IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Inter Partes Review of:
`U.S. Patent No. 5,718,737
`Issued: Feb. 17, 1998
`Application No.: 683,353
`Filing Date: Jul. 18, 1996
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`For: Method of Recycling Mixed Colored Cullet into Amber, Green, or Flint
`Glass
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`FILED VIA E2E
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`DECLARATION OF DR. ALEXIS G. CLARE IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,718,737
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`O-I Glass, Inc.
`Exhibit 1004
`Page 001
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`Declaration for Inter Partes Review of USP 5,718,737
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION AND QUALIFICATIONS ......................................... 3
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`II.
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`SUMMARY OF MATERIALS REVIEWED AND CONSIDERED ....... 4
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`III. LEVEL OF SKILL IN THE ART AND PERSPECTIVE APPLIED
`IN THIS DECLARATION ........................................................................ 8
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`IV. STATE OF THE ART ............................................................................. 10
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`V.
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`THE ’737 PATENT ................................................................................. 21
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` Description ..................................................................................... 21
`Claims ............................................................................................ 23
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`VI. CLAIM CONSTRUCTION ..................................................................... 24
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`“unsorted mixed color glass cullet” ............................................... 24
`“at least one of” .............................................................................. 25
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`VII. UNDERSTANDING OF LEGAL PRINCIPLES RELEVANT TO
`PATENTABILITY .................................................................................. 29
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` Obviousness ................................................................................... 29
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`VIII. THE PRIOR ART AND BACKGROUND EVIDENCE ........................ 31
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`Prior Art Relied Upon For Obviousness Combinations ................ 31
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`Duckett (Ex. 1006) .............................................................. 31
`Tooley (Ex. 1007) ................................................................ 32
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`IX. CLAIMS 1-26 OF THE ’737 PATENT ARE OBVIOUS OVER
`DUCKETT ALONE OR IN COMBINATION WITH TOOLEY .......... 34
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`Independent Claims 1 .................................................................... 34
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`Preamble and initial clauses ................................................ 35
`Element 1[a]: obtaining unsorted mixed color glass
`cullet .................................................................................... 36
`Element 1[b]: adding at least one of a decolorizing
`agent and a colorizing agent ................................................ 45
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`Declaration for Inter Partes Review of USP 5,718,737
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`Element 1[c]: melting the mixed color glass cullet and
`any agent added in said adding step .................................... 98
`Element 1[d]: creating a recycled glass product ............... 103
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`Independent Claim 18 .................................................................. 103
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`Element 18[pre]: Preamble and initial clauses .................. 103
`Element 18[a1] and 18[a2]: obtaining unsorted mixed
`color glass cullet, and adding it to the batch mixture ........ 104
`Element 18[b]: adding at least one of a decolorizing
`agent and a colorizing agent .............................................. 107
`Element 18[c]: melting the virgin batch mixture with
`said mixed color glass cullet and any agent added in
`said adding step ................................................................. 108
`Element 18[d]: creating a recycled glass product ............. 109
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`Independent Claim 9 .................................................................... 109
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`Element 9[pre]: Preamble and initial clauses .................... 109
`Element 9[a1]: obtaining unsorted mixed color glass
`cullet .................................................................................. 109
`Element 9[a2]: adding an amount of unsorted mixed
`color glass cullet to a glass melt ........................................ 110
`Element 9[b]: adding at least one of a decolorizing
`agent and a colorizing agent to the glass melt ................... 113
`Element 9[d]: creating a recycled glass product ............... 114
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`Dependent claims ......................................................................... 114
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`Claims 2, 11, 20 ................................................................. 114
`Claims 3, 12, 21 ................................................................. 114
`Claims 4, 13, 22 ................................................................. 115
`Claims 5, 14, 23 ................................................................. 115
`Claims 6, 15, 24 ................................................................. 116
`Claims 7, 16, 25 ................................................................. 117
`Claims 8, 17, 26 ................................................................. 118
`Claims 10, 19 ..................................................................... 119
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`X.
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`CONCLUSION ...................................................................................... 122
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`Exhibit 1004
`Page 003
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`Declaration for Inter Partes Review of USP 5,718,737
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`I.
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`INTRODUCTION AND QUALIFICATIONS
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`
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`I have been retained by Owens Illinois, Inc. and Owens-Brockway
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`Glass Container Inc. (“Petitioner”) to provide my opinion concerning the validity
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`of U.S. Patent No. 5,718,737 (attached to the accompanying Petition as Ex. 1001
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`and henceforth referred to as “the ’737 patent”) in support of this Petition for Inter
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`Partes Review of U.S. Patent No. 5,718,737. I am being compensated for my time
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`at $150/hour for time spent on-campus, $200/hour for time spent off-campus, and
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`$100/hour for travel time.
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`
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`I received Bachelor of Science in Chemical Physics with Subsidiary
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`Mathematics from The University of Reading, U.K. (“Reading”) in 1981. In
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`1984, I received a Doctor of Philosophy degree in Physics from Reading. My
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`thesis was “Neutron Studies of Amorphous and Related Crystalline Materials.”
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`After graduation, I performed additional research in a leading glass
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`research program as a Post-Doctoral Research Fellow at the University of
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`Sheffield, U.K. Following my post-doctoral experience, I became an assistant
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`professor of Glass Science at Alfred University in New York.
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`Beginning in 1995, Alfred University promoted me to Associate
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`Professor of Glass Science and 6 years later I became a Full Professor of Glass
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`Science as well as the Glass Science Program Chair at Alfred University, a
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`position I held until 2012. During my tenure as a glass science professor, I have
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`advised dozens of graduate-level Ph.D. and masters students and collaborated
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`extensively with industry, including a six month sabbatical with a fiber optics
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`company, Galileo.
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`I have extensive experience with glass research, formulation, and
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`manufacturing. Specifically, I have over 35 years of experience in the field of
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`glass science and ceramic engineering. I am an inventor on several patents, and I
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`have authored over 100 academic publications and contributed as an author and an
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`editor to 10 textbooks in the ceramic engineering field.
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`As a result of my contributions to the field, I am the recipient of
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`multiple awards and have been elected Fellow to several leading academic
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`societies, such as the Society of Glass Technology, UK, the American Ceramic
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`Society, and the National Institute of Ceramic Engineers. I am also a past President
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`of the National Institute of Ceramic Engineers.
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` My curriculum vitae, which includes a more detailed summary of
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`my background, experience, publications, and awards, is attached to the
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`accompanying Petition as Ex. 1005.
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`II.
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`SUMMARY OF MATERIALS REVIEWED AND CONSIDERED
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`
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`All of the opinions contained in this Declaration are based on the
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`documents I reviewed and my knowledge and professional judgment. In forming
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`Declaration for Inter Partes Review of USP 5,718,737
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`the opinions expressed in this Declaration, while drawing on my experience in the
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`field of glass science and manufacturing, I reviewed the following documents:
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`Ex.
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`Description
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`1001 U.S. Patent No. 5,718,737 (the “’737 patent”)
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`1003 File History for U.S. Patent No. 5,718,737
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`1004 Declaration of Dr. Alexis G. Clare in Support of Petition for Inter Partes
`Review of U.S. Patent No. 5,718,737 (“Clare Decl.”)
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`1005 Curriculum Vitae of Dr. Alexis G. Clare
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`1006 E. Joseph Duckett, The Influence of Color Mixture on the Use of Glass
`Cullet Recovered from Municipal Solid Waste, Conservation &
`Recycling, Vol. 3, 175-185 (1979) (“Duckett”)
`
`1007 Dr. Fay V. Tooley, The Handbook of Glass Manufacture (3rd ed. 1984)
`(“Tooley”)
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`1008 C.J. Phillips, Glass, The Miracle Maker, Its History, Technology,
`Manufacture, and Applications (2d ed. 1948) (“Phillips”)
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`1009 Roy S. Arrandale, The Employment of Recycled Glass Cullet in Glass
`Making, Am. Inst. Chem. Engs., Seventy-Eighth National Meeting (1974)
`(“Arrandale”)
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`1010
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`Jon Huls & Tom Archer, Pac. Envtl. Servs., Inc., Resource Recovery from
`Plastic and Glass Wastes (1980) (“Huls”)
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`1011
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`John P. Cummings, Owens-Illinois, Cullet Market Needs and
`Specifications (1975) (“Cummings”)
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`1012 Michal Muhlbauer, Decolorizing Crystal Glass, 74 Am. Ceramic Soc’y
`Bullet., 70-73 (May 1995) (“Muhlbauer”)
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`1013 Samuel R. Scholes, Modern Glass Practice (7th ed. 1975) (“Scholes”)
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`1014 W. Dusdorf, et al., Characterization and Stabilization of the Brown Glass
`Chromophore with a Focus on Cullet Use, 42 Silicate Tech. 109-14
`(1991) (“Dusdorf”)
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`Declaration for Inter Partes Review of USP 5,718,737
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`1015 Steve Apotheker, Glass Containers: How Recyclable Will They Be in the
`1990s, Resource Recycling, (June 1991) at 25 (“Apotheker”)
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`1016 Harold R. Samtur, Glass Recycling and Reuse, IES Report 17,
`Quantitative Ecosystem Modeling Group, Institute for Environmental
`Studies, University of Wisconsin-Madison (Mar. 1974) (“Samtur”)
`
`1017 Chemistry Involved in Making Glass Tableware, 84 Crockery & Glass J.,
`Dec. 21,1916, at 79-82 (“Chemistry in Tableware”)
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`1018 V.A. Fedorova, Improving the Color of Lead and Sodium Calcium
`Silicate Glasses, translated from Steklo i Keramika [Glass and Ceramics],
`No. 9, 8-10 (Sept. 1984)
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`1019 Kirk-Othmer Concise Encyclopedia of Chemical Technology (abr. 3d ed.
`1985) (“Concise Encyclopedia of Chemical Technology”)
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`1020 ASTM E708-79, Standard Specification for Waste Glass as a Raw
`Material for the Manufacture of Glass Containers (1980) (“ASTM E708-
`79”)
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`1021 A.E. Badger, Decolorization of Manganese and Sulfur in Glass with
`Application to Use of Furnace Slags, in Raw Materials in the Glass
`Industry, Part II - Minor Ingredients, 371-73 (1983) (“Badger”)
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`1022 C.R. Bamford, Colour Generation and Control in Glass (1977)
`(“Bamford”)
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`1023 R.G.C. Beerkens et al., Recycled Cullet - Important Raw Material for
`Europe, 4 Glass Researcher 8 (Summer 1994) (“Beerkens”)
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`1024 Peter Buchmayer, Die Farbe von Verpackungsglas [The Color of
`Packaging Glass], 42 Verpackungs-Rundschau 11-17 (1991)
`(“Buchmayer”)
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`1025 Foster L. Harding, The Development of Colors in Glass, in Introduction
`to Glass Science, 391-431 (L.D. Pye et al. eds. 1972) (“Harding”)
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`1026 C.E. Seeley, Glass in Solid Waste Recovery Systems, in Resource
`Recovery and Utilization, ASTM Int’l, 114-21 (1975)
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`1027 Steven M. Weiser, The Effect of Amber Cullet Additions on Amber Glass
`Transmission, 8 Ceramic Eng’g Sci. Proc. 200-07 (1987) (“Weiser”)
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`Declaration for Inter Partes Review of USP 5,718,737
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`1028 M.C. Brew, Refining Agents, Colourants and Decolourisers Used in
`Container Glass, Glass, Mar. 1989, at 79 (“Brew”)
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`1029 Peter Buchmayer, Quality Control and Quality Assurance Related to Raw
`Materials and Melting in a Modern Container Glass Plant, Glass, Aug.
`1986, at 291-98, 387-90 (“Buchmayer 1986”)
`
`1030 Henry S. Cole & Kenneth A. Brown, Advantage Glass!: Switching to
`Plastic is an Environmental Mistake (1993) (“Cole”)
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`1031 D. Guldal & C. Anak, A Study on Cr3+/Cr6+ Equilibria in Industrial
`Emerald Green Glasses, J. Non-Crystalline Solids, Nos. 38 & 39, 251-56
`(1980) (“Guldal”)
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`1032 U.S. Patent No. 3,498,806 (“Hammer”)
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`1033 U.S. Patent No. 576,312 (“Hirsch”)
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`1034 U.S. Patent No. 3,867,158 (“Hopkins”)
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`1035 U.S. Patent No. 5,346,867 (“Jones”)
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`1036
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`Japan Patent No. JP4219340 (“JP-340”)
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`1037
`
`James E. McCarthy, Recycling and Reducing Packaging Waste: How the
`United States Compares to Other Countries, Resources, 8 Conservation
`& Recycling 293-360 (1993) (“McCarthy”)
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`1038 U.S. Patent No. 4,792,536 (“Pecoraro”)
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`1039 Helmut A. Schaeffer, Recycling of Cullet and Filter Dust - Challenges to
`the Melting of Glass, 23 Chimica Chronica New Series 21-29 (1994)
`(“Schaeffer”)
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`1040 Fujio Shimono, A Calculation Method to Predict the Colour of Glass, 60
`Glass, No. 2, 61-63 (1983) (“Shimono”)
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`1041 Bill Simpson, Colourants and Decolourisers in Flat and Hollow Glass
`Production, 69 Glass, No. 12, 501, 503 (1992) (“Simpson”)
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`1042 Woldemar A. Weyl, Coloured Glasses (1951)
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`1043 R.D. Wright, Batch Redox and Colour Control, 29 Glass Tech., No. 3,
`91-93 (1988)
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`Declaration for Inter Partes Review of USP 5,718,737
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` My opinions are additionally guided by my appreciation of how a
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`person of ordinary skill in the art would have understood the claims of the ’737
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`patent at the time of the alleged invention, which I have been asked to assume is
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`March 3, 1995.
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`III. LEVEL OF SKILL IN THE ART AND PERSPECTIVE APPLIED IN
`THIS DECLARATION
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`I understand that certain issues relating to patent validity must be
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`judged from the perspective of a person of ordinary skill in the relevant art
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`(“POSA”), as I discuss below.
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`
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`I have been informed and understand that a Person of Ordinary Skill
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`in the Art (“POSA”) is a hypothetical person who is presumed to be aware of all
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`pertinent prior art, thinks along conventional wisdom in the art, and is a person of
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`ordinary creativity. I am familiar with the knowledge and capabilities of one of
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`ordinary skill in the art. Unless otherwise stated, my testimony below refers to the
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`knowledge of one of ordinary skill in the art as of March 3, 1995.
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` With respect to the ’737 patent, a POSA in the March 1995 timeframe,
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`a POSA would have been familiar with industrial glass-making techniques and
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`batch components—e.g., cullet, colorizers, decolorizers, and other raw materials.
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`The experience and education level may vary between persons of ordinary skill,
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`with some persons having a Bachelor’s degree in glass science or engineering,
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`ceramic science or engineering (with a focus on glass), materials science or
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`engineering (with a focus on glass), or an equivalent degree, and at least four years
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`of experience researching, analyzing, or developing glass-making techniques and
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`ingredients. More education can supplement relevant experience and vice versa.
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`In determining the level of ordinary skill, I have been asked to
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`consider, for example, the types of problems encountered in the field, prior
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`solutions to those problems, the rapidity with which innovations are made, the
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`sophistication of the technology, and the educational level of active workers in the
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`field..
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`I believe that I would have qualified as a person of at least ordinary
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`skill in the art as of the claimed March 3, 1995 priority date of the ’737 patent, and
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`I believe that I have a sufficient level of knowledge, experience, and education to
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`provide an expert opinion in the field of the ’737 patent.
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` My own level of skill level exceeded that of the ordinary level of skill
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`in the art as of March 1995, as I was Associate Professor of Glass Science by that
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`time and had earned my Ph.D. eight years earlier. However, I was (and still am)
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`well-acquainted with the actual performance and capabilities of a person of
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`ordinary skill in the art as defined above. This is because, during the relevant
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`timeframe, I supervised and evaluated the performance of students, interns, and
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`practicing engineers who had degrees and/or experience similar to that of a person
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`of ordinary skill in the art.
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`Declaration for Inter Partes Review of USP 5,718,737
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` My opinions in this Declaration are based on the perspective of a
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`person of ordinary skill in the art as of March 1995. This is true even if the
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`testimony is stated in the present tense. Each of the statements below reflects my
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`opinion based on my review of the list of materials above, including the ’737
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`patent.
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`IV. STATE OF THE ART
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`
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`I have been asked to provide a brief tutorial to acquaint one with the
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`very basics of glassmaking and some of the terminology. I am discussing what was
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`known in the relevant time frame, i.e., mid-1995, but it should be understood that
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`these basics were known long before then.
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` The glass at issue here is “container glass,” which is the glass that
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`forms familiar containers, such as bottles, jars, and the like. Most people are
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`familiar with green-colored wine bottles, amber and green beer bottles, flint (an
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`industry term for clear) condiment and pickle jars, and so forth. In addition to
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`different colors, glass can have various formulations or types. Most container glass
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`was (and still is) “soda-lime” glass, i.e., it includes two chemicals called “soda”
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`and “lime.” Other ingredients include sand (silica), various oxides, cullet,
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`decolorizing agents, and colorizing agents. For example, Phillips explained in his
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`1948 treatise:
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`Declaration for Inter Partes Review of USP 5,718,737
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`Ex. 1008, Phillips 24-25 see also Ex. 1009, Arrandale 1-10. I note that cullet is
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`not just excess glass from a previous melt (or batch). Cullet also includes glass
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`products that were accidentally broken or rejected for appearance reasons:
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`Phillips 132.
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`Phillips 243-244.
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` By 1995, glass factories also commonly used “foreign” cullet, which
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`is cullet from outside the plant – often purchased from a cullet dealer. See Ex. 1006,
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`Duckett 175-176; Ex. 1010, Huls 4-5, 53-56; Ex. 1009, Arrandale 6-10. As Tooley
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`noted in the 1984 version of his treatise:
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`Ex. 1007, Tooley 90-10. As more foreign cullet is used in each batch, it becomes
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`an important raw material, and quality control becomes correspondingly
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`significant:
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`
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`Tooley 90-10. Tooley also recognized that color sorting was (and still is) an
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`important part of quality control, but since it was (and still is) imperfect, it is
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`important to set and maintain standards.
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`Tooley 90-10; see also Duckett 175-177; Ex. 1009, Arrandale 6-10 (“The glass
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`container industry has purchased and used recycled cullet from outside sources
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`
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`since time immemorial.”).
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` Glass manufacturers set specifications to ensure that “foreign” cullet
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`will not introduce unacceptable levels of impurities, such as color contamination
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`from off-color cullet. Limiting acceptable levels of cross-color contamination in
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`the specification allows manufacturers to easily correct for off-color cullet in order
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`to achieve a sufficiently amber, green, or flint glass container. Ex. 1010, Huls 75
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`(“To be acceptable to the container manufacturer for use in making flint glass, the
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`cullet must be at least 95 percent clear. Similarly, color-sorted cullet labeled
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`“green” or “amber” can contain only limited amounts of other colors. These
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`specifications are listed below (73):
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`Waste glass meeting these color specifications provides the industrial user with
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`reasonable assurance that his final product will not be offcolor, and, therefore,
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`will meet specification requirements.”); see also Duckett 176; Ex. 1009,
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`Arrandale 15.
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` As Tooley recommends, the best strategy to “correct” for foreign
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`cullet was (and is) to treat the cullet on the same basis as any other raw material –
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`take a representative sample of the cullet, analyze it, and include it as a constituent
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`in the batch calculations—which will include calculating the amount of
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`decolorizers and colorizing agents.
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`…
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`Tooley 51; see also Duckett 182.
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` Off-color cullet often introduces unwanted chemicals, particularly
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`colorizing agents and decolorizing agents. By accounting for foreign cullet in the
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`glass batch calculation, the glass manufacture can adjust the color of the final glass
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`product though additional colorizing and/or decolorizing agents to mitigate the
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`effects of agents introduced by cullet.
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`Declaration for Inter Partes Review of USP 5,718,737
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`Ex. 1008, Phillips 25; see also Tooley 575-576; Ex. 1024, Buchmayer-1991 at 15
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`(“However, this increased use of recycled glass poses some problems for product
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`managers. One of these is the quality of the glass color. The influence of heavy
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`metal oxides on the quality of clear glass has already been mentioned. Table 2
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`shows limit values for iron and chromium oxide in packaging glass. Thus a clear
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`glass with a maximum of 0.07% Fe2O3 can be decolorized just sufficiently.
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`However, additional chromium oxide, introduced by recycled glass, considerably
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`impairs the color not only of clear glass but also of amber glass… Finally, it must
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`be mentioned that high cullet uses of more than 90%, today common for green
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`glass, allow little scope for influencing the color, i.e. the dominant wavelength,
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`e.g. by redox measures.”); Ex. 1009, Arrandale 9 (“The presence of organic
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`contaminants in flint batch, as brought in by normal cullet, is usually counter-
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`balanced by a small excess of oxidizer charge, usually sodium sulfate, arsenic
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`trioxide, or sodium nitrate. The decolorizer charge is varied to suit the day-to-day
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`variations in glass color. The oxidizers are varied a small amount if need be.”).
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` The most common colorizing agents used to make (and therefore
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`found in) green container glass were (and continue to be) chromium oxide and iron
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`oxide. The most common colorizing agents for amber glass provide iron, sulfur,
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`and “reducing” conditions. “Reducing” conditions ensure that most sulfur is
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`present in the glass batch in the form primarily responsible for amber colorizing
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`(sulfide, S2-). Bamford explains container glass colorizing agents in his 1977
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`treatise:
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`…
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`Declaration for Inter Partes Review of USP 5,718,737
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`Ex. 1022, Bamford 153-154; see also Duckett 179 (Table 1 showing iron oxide
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`and chromium oxide colorizing agents in flint, amber, and green glass); Duckett
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`178.
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` Colorizing and decolorizing agents may operate either chemically or
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`physically. Chemically, colorizing and decolorizing agents can be reducing or
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`oxidizing agents that affect the oxidation state of other colorizing agents. The
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`oxidation state of the colorizing agent often affects its color and/or intensity. For
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`example, iron in the 3+ oxidation state (Fe3+, “ferric iron”) produces a fainter
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`yellowish color than iron in the 2+ oxidation state (Fe2+, “ferrous iron”) which
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`produces a more intense blueish color. Therefore, one type of decolorizing process
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`(chemical decolorization) is to add oxidizing agents to favor, as much as possible,
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`iron in the ferric state (Fe3+ ) rather than iron in the ferrous (Fe2+) state to yield
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`glass with a faint yellow-green color.
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`
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`18
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`O-I Glass, Inc.
`Exhibit 1004
`Page 019
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`Declaration for Inter Partes Review of USP 5,718,737
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`Tooley 575.
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`
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` Conversely, physical decolorizing agents supply a complementary
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`color to offset or mask an unwanted color by adding a colorizing agent which
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`produces this complementary color. Complementary colors, as taught in grade
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`school art classes, are color pairs that, when combined, produce a neutral grey. For
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`example, green and red are complementary colors, as are blue and yellow.
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`Therefore, red colorizing agents act as physical decolorizing agents for green
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`colorizing agents. Similarly, blue colorizing agents act as physical decolorizing
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`agents for yellow colorizing agents.
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`19
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`O-I Glass, Inc.
`Exhibit 1004
`Page 020
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`Declaration for Inter Partes Review of USP 5,718,737
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`Tooley 576; see also Ex. 1012, Muhlbauer 70 (showing complementary color
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`
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`pairs):
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` With the appropriate amounts of colorizing and decolorizing agents,
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`after accounting for any impurities introduced by cullet or other raw materials,
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`glass manufacturers can achieve a desired glass color.
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`
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`20
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`O-I Glass, Inc.
`Exhibit 1004
`Page 021
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`Declaration for Inter Partes Review of USP 5,718,737
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`
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`V. THE ’737 PATENT
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` Description
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` The ’737 patent is entitled “Method Of Recycling Mixed Colored
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`Cullet Into Amber, Green, Or Flint Glass.” Amber, green, and flint (clear) were
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`and still are, the three most common colors of container glass.
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` The specification of the ’737 patent describes methods for recycling
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`“mixed colored cullet glass (i.e., broken pieces of glass of mixed colors and types)”
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`into new glass products. Specifically, it focuses on making amber glass from a
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`mixture of mixed colored cullet and a batch of ingredients for making common
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`amber container (e.g., beer bottle) glass:
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`’737 patent 1:10-25.
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`
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`21
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`Exhibit 1004
`Page 022
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`Declaration for Inter Partes Review of USP 5,718,737
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` The patent explains that glass recycling includes collecting post-
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`consumer glass, which is typically flint, green, and amber in color and
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`predominantly soda-lime glass:
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`’737 patent 1:27-43.
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` The patent also states that a typical color distribution for the cullet
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`recovered from post-consumer waste is 65% flint, 20% amber, and 15% green.
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`
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`’737 patent 2:1-10.
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`22
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`Exhibit 1004
`Page 023
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`Declaration for Inter Partes Review of USP 5,718,737
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` The patent states that it would be desirable to re-use mixed colored
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`glass by “coloriz[ing] and/or decolorize[ing]” one of the colors:
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`
`
`’737 patent 2:10-20.
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` The patent continues, listing various known decolorizing agents. ’737
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`patent at 2:10-3:30. Importantly, it notes that it was known to decolorize the
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`blue/blue-green color caused predominantly by ferrous iron (Fe+2) by oxidizing the
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`iron as much as possible to ferric iron (Fe+3), which is “a relatively much weaker
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`colorant than ferrous iron.” ’737 patent 2:10-42.
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`
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`I will discuss the ’737 patent further below in the context of the claims
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`and prior art.
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` Claims
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` The ’737 patent has 26 claims, of which claims 1, 9, and 18 are
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`independent.
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` Claim 1 is a representative independent claim:
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`1. A method of creating recycled glass products, comprising the steps
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`of:
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`23
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`Exhibit 1004
`Page 024
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`Declaration for Inter Partes Review of USP 5,718,737
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`obtaining unsorted mixed color glass cullet having glass of at least
`
`two different colors;
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`adding to said mixed color glass cullet at least one of a decolorizing
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`agent which selectively decolorizes at least one of the colors of said
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`unsorted mixed color glass cullet and a colorizing agent which
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`enhances a remaining color of said unsorted mixed color glass cullet;
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`and
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`melting the mixed color glass cullet and any agent added in said
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`adding step to a molten state;
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`creating a recycled glass product of said remaining color from the
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`selectively colorized/decolorized molten mixed color glass cullet.
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`
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`I will explain the specifics of the independent claims and the
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`dependent claims at issue in later sections which also discuss the grounds of
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`invalidity.
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`VI. CLAIM CONSTRUCTION
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`
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`In my analysis, I gave all claim terms their ordinary and customary
`
`meanings, with the following exceptions.
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`
`
`“unsorted mixed color glass cullet”
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` First, I was instructed by counsel to perform my analysis under the
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`assumption that the claim term, “unsorted mixed color glass cullet,” recited in
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`claim 1 means “broken pieces of glass of mixed colors” -- with the understanding
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`that any measurable color mixing qualified as “mixed colors.” For example,
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`24
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`Exhibit 1004
`Page 025
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`Declaration for Inter Partes Review of USP 5,718,737
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`nominally “amber” cullet often has some amount of color contamination. I was
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`asked to assume that such cullet with, for example, 90% amber and up to 10% flint
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`and/or green is “broken pieces of glass of mixed colors” and therefore “unsorted
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`mixed color glass cullet.”
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` Second, I also analyzed the claims and art under the assumption that
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`the above definition was incorrect, and that such “amber” cullet with up to 10%
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`green and/or flint was not “unsorted mixed color glass cullet.” I instead assumed
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`that the term means “mixed colored glass that has never been color sorted and
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`mixed colored glass that was unsuccessfully color sorted.” This definition includes
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`glass that has been unsuccessfully color sorted, in that the result is not primarily or
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`largely one color. It also includes small glass pieces that cannot be color sorted at
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`all. This definition excludes only the sorted product itself that is primarily or
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`largely one color, such as the 90% amber example I just mentioned.
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`
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`I was not asked to analyze, and have not analyzed, which meaning
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`was correct in the context of the ’737 patent.
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`
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`“at least one of”
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`
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`I was asked by counsel to analyze the meaning of the “at least one of”
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`term in independent claims 1, 9, and 18.
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` For example, claim 1 recites adding “at least one of a decolorizing
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`agent…and a colorizing agent,” as shown below in context (with added emphasis).
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`25
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`O-I Glass, Inc.
`Exhibit 1004
`Page 026
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`Declaration for Inter Partes Review of USP 5,718,737
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`1. A method of creating recycled glass products, comprising the steps
`
`of:
`
`obtaining unsorted mixed color glass cullet having glass of at least
`
`two different colors;
`
`adding to said mixed color glass cullet at least one of a decolorizing
`
`agent which selectively decolorizes at least one of the colors of said
`
`unsorted mixed color glass cullet and a colorizing agent which
`
`enhances a remaining color of said unsorted mixed color glass cullet;
`
`and
`
`melting the mixed color glass cullet and any agent added in said
`
`adding step to a molten state;
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`creating a recycled glass product of said remaining color from the
`
`selectively colorized/decolorized molten mixed color glass cullet.
`
`
`
`I conclude that this claim language requires adding one or more
`
`colorizing agents and/or one or more decolorizing agent. For example, a person
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`may add a colorizing agent, or a decolorizing agent, or both – at least one of the
`
`two must be added.
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` The dependent claims help show why this is the case. For example,
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`claims 3 and 4 recite adding both a decolorizing agent and a colorizing agent:
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`3. A method as in claim 2, wherein said adding step comprises the
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`steps of adding a decolorizing agent which selectively decolorizes
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`26
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`O-I Glass, Inc.
`Exhibit 1004
`Page 027
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`Declaration for Inter Partes Review of USP 5,718,737
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`said green colored glass and a colorizing agent which colorizes said
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`flint and decolorized green colored glass to amber color.
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`4. A method as in claim 2, wherein said adding step comprises the
`
`steps of add