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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`YITA LLC,
`Petitioner
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner
`__________________
`
`Case No. IPR2020-01138
`Patent No. 8,382,186
`__________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`

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`Case IPR2020-01140
`Patent No. 8,382,186
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`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`FACTUAL BACKGROUND.......................................................................... 1
`
`SUMMARY OF ARGUMENT ....................................................................... 2
`
`III. THE ’186 Patent .............................................................................................. 8
`
`A. Development of the ’186 Patent Vehicle Floor Tray ............................ 8
`
`B.
`
`C.
`
`The ’186 Patent Family Priority Chain ................................................. 9
`
`The ’186 Patent Technology ...............................................................10
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART ...........................................19
`
`V. YITA’S OWN EXPERT ADMITS THAT EACH PATENT IN THE
`MACNEIL PATENT FAMILY PROVIDES EXPRESS WRITTEN
`DESCRIPTION SUPPORT FOR THE CHALLENGED CLAIM
`LANGUAGE .................................................................................................21
`
`VI. THE PETITION IMPROPERLY CONSTRUES THE CLAIMS TO
`MANUFACTURE A PRIORITY CHALLENGE ........................................29
`
`A. Yita Misrepresents the Scope of Claim 1 and Proposes an
`Improper and Unsupported Construction of “Substantially
`Uniform” Thicknesses .........................................................................31
`
`1.
`
`2.
`
`Claim 1 Does Not Require That the Entire Floor Tray
`Have a Substantially Uniform Thickness .................................31
`
`“Substantially Uniform Thicknesses” Does Not Require
`“a Uniformity in Thickness Approaching Complete
`Uniformity” ...............................................................................34
`
`B. When Properly Construed, the “Substantially Uniform
`Thicknesses” of the Specifically Identified Tray Features
`Account for Variations in Thickness That Occur as a Result of
`the Manufacturing Process ..................................................................41
`
`VII. THE SINGLE GROUND OF THE PETITION FAILS BECAUSE
`MACNEIL ’748 IS NOT PRIOR ART TO THE ’186 PATENT .................49
`
`i
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`A.
`
`The ’441 Application and All Intervening Applications Provide
`Written Description Support for the ’186 Patent Claims ....................50
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`Case IPR2020-01140
`Patent No. 8,382,186
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`1.
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`2.
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`All Intervening Applications in the ’186 Priority Chain
`Provide Written Description Support Substantively
`Identical to the ’441 Application Disclosure ............................53
`
`The ’441 Application Provides Written Description
`Support for the ’186 Patent Claims ...........................................55
`
`B.
`
`The ’186 Patent has Priority to the ’441 Application .........................71
`
`C. MacNeil ’748 is Not Prior Art.............................................................71
`
`VIII. THE BOARD SHOULD ALSO DENY THE PETITION UNDER 35
`U.S.C. § 325(D) BECAUSE THE OFFICE HAS ALREADY
`CONSIDERED THE PETITION’S PRIORITY-BASED WRITTEN
`DESCRIPTION SUPPORT CHALLENGE..................................................72
`
`IX. CONCLUSION ..............................................................................................74
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`Case IPR2020-01140
`Patent No. 8,382,186
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`EXHIBIT LIST
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`Description
`Redline comparing the ’441 application with the subsequently
`filed ’703 application
`Prosecution history of application 10/976,441 (U.S. Patent No.
`7,316,847) filed 10/29/2004
`Redline comparing the ’441 application with the subsequently
`filed ’203 application
`Declaration of James L. Throne, Ph.D.
`Redline comparing the ’203 application with the subsequently
`filed ’899 application
`Reserved
`Reserved
`Prosecution history of application 11/463,203 (abandoned) filed
`8/8/2006
`Prosecution history of application 13/595,703 (U.S. Patent No.
`8,382,186) filed 8/27/2012
`Reserved
`
`
`
`Exhibit No.
`2001
`
`2002
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`2003
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`2004
`2005
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`2006
`2007
`2008
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`2009
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`2010
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`Patent No. 8,382,186
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`CASES
`
`Anchor Wall Sys. v. Rockwood Retaining Walls,
`340 F.3d 1298 (Fed. Cir. 2003) .......................................................................... 39
`
`Andrew Corp. v. Gabriel Elecs., Inc.,
`847 F.2d 819 (Fed. Cir. 1988) ............................................................................ 47
`
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) .......................................................................... 52
`
`Blue Coat Sys., Inc. v. Finjan, Inc.,
`IPR2016-01444, Paper 9 (P.T.A.B. Feb. 16, 2017) ............................................ 51
`
`Circle R, Inc. v. Trail King Indus.,
`21 Fed. Appx. 894 (Fed. Cir. 2001) .................................................................... 39
`
`Coalition for Affordable Drugs VII LLC v. Pozen Inc.,
`IPR2015-01344, Paper 22 (P.T.A.B. Dec. 17, 2015) ......................................... 51
`
`Cordis Corp. v. Medtronic AVE, Inc.,
`339 F.3d 1352 (Fed. Cir. 2003) .......................................................................... 39
`
`Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp.,
`635 F.3d 1373 (Fed. Cir. 2011) .......................................................................... 52
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................... 4
`
`Deering Precision Instruments, L.L.C. v. Vector Distrib. Sys.,
`347 F.3d 1314 (Fed. Cir. 2003) .......................................................................... 39
`
`Ecolab, Inc. v. Envirochem, Inc.,
`264 F.3d 1358 (Fed. Cir. 2001) .......................................................................... 38
`
`Ex Parte Nobuya Sato & Kazunari Saitou,
`No. 2012-001276, 2014 WL 1154010 (P.T.A.B. Mar. 20, 2014) ...................... 68
`
`iv
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`Patent No. 8,382,186
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`Fitbit, Inc. v. BodyMedia, Inc.
`IPR2016-00707, Paper 9 (P.T.A.B. Sept 8, 2016) .............................................. 52
`
`Ford Motor Co. v. Mass. Inst. of Tech.,
`IPR2020-00013, Paper 9 (P.T.A.B. Mar. 26, 2020) ........................................... 72
`
`Hospira, Inc. v. Genentech, Inc.,
`Case IPR2017-00739, Paper 16 (P.T.A.B. July 27, 2017) ................................. 72
`
`In re Heinle,
`342 F.2d 1001 (C.C.P.A. 1965) .......................................................................... 65
`
`In re Mraz,
`455 F.2d 1069 (C.C.P.A. 1972) .......................................................................... 65
`
`In re Wright,
`569 F.2d 1124 (C.C.P.A. 1977) .......................................................................... 68
`
`In re Wright,
`866 F.2d 422 (Fed. Cir. 1986) ............................................................................ 52
`
`Koito Mfg., Ltd. v. Turn-Ke-Tech, LLC,
`381 F.3d 1142 (Fed. Cir. 2004) .......................................................................... 52
`
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) .......................................................................... 71
`
`Medrad, Inc. v. MRI Devices Corp.,
`401 F.3d 1313 (Fed. Cir. 2005) .......................................................................... 41
`
`Nystrom v. TREX Co.,
`424 F.3d 1136 (Fed. Cir. 2005) .......................................................................... 68
`
`Playtex Prods., Inc. v. Procter & Gamble Co.,
`400 F.3d 901 (Fed. Cir. 2005) ............................................................................ 39
`
`SMR Automotive Sys. USA, Inc. v. Magna Mirrors of Am., Inc.,
`IPR2018-00520, Paper 12 (P.T.A.B. July 26, 2018) .................................... 72, 73
`
`Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. 1991) .............................................................. 52, 65, 69
`
`v
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`Case IPR2020-01140
`Patent No. 8,382,186
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`
`Verve v. Crane Cams,
`311 F.3d 1116 (Fed. Cir. 2002) .............................................................. 48, 67, 68
`
`Yita LLC, v. MacNeil IP LLC,
`IPR2020-01140, Paper 3 ..................................................................................... 28
`
`STATUTES
`
`35 U.S.C. § 311(b) (2018) ......................................................................................... 4
`
`35 U.S.C. § 312(a)(3) ............................................................................................... 49
`
`35 U.S.C. § 314(a) ................................................................................................... 49
`
`OTHER AUTHORITIES
`
`37 C.F.R. §§ 42.104(b)(2)-(4) .................................................................................. 49
`
`37 C.F.R. § 42.108(c) ............................................................................................... 49
`
`77 Fed. Reg. 48,682 (Aug. 14, 2012)......................................................................... 4
`
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`Case IPR2020-01140
`Patent No. 8,382,186
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`I.
`
`FACTUAL BACKGROUND
`
`In 1989, one man with a dream, David MacNeil, took out a second mortgage
`
`on his house and started an automotive accessory company. 31 years later, with an
`
`incredible amount of hard work, dedication and innovation, that company has
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`become a household name – WeatherTech®. Mr. MacNeil first operated out of his
`
`garage and, today, WeatherTech presents SuperBowl ads, like Budweiser and Ford.
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`Starting with one employee, WeatherTech now employs well over a thousand people
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`in the Chicagoland area. WeatherTech is a literal embodiment of the American
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`dream.
`
`WeatherTech’s incredible commercial success is largely due to one product –
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`its custom vehicle floor tray, which is the subject of the ’186 Patent at issue in this
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`Petition. This one product, introduced in 2004, revolutionized the industry and
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`solved many key problems left unaddressed in prior art vehicle floor coverage
`
`products. After WeatherTech introduced its floor tray product, many competitors in
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`the industry started to mimic its patented features, due to its tremendous commercial
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`success, and WeatherTech has spent the last ten years vigorously defending its
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`intellectual property rights.
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`Petitioner Yita, LLC (“Yita”) is the alleged exclusive distributor of Chinese
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`manufacturing conglomerate Jinrong (SH) Automotive Development Co., Ltd.
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`(“Jinrong”). Jinrong has been studying the market for some time and is very aware
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`of not only WeatherTech’s floor liner product, but also of its patent portfolio.
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`Indeed, in 2016, a Jinrong principal cited a WeatherTech patent as prior art in a
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`Chinese utility model application. After WeatherTech became aware of Yita’s
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`infringing floor tray product, WeatherTech sued Yita in April 2019. That case is
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`currently pending in the Western District of Washington.
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`Days before the one-year time bar, Yita filed four separate Petitions on two of
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`WeatherTech’s patents.1
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`II.
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`SUMMARY OF ARGUMENT
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`In this Petition, Yita raises a single ground based on a single reference, U.S.
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`Patent No. 7,444,748 (“MacNeil ’748”). But this ground is fatally flawed because
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`MacNeil ’748 is not prior art to the ’186 Patent. Rather, each ’186 Patent claim finds
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`full written description support in its earliest claimed priority application, U.S.
`
`Application No. 10/976,441 (“the ’441 application”), to which MacNeil ’748 also
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`claims priority. Because of this shared earliest priority date, MacNeil ’748 is not2
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`prior art to the ’186 Patent. For this reason alone, the Board should deny institution.
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`Yita’s Petition starts with roughly 20 pages discussing the prior art going back
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`to the 1950s. This discussion is irrelevant to the single ground that Yita relies on.
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`1 Going forward Patent Owner shall be referred to as “MacNeil.”
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` Unless otherwise indicated, all emphasis has been added.
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`In any event, much of the prior art that Yita discusses was present in MacNeil’s
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`Information Disclosure Statement to the Office, and some of this prior art was
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`discussed and considered extensively by various Examiners in the ’186 Patent
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`family’s prosecution history. Compare Petition, 2-19, with EX1002, 144-51, 162-
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`175.
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`As MacNeil discusses in detail below, Yita’s Petition fails right out of the
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`gate. Incredibly, Yita’s expert admits that express written description support exists
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`in the original ’441 application for the critical claim limitation at issue, and these
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`exact disclosures flowed through every patent in the chain. Yita’s expert concedes
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`that support for the claim limitation at issue—“substantially uniform thicknesses”—
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`was expressly disclosed in both the language and the Figures of the ’441
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`application.3 Yita’s admission is fatal to its Petition. MacNeil respectfully submits
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`that, on this basis alone, the Board should deny institution.
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`3 And the Office agreed with Yita’s expert. When “substantially uniform” thickness
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`was first amended into the claims in the ’186 patent family’s prosecution history (in
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`the ’899 patent application), MacNeil directed the Office to Figures 3 and 4, and
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`MacNeil’s disclosed process, for express written description of this claim language.
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`EX1022, 209. After reviewing MacNeil’s response, the Office allowed the claims.
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`Next, to manufacture its single ground Yita challenges the priority claim of
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`the ’186 Patent and launches a written description challenge4 by misrepresenting the
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`claim language and proposing an improper, unsupported claim construction. Yita
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`attacks “select” language in Claim 1: “thicknesses … being substantially uniform
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`throughout the tray,” which Yita argues means that the entire claimed floor tray has
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`“a uniformity in thickness approaching complete uniformity.” But Yita’s
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`construction—proposed to manufacture a false premise for its written description
`
`challenge—is contrary to claim language excised by Yita via ellipsis, as well as other
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`intrinsic evidence. The Board should reject it.
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`First, Yita misrepresents the scope of Claim 1 by misleadingly setting forth
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`only part of the claims through selective use of shortened quotes and ellipses. Then,
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`Yita argues that the selected claim language should be construed to require that the
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`entire floor tray have a “substantially uniform thickness.” This is not what the claims
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`state and one skilled in the art of thermoforming would understand this. The claims
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`clearly define only certain tray features as having the recited “substantially uniform
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`4 Yita’s priority challenge is also a thinly disguised § 112 written description attack
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`that is not a proper basis on which to seek inter partes review. Cuozzo Speed Techs.,
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`LLC v. Lee, 136 S. Ct. 2131, 2141-42 (2016); 35 U.S.C. § 311(b) (2018); 77 Fed.
`
`Reg. 48,682 (Aug. 14, 2012). On this basis, as well, institution should be denied.
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`thickness,” i.e., the central panel, the first panel, the second panel, the reservoir, and
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`the baffles. Yita’s failure to understand what the claim language actually says reveals
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`an incurable misunderstanding of what the ’186 Patent teaches, which infects its
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`entire Petition and the testimony of Dr. Koch, Yita’s expert.
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`On top of its misleading presentation of select claim language, Yita proposes
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`an unsupported construction, defining the entire floor tray as having a “substantially
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`uniform thickness.” And Yita’s proposal that the “substantially uniform
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`thicknesses” of the recited tray features “approach[] complete uniformity” blatantly
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`ignores and contradicts
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`the
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`intrinsic and extrinsic
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`record, well-known
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`thermoforming principles, Federal Circuit law construing these exact same (and
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`similar) terms, and reality.
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`Indeed, Yita relies solely on the testimony of Dr. Koch to support arguments
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`that are technically inaccurate and contrary to common knowledge in the industry.
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`But Dr. Koch does not have any actual industry knowledge or experience in the
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`thermoforming industry, which is key to understanding the ’186 Patent’s detailed
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`manufacturing processes, including the exemplified thermoforming process for
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`making the claimed vehicle floor tray. This lack of knowledge and experience
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`renders Dr. Koch unqualified to provide expert testimony, particularly with respect
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`to understanding the reasons why the claimed tray features have “substantially
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`uniform thickness[es]” as a result of thermoforming.
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`As explained in this Response and the detailed declaration of MacNeil’s
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`nationally recognized thermoforming expert, James L. Throne, Ph.D.—an expert
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`with substantial industry knowledge and experience with thermoforming—Dr.
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`Koch’s conclusory opinions regarding thermoforming are incorrect, contrary to
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`record evidence, and fundamentally misunderstand the thermoforming process.
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`MacNeil’s expert, Dr. Throne, literally wrote the book on thermoforming. Two of
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`them in fact. The vast majority of Dr. Koch’s testimony cites to nothing other than
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`Dr. Throne’s books (EX1008-09) and Yita has cited Dr. Throne as a person of skill
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`in the art (POSITA). Petition, 4 (citing EX1009 to show what a POSITA would
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`appreciate).
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`As Dr. Throne explains, contrary to Dr. Koch’s opinion, a POSITA for the
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`’186 Patent technology would never understand a final thermoformed product, such
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`as a vehicle floor tray, to have a thickness that is more uniform than the original
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`starting blank sheet—much less a thickness “approaching complete uniformity.”
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`EX2004, ¶37. Yet, that is exactly what Yita asks the Board to adopt with its proposed
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`construction.
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`When Claim 1 is properly construed to account for thickness variations of the
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`claimed tray features that result from the thermoforming process, each application
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`in the ’186 Patent’s priority chain, including the earliest filed ’441 application,
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`provides written description support for every feature of the ’186 Patent claims,
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`including the specified tray features—i.e., the central panel, the first panel, the
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`second panel, the reservoir, and the baffles—that are specifically defined by the
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`claims as having “substantially uniform thickness.” Yita’s own expert concedes as
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`much.
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`Thus, the ’186 Patent claims are entitled to the filing date of the ’441
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`application, and Yita’s MacNeil ’748 reference, which claims priority to the same
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`effective filing date of the ’441 application, is not prior art to the ’186 Patent. Yita’s
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`single ground fails for this reason alone, and the Board should deny institution.
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`Further, the Board should exercise its discretion and deny institution under 35
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`U.S.C. § 325(d) because the Office has already considered and rejected Yita’s
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`purported priority-based written description challenge. In particular, during
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`prosecution of U.S. Application No. 12/879,899 (“the ’899 application”), the
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`immediate parent to the ’186 Patent, the Office (and in fact, the same Examiner)
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`already considered and found written description support for substantially the same
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`claim language that Yita challenges here based upon the same priority disclosure
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`(including language and Figures) in the ’441 application. The Board should deny
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`institution for this additional reason.
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`III. THE ’186 Patent
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`A. Development of the ’186 Patent Vehicle Floor Tray
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`As the ’186 Patent explains, many manufacturers have attempted but failed to
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`develop a vehicle floor mat (and later, the more complex vehicle floor tray of the
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`’186 Patent) that provides excellent protection for, and closely conforms to, a vehicle
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`foot well, preventing unnecessary movement of the tray during use. EX1001, 1:24-
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`2:48. Starting with the ’441 application in 2004 (which matured into U.S. Patent
`
`No. 7,316,847), Patent Owner MacNeil filed for patent protection on its innovative
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`floor trays that revolutionized the industry and solved many key problems
`
`unaddressed in prior art vehicle floor coverage products. There is a reason
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`MacNeil’s floor tray product is exhibited in SuperBowl commercials and the prior
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`art Yita summarizes at length was eclipsed in the market.
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`Indeed, due to manifest differences in structure and manufacturing of the floor
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`trays described in the ’441 application, the prior art lacks numerous claim
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`elements—including, e.g., a vehicle floor tray integrally formed from a sheet of
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`polymeric material of substantially uniform thickness; thicknesses of the
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`thermoformed central panel, first panel, second panel, reservoir, and baffles being
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`substantially uniform; and a top portion of the outer surfaces of the first and second
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`panels being closely conforming to the respective foot well walls.
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`Yita’s expert, Dr. Koch, summarizes how problems in prior art floor mat
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`products motivated MacNeil to develop a floor tray product that fits tightly in
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`complex foot well shapes and stays put. EX1003, ¶¶80-85. MacNeil floor trays not
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`only provide excellent foot well protection for many different vehicle models, but
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`also closely conform to the vehicle foot well. These floor trays are also equipped
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`with numerous other features, including a reservoir with baffles in the central panel
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`of the floor tray for collecting water, mud, and other debris.
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`Today, because of these innovations, MacNeil (d/b/a WeatherTech) floor
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`trays can be found in vehicles everywhere. The deficiencies of prior art vehicle floor
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`coverage products are unsurprising given clear differences in materials, processing,
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`and structure of these products and the vehicle floor tray of the ’186 claims. It also
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`is not surprising that competitors have tried to mimic the MacNeil floor tray’s
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`patented features.
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`B.
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`The ’186 Patent Family Priority Chain
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`As shown below, MacNeil filed several continuing applications (full patent
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`family not shown) each claiming priority to U.S. Application No. 10/976,441 (“the
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`’441 application”) (“A”) and each pursuing different aspects of the disclosed
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`innovative vehicle floor tray. U.S. Application No. 13/595,703 (“the ’703
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`application”), which matured into the challenged ’186 Patent (“D”), is a continuation
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`of U.S. Application No. 12/879,899 (“the ’899 application) (“C”), which is a
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`continuation of U.S. Application No. 11/463,203 (“the ’203 application”) (“B”),
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`Case IPR2020-01140
`Patent No. 8,382,186
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`which is a division of the ’441 application.
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`C. The ’186 Patent Technology
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`As shown below in annotated FIGS. 1 and 2, the ’186 Patent is generally
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`directed to a vehicle floor tray, e.g., 100 (black). EX1001, 6:24-25. It should be noted
`
`that the floor tray 100 is just one example of a floor tray contemplated by the ’186
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`Patent that has been specifically designed for fit with a particular vehicle foot well.
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`EX1001, 19:13-20. The floor tray 100 includes, e.g., at least a central panel 102
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`(aqua), a first (front or forward) panel (or wall) 134 (lime) joined to the central panel
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`by a curved transition 200, 202 (orange), and a second (inner) panel (or wall) 132
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`(green) joined to the central panel and to the first panel by respective curved
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`transitions 204, 212 (orange). Id., 6:27-28, 7:17-18, 7:28-36, 7:53-55, 8:37-45. Floor
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`tray 100 also includes panels (or walls) 136, 140. The central panel may also include,
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`e.g., a reservoir 110 (light purple) disposed therein with a plurality of elongate,
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`spaced-apart, hollow baffles 118 (dark purple). Id., 6:41-43, 7:7-14.
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`’186 Patent, FIG. 1 (annotated)
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`Patent No. 8,382,186
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`’186 Patent, FIG. 2 (annotated)
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`In one embodiment, the floor tray 100 is thermoformed by heating a sheet of
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`thermoplastic polymeric material of substantially uniform thickness and introducing
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`it into a female mold formed from an accurate three-dimensional modeling of the
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`vehicle foot well. Id., 8:57-60, 18:24-26, 19:8-12. As the ’186 Patent acknowledges,
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`some variations in thickness (e.g., thinning) may occur during thermoforming. See
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`id., 18:18-28, 9:46-58. To account for this, the floor tray 100 is specifically designed
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`to prevent excessive thinning in certain parts of the thermoplastic sheet during the
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`thermoforming process. For example, the ’186 Patent explains that “certain radii of
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`the transitional surfaces are increased … to make sure that the preferred vacuum
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`molding process … does not create a thin place in the molded part at the deep
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`corners.” Id., 18:18-28. As another example, the ’186 Patent explains increasing
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`draft angles of the sidewalls of the floor tray 100 to ensure that “the wall of the tray
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`100 will remain acceptably thick enough at the junction of walls.” Id., 9:46-58.
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`As shown above and below in annotated FIGS. 1-4 and 12, in light of these
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`specific design measures (among other characteristics
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`in designing and
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`manufacturing the floor tray), the central panel 102 (aqua), first panel 134 (lime),
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`second panel 132 (green, FIG. 3), reservoir 110 (light purple), and baffles 118 (dark
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`purple) each have a substantially uniform thickness.
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`’186 Patent, FIG. 3 (annotated)
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`’186 Patent, FIG. 4 (annotated)
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`’186 Patent, FIG. 12 (annotated)
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`FIG. 6, “a highly magnified sectional view” “of the tray 100” (shown in, e.g.,
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`FIGS. 1-4 and 9-13), further exemplifies the substantially uniform thickness of these
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`tray features throughout the tray. EX1001, 5:50-51, 10:23-25. In one embodiment,
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`as shown below in annotated FIG. 6, the thickness of the tray 100 is made up of a
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`core layer 602, a top layer 600, and a bottom layer 604 having respective thicknesses
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`a, b, and c. Id., 10:25-27. The ’186 Patent explains that the “total thickness of the
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`tray 100 is the sum of dimensions a, b, and c.” Id., 12:42-43. And, in one particular
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`example, “the total thickness of the tray 100 (or, more precisely, of the blank sheet
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`used to mold the tray 100) is approximately 0.120 inch.” Id., 12:45-48.
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`’186 Patent, FIG. 6 (annotated)
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`The ’186 Patent explains that the particular design of floor tray 100 facilitates
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`close conformance of the floor tray 100 to the vehicle foot well, providing enhanced
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`protection of the foot well. EX1001, 19:21-23, 8:53-56. For example, as shown
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`below in annotated FIGS. 9 and 10, the central panel 102 substantially conforms
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`(aqua arrow) to a vehicle foot well surface 802 (red). Id., 9:8-14. And as further
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`shown below in annotated FIGS. 10 and 13, the first 134 and second 132 panels
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`stand up from the central panel to substantially conform to first foot well wall 834
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`and area segment 826 (red) and second foot well wall 810 (red), respectively (lime
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`and green arrows). Id., 9:14-38. See also id., FIGS. 8-11, 13.
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`’186 Patent, FIG. 9 (annotated)
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`’186 Patent, FIG. 10 (annotated)
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
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`One of ordinary skill in the art (“POSITA”) for the ’186 Patent technology in
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`2004 would have had an associate’s or bachelor’s degree in mechanical engineering
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`or plastics processing, an equivalent degree, or comparable formal training or
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`practical industry experience in plastics engineering, design, and manufacturing.
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`EX2004, ¶29. This person would also have at least three years of experience in
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`plastics engineering, design, and manufacturing. Id. As MacNeil’s expert, James L.
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`Throne, Ph.D. further testifies, this person would be particularly familiar with plastic
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`product design and manufacturing using thermoforming techniques. Id.
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`This definition is similar to the level of skill in the art proposed by Yita’s
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`technical expert, Dr. Koch, except that Dr. Koch’s proposed definition does not
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`mention, much less require, industry experience with thermoforming. Petition, 25-
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`26. Unlike Dr. Koch, MacNeil’s expert, Dr. Throne, has substantial industry
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`knowledge and experience in thermoforming, and authored the thermoforming
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`books on which Dr. Koch and Yita rely—EX1008-09.
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`According to Dr. Throne, in light of the ’186 Patent technology, using
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`thermoforming techniques to form vehicle floor trays, a POSITA would at least have
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`three years of industry experience with thermoforming. EX2004, ¶29. Otherwise,
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`anyone with experience in plastics, generally, could opine on matters relating to
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`thermoformed floor trays and thermoforming manufacturing principles and
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`resources (e.g., EXS1007-1009), without any practical thermoforming experience.
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`Id., ¶¶31-32 (Dr. Throne explaining that there are many different plastics processing
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`methods (e.g., extrusion,
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`injection molding,
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`thermoforming, blow-molding
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`processes) that each has its own set of problems and practical solutions).
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`Thus, industry knowledge or experience with one specific plastic processing
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`method, e.g., injection molding, does not necessarily translate into industry
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`knowledge or experience with the other plastic processing methods, such as
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`thermoforming. Id., ¶32. Industry knowledge and experience in the thermoforming
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`industry is paramount here to understanding the ’186 Patent’s thermoforming
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`processes, and particularly to understanding why the recited tray features have
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`substantially uniform thicknesses. But Yita’s expert has no such experience.
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`This is a critical point, because, as detailed below, Yita’s inaccurate claim
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`construction results directly from Dr. Koch’s lack of industry knowledge and
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`experience in thermoforming. Other than citing three books on thermoforming—two
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`of which (EX1008-09) were authored by Dr. Throne—it is unclear what
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`thermoforming experience or expertise Dr. Koch has. MacNeil respectfully submits
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`that Dr. Koch is not skilled in the art of the ’186 Patent.
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`Several facts make this clear, such as: (1) Dr. Koch apparently does not
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`understand how the ’186 Patent teaches a POSITA to control for unwanted thinning
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`(to wit, the design process and curved transitions, the inputted blank sheet, and
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`employing a shallow mold); and (2) Dr. Koch’s misunderstandings lead him to
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`advocate a mistaken scope and improper construction of what is expressly excluded
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`in the claim language—to wit, Dr. Koch’s repeated argument that the entire floor
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`tray has a substantially uniform thickness, which is not what is claimed.
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`Finally, and perhaps most importantly, Dr. Koch’s testimony is directly
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`contradicted by the very source that he cites for the vast majority of his testimony,
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`Dr. Throne. Dr. Throne clarifies that Dr. Koch’s conclusory opinions regarding
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`thermoforming are incorrect, contrary to record evidence (including Dr. Throne’s
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`own
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`thermoforming books, EX1008-09),
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`and
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`reflect
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`a
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`fundamental
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`misunderstanding of the thermoforming process. EX2004, ¶32 (Dr. Throne
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`explaining that Dr. Koch’s interpretation of “substantially uniform thicknesses” to
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`mean “approaching complete uniformity” shows a lack of practical experience with
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`thermoforming parts of this nature and a corresponding lack of understanding of the
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`claimed thermoformed floor tray). Accordingly, the Board should give little to no
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`weight to Dr. Koch’s testimony.
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`V. YITA’S OWN EXPERT ADMITS THAT EACH PATENT IN THE
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