technical dictionaries,
`
`encyclopedias, and treatises may be considered in construing the claims when
`
`ambiguities remain.
`
`B.
`
`12.
`
`Anticipation
`
`I understand that a patent claim is invalid due to “anticipation” if the
`
`claimed invention is disclosed in a single item of prior art, e.g., a single prior art
`
`patent, product, publication, or U.S. public use. The understanding one of ordinary
`
`skill in the art would have after reviewing the reference is the standard applied
`
`when determining what a reference discloses.
`
`I further understand that it is
`
`sufficient for purposes of anticipation if a claim element is inherently disclosed in
`
`the reference.
`
`C.
`
`13.
`
`Obviousness
`
`I
`
`further understand that, even if a claimed invention is not
`
`“anticipated,” it can nonetheless be invalid for “obviousness.” I understand that
`
`the determination of whether an invention is obvious requires an analysis of
`
`underlying facts, including the scope and content of the prior art, the level of
`
`5
`
`Ex. C&D 1002, page 8
`
`

`
`ordinary skill in the art, the differences between the purported invention and the
`
`prior art, and secondary indicia of non-obviousness. I further understand that the
`
`Supreme Court’s decision in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007),
`
`clarified the standard for determining obviousness and that, under KSR, more than
`
`“ordinary innovation” is required to secure a patent.
`
`Id. at 427. Only “real
`
`innovation” is entitled to patent protection. Id. at 419. More specifically, it is my
`
`understanding that a claimed invention can be obvious even if there is no specific
`
`teaching for combining the prior art references; problems known in the field at the
`
`time of invention can provide sufficient motivation to combine the elements in the
`
`manner set out in the patent.
`
`14.
`
`I understand that a motivation to combine references need not be
`
`explicit in the prior art, but rather may be implicitly within the knowledge of the
`
`person of ordinary skill in the art or in the very nature of the problem to be solved.
`
`15.
`
`It is my understanding that the obviousness inquiry should consider
`
`secondary indicia of non-obviousness if they exist, which may include a) long-felt
`
`and unmet need in the art that was satisfied by the invention of the patent; b)
`
`failure of others to achieve the results of the invention despite being faced with a
`
`similar problem; c) commercial success or lack thereof of the products and
`
`processes covered by the invention; d) deliberate copying of the invention by
`
`others in the field; e) taking of licenses under the patent by others; f) whether the
`
`6
`
`Ex. C&D 1002, page 9
`
`

`
`invention was contrary to the accepted wisdom of the prior art; g) expression of
`
`disbelief or skepticism by those skilled in the art upon learning of the invention; h)
`
`unexpected results achieved by the invention; i) praise of the invention by those
`
`skilled in the art; and j) contemporaneous invention by others.
`
`16.
`
`I understand there must be a nexus between such secondary indicia
`
`and the claimed invention. In forming my opinions on obviousness grounds, I
`
`considered the above secondary indicators to the extent that any evidence of them
`
`is apparent from the prior art or from my own personal knowledge. I reserve the
`
`right to supplement this declaration, if permitted by the Board, to address any
`
`subsequently identified secondary considerations, if necessary.
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`17.
`
`In preparing this declaration I am informed that I am to consider the
`
`claims of the ‘639 patent through the eyes of “one of ordinary skill in the art.” I
`
`have considered factors such as the educational level and years of experience of the
`
`person or persons who developed the device that is the subject of this case, and the
`
`level of skill required by others working in the field of spot welding. This includes
`
`the types of problems encountered in the industry, the teachings of the prior art,
`
`patents and publications of other persons or companies, and the sophistication of
`
`the technology. I understand that the person of ordinary skill in the art is not a
`
`7
`
`Ex. C&D 1002, page 10
`
`

`
`specific real individual, but rather a hypothetical individual having the qualities
`
`reflected by the factors discussed above.
`
`18. Based on that description, in my opinion the person of ordinary skill
`
`holds a bachelor’s degree in mechanical engineering or a similar discipline, and/or
`
`has 3-5 years of experience designing or manufacturing mechanical tools for use in
`
`the welding industry.
`
`VI. BACKGROUND OF THE TECHNOLOGY
`
`19. Resistance spot welding is a fast, efficient welding process that is
`
`often used to join thin sheets of metal together in the automotive, appliance, and
`
`general sheet metal industries. Welding can be done manually by an operator, or
`
`can be automated using robots.
`
`In automotive spot welding, a series of robots is
`
`used to weld stamped body panels together,
`
`in order to form an integrated
`
`structure. Each robot has a spot welding head attached, and the movements of the
`
`robots are synchronized so as to efficiently perform the necessary welding. The
`
`robots typically have a pair of opposing electrodes that press two sheets of metal
`
`together in order to create the weld. Once the sheets are pressed together, an
`
`electric current passes through the electrodes, and the electrical resistance of the
`
`sheet materials causes melting in the region between the electrodes, creating a
`
`bond when the melted material has solidified.
`
`8
`
`Ex. C&D 1002, page 11
`
`

`
`20.
`
`The effectiveness of the welding process depends largely on the
`
`condition of the spot welding tip. Due to the frictional forces between the spot
`
`welding tip and the metal workpieces to be joined, the welding tip can become
`
`physically damaged over time.
`
`In addition, secondary corrosion and other
`
`contamination of the welding tip can occur due to the use of various chemicals in
`
`the welding process, which further serves to deteriorate the quality of the weld. A
`
`typical passenger vehicle has approximately 5000 spot welds. Therefore, welding
`
`tips would frequently become damaged and require placement, which would hinder
`
`the production process. Because of the continuous, high-volume nature of this
`
`work, beginning in the 1950s, caps, or tips, have been used on the ends of the
`
`electrodes that compress the metal sheets together during the welding process. The
`
`caps are made of copper in order to facilitate efficient flow of electricity, as are the
`
`pincer electrodes that are a permanent part of the spot welding head. If caps were
`
`not used, the pincer electrodes themselves would wear, creating the need to
`
`frequently rework or replace an expensive part of the welding head. Caps are
`
`relatively inexpensive and can be replaced as needed during production, thus
`
`making the operation efficient and cost effective.
`
`21. Many automotive steels are coated with zinc (i.e. they are galvanized).
`
`The zinc coating is applied in order to protect the steel from corrosion. However,
`
`the zinc coating also reacts with the spot welding caps, which degrades the cap or
`
`9
`
`Ex. C&D 1002, page 12
`
`

`
`tip of the welding electrode. When the welding cap or tip degrades, it must be
`
`either “dressed” or replaced by a new cap or tip in order to maintain the efficient
`
`flow of electricity. A welding tip or cap is “dressed” by shaving off the layer of
`
`material that reacted with the zinc to reveal a clean copper surface. Dressing
`
`returns the welding cap to its original shape and diameter, which helps to maintain
`
`spot weld quality. The current trend is toward more frequent dressings, where only
`
`a very thin layer of the cap is removed with each dressing. After a number of
`
`dressings, however, the cap needs to be replaced with a new cap, which usually
`
`occurs after about 5000 spot welds.
`
`22.
`
`The basic idea behind automated cap changing is that the cap is
`
`clamped and rotated while the welding electrode is extracted. Then the welding
`
`electrode is inserted into a new cap, which is held by the automated device. By
`
`replacing a manual cap removal with an automated process, much time can be
`
`saved, thus reducing the process cycle time required for welding the body-in-white
`
`structure of a vehicle.
`
`23. Automated cap changing has been known in the automotive industry
`
`for years. For example, U.S. Patent No. 5,387,774 to Boyer et al. and U.S. Patent
`
`No. 5,734,141 to Voilmy et al. relate to machines for automatically changing spot
`
`welding caps, and were filed in 1992 and 1995, respectively.
`
`10
`
`Ex. C&D 1002, page 13
`
`

`
`VII. OVERVIEW OF THE ‘639 PATENT
`
`24.
`
`The ‘639 patent is entitled “Spot Welding Cap Changer.” (Ex. 1001.)
`
`The ‘639 patent lists Werner Kaeseler as the sole inventor, and was issued on July
`
`19, 2016. One of ordinary skill in the art would understand that the ‘639 patent
`
`describes a device for removing the caps from a pincer spot welding head, using an
`
`extractor which clamps and rotates the cap, while the pincer welding head shaft
`
`retracts, thus leaving the cap in the extractor.
`
`(Ex. 1001 at 1:3-10.) The other
`
`function of the device is the holding and supplying of replacement caps to be
`
`inserted onto the pincer spot welding head shaft. (Ex. 1001 at 1:11-16.) For this
`
`purpose, two round magazines containing new caps are used for cap feeding and
`
`insertion. (Ex. 1001 at 2:58-64, 3:22-26; Fig. 1.)
`
`25.
`
`Each magazine has a cover
`
`that encloses the caps within the
`
`magazine.
`
`(Ex. 1001 at 3:22-35; Figs. 4-5.) The cover has an opening for the
`
`purpose of providing access for the pincer welding head shaft to be inserted into a
`
`new cap, after which the shaft is removed, leaving an open space in the magazine.
`
`(Ex. 1001 at 3:22-26; Figs. 4-5.) After a new cap is removed, a spring loaded
`
`mechanism within the magazine advances all of the caps forward, so that a new
`
`cap is positioned at
`
`the opening.
`
`(Ex. 1001 at 3:22-46; Figs. 4-5.) More
`
`specifically, the ‘639 patent explains that a spring box, which contains a spring, is
`
`located in the center of the cap carrier that contains the spot welding caps. One
`
`11
`
`Ex. C&D 1002, page 14
`
`

`
`end of the spring is attached to the spring box, and the other end of the spring is
`
`attached to the cap carrier so that the spring exerts a rotational force on the cap
`
`carrier.
`
`(Ex. 1001 at 3:22-46; Figs. 4-5.) The method used to ensure that the
`
`spring loaded mechanism indexes the new caps forward to the correct position is a
`
`stop located on the underside of the cover, along the periphery of the access
`
`opening.
`
`(Ex. 1001 at 3:22-46; Figs. 4-5.) As the caps are rotated within the
`
`magazine by the spring loaded mechanism, the cap closest to the access opening
`
`moves forward against the stop and is then in position to be loaded onto a welding
`
`head shaft. (Ex. 1001 at 3:36-46; Figs. 4-5.)
`
`VIII. CONSTRUCTION OF RELEVANT CLAIM TERMS
`
`26.
`
`In preparing this declaration, I was asked to opine on how a person of
`
`ordinary skill in the field of spot welding would understand certain terms of the
`
`‘639 patent claims.
`
`I am informed that the portion of the claims preceding the
`
`word “comprising” is called the “preamble,” and is not considered a substantive
`
`part of a claim to an apparatus if it does not include a structural component of the
`
`claim. The preamble of claims 1 and 35 of the ‘639 patent state “A cap magazine
`
`for spot welding caps,” while the preamble of claim 17 states “a spot welding cap
`
`changer.” In my opinion, one of ordinary skill in the art would not understand any
`
`of these preambles as including any structural component of the cap magazine or
`
`cap changer. For example, if the claimed magazine is not holding any welding
`
`12
`
`Ex. C&D 1002, page 15
`
`

`
`caps, or the changer is not removing any welding caps, the claimed magazine and
`
`changer are still structurally complete devices. Rather, these preambles merely
`
`indicate that
`
`the magazine and changer are for use with spot welding caps.
`
`Because the preambles of claims 1, 17, and 35 do not state any structural
`
`components, I am informed that the intended use with spot welding caps cannot be
`
`used to distinguish the claims from the prior art.
`
`27. Claims 1, 17, and 35 contain structural elements whose meaning I
`
`have been asked to opine upon. The claims include “a cap carrier having a
`
`plurality of holes sized and shaped to receive a plurality of spot welding caps in a
`
`circular arrangement.” During my review of the ‘639 patent, I did not see an
`
`explicit definition of this term. Therefore, it is my opinion that the broadest
`
`reasonable interpretation of this term by one of ordinary skill in the field of spot
`
`welding would be “a container having multiple openings that are able to hold
`
`multiple spot welding caps in a circle-like pattern.”
`
`28.
`
`The claims also recite a “spring for driving the cap carrier, the spring
`
`providing an advancing force to advance the caps one by one” (claims 1 and 17),
`
`and a “spring for advancing the caps one by one” (claim 35). The ‘639 patent
`
`notes that the spring may be a “spindle or spiral spring,” but does not explicitly
`
`define this term. Therefore,
`
`it
`
`is my opinion that
`
`the broadest reasonable
`
`interpretation of this term by one of ordinary skill in the field of spot welding
`
`13
`
`Ex. C&D 1002, page 16
`
`

`
`would be “a spring or similar device that provides a force to advance the welding
`
`caps in the cap carrier.”
`
`29.
`
`The challenged claims also recite a “stop” against which one of the
`
`caps bears in the access position (claims 1 and 17), and a “stop for successively
`
`retaining each cap in an access position” (claim 35). The ‘639 patent specification
`
`again does not explicitly define this term.
`
`It is my opinion that the broadest
`
`reasonable interpretation of this term by one of ordinary skill in the field of spot
`
`welding would be “a structure that is able to prevent the cap carrier from moving
`
`by making contact with a cap in the access position.”
`
`IX. OVERVIEW OF THE PRIOR ART
`
`A.
`
`Overview of Lilley
`
`30. U.S. Patent No. 4,986,251, to Stephen J. Lilley (“Lilley”), entitled
`
`“Airgun Magazine” was issued on January 22, 1991. I understand that Lilley has
`
`been provided as Exhibit 1009.
`
`31.
`
`Lilley generally relates to an airgun magazine that holds airgun
`
`pellets.
`
`(Ex. 1009 at Abstract.) Fig. 1 of Lilley, reproduced below, shows all of
`
`the features of claims 1 and 35 of the ‘639 patent.
`
`14
`
`Ex. C&D 1002, page 17
`
`

`
`32.
`
`The Lilley magazine includes an outer case 1, an inner pellet carrier 2,
`
`a coil spring 4, and a pellet stop post 8 that includes an abutment face 11.
`
`(Ex.
`
`1009 at 4:48-60.) The inner pellet carrier 2 includes a series of chambers 21
`
`arranged in a circular formation, each of which is able to hold an airgun pellet.
`
`(Ex. 1009 at 5:1-3, Fig. 1.) The inner pellet carrier 2 also includes a channel 22
`
`that allows the stop post 8 to pass through the chambers 21, when there is no pellet
`
`in the chamber. (Ex. 1009 at 5:3-6.) The coil spring 4 is located in the center of
`
`the pellet carrier 2, and exerts a rotational force on the pellet carrier 2. (Ex. 1009
`
`at 5:24-32.) As shown below in Fig. 5 of Lilley, when a pellet 39 is present in one
`
`of the chambers 21, the rotational force of the coil spring 4 causes the pellet 39 to
`
`press against the abutment face 11 of the pellet stop 8. (Ex. 1009 at 5:46-52, 5:60-
`
`66, Fig. 5.)
`
`15
`
`Ex. C&D 1002, page 18
`
`

`
`33. When the pellet 39 is pressed against the abutment face 11, the pellet
`
`is aligned with exit hole 7 so that the pellet may be axially extracted through exit
`
`hole 7. (Ex. 1009 at 4:53-60, 5:46-52; Fig. 5.) When the pellet 39 is removed, the
`
`spring 4 rotates the pellet carrier 2 until the next pellet is brought up against the
`
`abutment face 11. (Ex. 1009 at 6:19-26.)
`
`34. As explained below, Lilley discloses each structural component of
`
`claims 1 and 35 of the ‘639 patent. Although I am informed that Lilley would
`
`therefore invalidate claims 1 and 35,
`
`to the extent Lilley is required to
`
`accommodate spot welding caps in order to invalidate these claims, it is my
`
`opinion that one of ordinary skill in the art of spot welding would understand that
`
`16
`
`Ex. C&D 1002, page 19
`
`

`
`Lilley is inherently capable of holding and supplying spot welding caps, as
`
`discussed in more detail below.
`
`B.
`
`35.
`
`Overview of Takaba
`
`Japanese Patent Publication No. 2002-079381 to Hideki Takaba
`
`(“Takaba”) was published on March 19, 2002.
`
`I understand that an English
`
`translation of Takaba has been provided as Exhibit 1011.
`
`36.
`
`Takaba generally relates to “an electrode tip exchanging device that
`
`exchanges an electrode tip of a spot welding machine.” (Ex. 1011 at ¶ [0001].)
`
`Takaba discloses a tip removing device 10 and a tip installing device 11. Fig. 2 of
`
`Takaba, reproduced below, the tip removing device includes a U-shaped hook part
`
`13A that is located at the end of a lever 13, which is inserted between the shank 19
`
`and the welding tip 18. (Ex. 1011 at ¶ [0020].) While engaged between the shank
`
`19 and the welding tip 18, the lever 13 is tilted, which pries the tip 18 off of the
`
`shank 19. (Ex. 1011 at ¶¶ [0020], [0025], Figs. 4A, 4B.)
`
`17
`
`Ex. C&D 1002, page 20
`
`

`
`37. As shown in Fig. 5 of Takaba, reproduced below, the tip installing
`
`device 11 includes a cartridge 60 having two cylinders 61 that each store several
`
`welding tips 18 in a circular configuration. (Ex. 1011 at ¶ [0029].)
`
`18
`
`Ex. C&D 1002, page 21
`
`

`
`38.
`
`Located in the center of the cylinders 61 is a spiral spring 62, which
`
`causes the cylinders 61 to rotate until a welding tip 18 is located at installing port
`
`66, where it can be affixed to the welding shank 19. (Ex. 1011 at ¶ [0029].) When
`
`a welding tip 18 is removed from the cylinder 61, the spiral spring 62 causes the
`
`cylinders 61 to rotate until the next welding tip 18 abuts the upper side installing
`
`part 23A and a lower side installing part 23B. (Ex. 1011 at ¶¶ [0030]-[0031].)
`
`C.
`
`Overview of Koch
`
`39. German Patent Publication No. DE 199 05 477 to Walter Koch
`
`(“Koch”) was published on August 31, 2000.
`
`I understand that an English
`
`translation of Koch has been provided as Exhibit 1014.
`
`19
`
`Ex. C&D 1002, page 22
`
`

`
`40.
`
`Like Takaba, Koch also relates to “a device for the delivery of
`
`electrode caps for welding electrodes of automatic welding machines.” (Ex. 1014
`
`at p. 1, lines 8-9.) Koch explains that previous “rolling” or gravity fed magazines
`
`were problematic because, as the caps rolled or fell by gravity to an access
`
`position, the caps would often become stuck, or turned so that they would not be in
`
`alignment to be attached to the welding gun.
`
`(Ex. 1014 at p. 1, lines 20-24.)
`
`In
`
`order to overcome this problem and provide caps “in an error-free manner at a
`
`defined position for transfer,” Koch discloses both a linear and a circular
`
`magazine. (Ex. 1014 at p. 1, lines 25-27, Figs. 1 and 5.) For purposes of this
`
`declaration, I focus on the round magazine. As shown in Fig. 5 of Koch,
`
`reproduced below, a circular cap carrier 1a has receptacles 2 that are arranged to
`
`receive spot welding caps in a circular arrangement.
`
`(Ex. 1014 at p. 6, lines 21-
`
`26.) The cap carrier 1a is rotated to provide welding caps for attachment to a
`
`welding gun. (Ex. 1014 at p. 6, lines 21-27.)
`
`20
`
`Ex. C&D 1002, page 23
`
`

`
`X.
`
`INVALIDITY ANALYSIS
`
`41.
`
`In my opinion, claims 1, 17 and 35 of the ‘639 patent are unpatentable
`
`based on the combination of prior art references discussed below.
`
`A.
`
`42.
`
`Lilley Discloses All Of The Features Of Claims 1 And 35
`
`It is my opinion that Lilley teaches or suggests each and every feature
`
`of claims 1 and 35 of the ‘639 patent.
`
`Claim 1
`1.
`“A cap magazine for
`comprising:”
`
`spot welding caps,
`
`the cap magazine
`
`43.
`
`I am informed that
`
`the preamble of an apparatus claim is not
`
`considered a substantive limitation if it recites only intended uses of the apparatus.
`
`As explained above, it is my opinion that one of ordinary skill in the art would
`21
`
`Ex. C&D 1002, page 24
`
`

`
`understand the preamble as not reciting any structural components of the claimed
`
`magazine, but only the intended use with spot welding caps.
`
`44. However, to the extent the preamble is considered to be a substantive
`
`limitation, I have been asked to opine on whether the Lilley magazine is inherently
`
`able to supply spot welding caps. As explained below with respect to the "cap
`
`carrier" limitation, it is my opinion that the Lilley magazine is inherently capable
`
`of supplying spot welding caps.
`
`“a cap carrier having a plurality of holes sized and shaped to receive
`a plurality of spot welding caps in a circular arrangement”
`
`45.
`
`Lilley discloses the claimed cap carrier at least by disclosing that
`
`“inner pellet carrier 2 has a series of chambers 21 to receive pellets, and each of the
`
`chambers 21 is of part cylindrical configuration.” (Ex. 1009 at 5:1-3, Fig. 1.)
`
`46.
`
`In my opinion, the magazine of Lilley is inherently capable of holding
`
`and supplying spot welding caps. First, Fig. 5 of the '639 patent and Fig. 1 of
`
`Lilley show that both magazines have holes/chambers that are round and have a
`
`depth to accommodate roughly cylindrically-shaped objects. Lilley also explains
`
`that his magazine can hold pellets having various shapes and sizes. Specifically,
`
`Lilley explains that the magazine “can be loaded with either or both ball, diabolo
`
`or other pellets of a caliber to suit the airgun and are substantially insensitive to the
`
`shape or length of the pellets.” (Ex. 1009 at 2:30-33.)
`
`22
`
`Ex. C&D 1002, page 25
`
`

`
`47. Below is a screenshot1 of a package of 9mm diabolo airgun pellets.
`
`As shown in the below screenshot, the diabolo pellet is roughly cylindrical in
`
`shape. The 9mm size on the label below indicates that the diameter of the pellet
`
`has a diameter of 9mm.
`
`48.
`
`The shape of the diabolo pellet shown above is very similar to the
`
`shape of the spot welding cap K shown in Fig. 3 (below) of the '639 patent.
`
`1 Found at:
`https://www.google.com/imgres?imgurl=http%3A%2F%2Fi.ebayimg.com%2Fimages%2Fi%2F181197058613-0-
`1%2Fs-l1000.jpg&imgrefurl=http%3A%2F%2Fwww.ebay.co.uk%2Fitm%2FJSB-Exact-35-Cal-Calibre-Air-Rifle-
`Pellets-9mm-
`%2F181197058613&docid=W5InxOXq8JhoJM&tbnid=oTfd7G0d7x3_2M%3A&vet=1&w=999&h=979&bih=662
`&biw=1366&ved=0ahUKEwjhlNLKqrvQAhWIYyYKHb8sC_0QMwhAKBgwGA&iact=mrc&uact=8.
`
`23
`
`Ex. C&D 1002, page 26
`
`

`
`49.
`
`In my experience in the spot welding industry, spot welding caps are
`
`made having various diameters. In particular, I have seen and used spot welding
`
`caps having a diameter of roughly 19mm used in the assembly of the Nissan
`
`Altima sedan at the Nissan manufacturing facility in Smyrna, Tennessee.
`
`In
`
`addition, spot welding caps having a diameter of 8mm are also commercially
`
`available.
`
`I contacted GE Schmidt, Inc., which is a distributor of welding
`
`equipment, and was provided with the schematics attached to this declaration as
`
`Exhibit 1. These schematics show a spot welding cap that is generally cylindrical
`
`in shape, and having a diameter of 7.9mm. Therefore, because the airgun pellets
`
`24
`
`Ex. C&D 1002, page 27
`
`

`
`for which the Lilley magazine is designed, and the welding caps for which the '639
`
`patent magazine is designed, are cylindrically sh