`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`YITA, LLC
`Petitioner
`
`v.
`
`MACNEIL IP LLC
`Patent Owner
`
`____________________
`
`Case No. IPR2020-01139
`Patent No. 8,382,186
`____________________
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,382,186
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`
`
`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`BACKGROUND IN THE ART ...................................................................... 2
`A.
`Thermoplastics and thermoforming were used to manufacture prior-
`art floor trays. ........................................................................................ 2
`1.
`Advantages of Thermoforming and Thermoplastics .................. 2
`2.
`Impact of Non-Uniform Thinning During Thermoforming ....... 3
`3.
`Thermoplastic Floor Trays of the Prior Art ................................ 6
`Prior art floor trays closely conformed to vehicle sidewalls. ................ 8
`B.
`Prior art floor mats had a reservoir for collecting liquid.....................13
`C.
`D. Hollow baffles to elevate feet above water collected in a reservoir
`were not new. ......................................................................................16
`III. THE ’186 PATENT ....................................................................................... 18
`A.
`Problems Allegedly Addressed by the ’186 Patent .............................19
`B.
`’186 Patent Prosecution History ..........................................................19
`IV. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 23
`V.
`CLAIM CONSTRUCTION .......................................................................... 24
`A.
`“thickness…being substantially uniform throughout the tray” ..........25
`VI. SUMMARY OF GROUNDS ........................................................................ 27
`A. Applied Prior Art .................................................................................27
`B.
`Grounds ...............................................................................................27
`VII. GROUND 1: THE COMBINATION OF RABBE, YUNG, AND
`GRUENWALD RENDERS OBVIOUS CLAIMS 1-7 ................................. 27
`A. Overview of Applied References ........................................................28
`
`
`
`- i -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`B.
`
`C.
`
`2.
`
`3.
`
`4.
`
`1.
`Rabbe.........................................................................................28
`Yung ..........................................................................................29
`2.
`Gruenwald .................................................................................33
`3.
`The prior art and arguments relied on here were not previously before
`the Office. ............................................................................................35
`Independent Claim 1 ...........................................................................35
`1.
`Preamble: “A vehicle floor tray thermoformed from a sheet of
`thermoplastic polymeric material of substantially uniform
`thickness, comprising” ..............................................................35
`Element 1[a]: “a central panel substantially conforming to a
`floor of a vehicle foot well” ......................................................37
`Element 1[b]: “the central panel of the floor tray having at least
`one longitudinally disposed lateral side and at least one
`transversely disposed lateral side” ............................................39
`Element 1[c]: “a first panel integrally formed with the central
`panel of the floor tray, upwardly extending from the
`transversely disposed lateral side of the central panel of the
`floor tray, and closely conforming to a first foot well wall” ....41
`Element 1[d]: “the first panel of the floor tray joined to the
`central panel of the floor tray by a curved transition” ..............42
`Element 1[e]: “a second panel integrally formed with the
`central panel of the floor tray and the first panel, upwardly
`extending from the longitudinally disposed lateral side of the
`central panel of the floor tray, and closely conforming to a
`second foot well wall” ..............................................................46
`Element 1[f]: “the second panel of the floor tray joined to the
`central panel of the floor tray and to the first panel of the floor
`tray by curved transitions” ........................................................47
`Element 1[g]: “a reservoir disposed in the central panel of the
`floor tray” ..................................................................................48
`
`5.
`
`6.
`
`7.
`
`8.
`
`
`
`- ii -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`9.
`
`Element 1[h]: “a plurality of upstanding, hollow, elongate
`baffles disposed in the reservoir” ..............................................50
`10. Element 1[i]: “each of the baffles having at least two ends
`remote from each other” ...........................................................54
`11. Element 1[j]: “the central panel, the first panel, the second
`panel, the reservoir and the baffles each having a thickness
`from a point on the upper surface to a closest point on the
`bottom surface thereof, said thicknesses, as a result of the tray
`being thermoformed from the sheet of thermoplastic polymeric
`material of substantially uniform thickness, being substantially
`uniform throughout the tray” ....................................................55
`12. Element 1[k]: “the baffles each having a width, in any
`horizontal direction, of more than two times its thickness” .....57
`13. Element 1[l]: “the baffles adapted to elevate the shoe or foot of
`the occupant above fluid collected in the reservoir, and further
`adapted to impede lateral movement, induced by a change in
`vehicle speed or direction, of fluid collected in the reservoir” .58
`14. Element 1[m]: “any portion of the reservoir connected to a
`remote portion of the reservoir by a path formed around ends of
`the baffles” ................................................................................60
`15. A POSA Would Have Been Motivated to Combine Rabbe,
`Yung, and Gruenwald to Arrive at the Claimed Vehicle Floor
`Tray ...........................................................................................61
`16. Reasonable Expectation of Success ..........................................67
`Claim 2: “The floor tray of claim 1, further comprising a third panel
`integrally formed with the central panel of the floor tray and joined to
`at least one of the first and second panels by curved transitions, the
`third panel upwardly extending from a third lateral side of the central
`panel of the floor tray.” .......................................................................69
`Claim 3: “The floor tray of claim 2, further comprising a fourth panel
`integrally formed with the central panel of the floor tray and joined to
`at least one of the second and third panels by curved transitions, the
`
`D.
`
`E.
`
`
`
`- iii -
`
`

`

`G.
`
`H.
`
`I.
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`F.
`
`fourth panel upwardly extending from a fourth lateral side of the
`central panel of the floor tray.” ...........................................................72
`Claim 4: “The floor tray of claim 1, wherein at least one of the first
`and second panels has a top margin, the top margin being at least five
`inches higher than the central panel of the floor tray at its greatest
`vertical separation therefrom.” ............................................................74
`Claim 5: “The floor tray of claim 1, wherein the first and second
`panels have top margins which are substantially coplanar with each
`other.” ..................................................................................................76
`Claim 6: “The floor tray of claim 1, wherein ones of the baffles
`include longitudinal portions for impeding side-to-side lateral
`movement of fluid.” ............................................................................77
`Claim 7: “The floor tray of claim 1, wherein ones [sic] of the baffles
`include transverse portions for impeding forward or rearward lateral
`movement of fluid.” ............................................................................79
`VIII. OBJECTIVE INDICIA DO NOT SUPPORT PATENTABILITY .............. 81
`IX. MANDATORY NOTICES ........................................................................... 81
`A.
`Real Parties-in-Interest ........................................................................81
`B.
`Related Matters ....................................................................................81
`C.
`Lead and Back-up Counsel and Service Information .........................82
`X. GROUNDS FOR STANDING ...................................................................... 83
`XI. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM
`CHALLENGED ............................................................................................ 84
`
`
`
`
`
`
`
`
`
`- iv -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`
`
`Exhibit No.
`1001
`
`1002
`1003
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`1017
`1018
`
`EXHIBIT LIST
`
`Description
`U.S. Patent No. 8,382,186 to MacNeil et al., issued February 26,
`2013 (“’186 Patent”)
`File History of U.S. Patent No. 8,382,186 (“’186 Patent File
`History”)
`Declaration of Paul E. Koch, Ph.D.
`U.S. Patent No. 7,444,748 to MacNeil, issued November 4, 2008
`(“MacNeil”)
`French Patent Application Pre-Grant Publication No. 2547252 to
`Rabbe, published December 14, 1984, with attached certified
`English-language translation (“Rabbe”)
`U.S. Patent Application Pre–Grant Publication No.
`2002/0045029 A1 to Yung, published April 18, 2002 (“Yung”)
`Gruenwald, G., Thermoforming: A Plastics Processing Guide,
`CRC Press, 2nd Edition, 1998 (“Gruenwald”)
`Throne, J., Technology of Thermoforming, Hanser, 1996
`(“Throne I”)
`Throne, J., Understanding Thermoforming, Hanser, 2nd Edition,
`2008 (“Throne II”)
`U.S. Patent No. 2,057,873 to Atwood, issued October 20, 1936
`(“Atwood”)
`U.S. Patent No. 2,657,948 to Sturtevant, issued November 3,
`1953 (“Sturtevant”)
`U.S. Patent No. 6,793,872 to Buss, issued September 21, 2004
`(“Buss”)
`U.S. Patent No. 6,361,099 to McIntosh, issued March 26, 2002
`(“McIntosh”)
`U.S. Patent No. 4,568,581 to Peoples, issued February 4, 1986
`(“Peoples”)
`U.S. Patent No. 5,298,319 to Donahue, issued March 29, 1994
`(“Donahue”)
`DOW HDPE DGDA-5004 NT 7 Data Sheet, published October
`10, 2003
`Black Armor Web Advertisement
`Husky Liner Advertisement, August 24, 2000
`
`
`
`- v -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`Exhibit No.
`1019
`
`1020
`
`1021
`
`1022
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`1029
`1030
`1031
`1032
`1033
`1034
`1035
`1036
`
`Description
`U.S. Patent No. 4,420,180 to Dupont et al., issued December 13,
`1983 (“Dupont”)
`U.S. Patent No. 4,280,729 to Morawski, issued July 28, 1981
`(“Morawski”)
`European Patent Application Publication No. 0379630 to
`Sagona, published August 1, 1990 (“Sagona”)
`File History of U.S. Patent No. 8,267,459 (“’459 Prosecution
`History”)
`U.S. Patent No. 3,390,912 to Stata, issued July 2, 1968 (“Stata”)
`German Patent Application Publication No. 4000877 to
`Weitbrecht et al., published July 18, 1991
`U.S. Patent No. 6,027,782 to Sherman, issued February 22, 2000
`Japanese Patent Application No. H11-268570 to Suzuki,
`published October 5, 1999, with attached certified English-
`language translation (“Suzuki”)
`Word Comparison of the ’703 Application as filed to the ’899
`Application as filed
`U.S. Patent No. 8,833,834 to MacNeil et al., issued September
`16, 2014 (“’834 Patent”)
`Plastic Extrusion Tolerance Guide
`Merriam-Webster's Collegiate Dictionary, Eleventh Edition,
`2003
`Oxford Compact English Dictionary, First Edition, 2000
`Curriculum Vitae of Paul E. Koch, Ph.D. (“Koch CV”)
`Declaration of Sylvia Hall-Ellis, Ph.D. (“Hall-Ellis Decl.”)
`U.S. Patent No. 8,910,995 to MacNeil et al. (“’995 Patent”)
`U.S. Patent No. 6,058,618 to Hemmelgarn et al.
`(“Hemmelgarn”)
`Webster’s Third New International Dictionary, 1961
`
`- vi -
`
`
`
`
`
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`I.
`
`INTRODUCTION
`U.S. Patent No. 8,382,186 (“the ’186 patent”) relates to vehicle floor trays
`
`that protect the vehicle interior from mud, dirt, or water brought by occupants into
`
`the vehicle. These floor trays were often made from polymers using a
`
`thermoforming process.
`
`Such vehicle floor trays were well-known and the challenged claims recite
`
`nothing new. Instead, the claims merely recite prior-art features relating to
`
`conformity of the vehicle floor tray to the underlying vehicle foot well, curved
`
`transitions between the floor tray panels, reservoir and baffle features, and having a
`
`substantially uniform tray thickness. But these were all disclosed in the prior art
`
`precisely for their entirely predictable function in a vehicle floor tray.
`
`Unsurprisingly, the challenged claims would have been obvious over the
`
`combination of Rabbe, Yung, and Gruenwald. As support, Petitioner Yita LLC
`
`(“Petitioner” or “Yita”) submits the Declaration of Paul E. Koch, Ph.D., a technical
`
`expert with over 45 years of experience in plastics technology and designing and
`
`manufacturing plastic and elastomer products. EX1003, Koch Decl., ¶¶4-14. Thus,
`
`Yita requests that the Board institute trial and find claims 1-7 of the ’186 patent
`
`unpatentable.
`
`
`
`- 1 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`II. BACKGROUND IN THE ART
`The challenged claims recite features long part of the vehicle floor tray prior
`
`art. Removable, thermoformed rubberized or plastic floor mats have been a well-
`
`known part of vehicle interiors for over fifty years. EX1010; EX1011; EX1003,
`
`¶29. Generations of drivers recognized their utility to protect or restore the vehicle
`
`interior at or around a driver’s feet—the area known as the foot well. Id.
`
`A. Thermoplastics and thermoforming were used to manufacture
`prior-art floor trays.
`Advantages of Thermoforming and Thermoplastics
`1.
`Thermoforming came into existence approximately 100 years ago as a
`
`manufacturing process where a plastic sheet is heated to a pliable forming
`
`temperature, formed to a specific shape in a mold, and trimmed to create a usable
`
`product. EX1003, ¶¶30-49; EX1008, 0019. The plastic sheet is heated to a
`
`temperature permitting it to be stretched into or onto a mold and cooled to a
`
`finished shape. Id.
`
`One attractive aspect of thermoforming is the versatility and relative low
`
`cost of the molds. EX1008, 0028. Molds can be made from wood, plaster, or metal.
`
`EX1003, ¶31; EX1007, 54. The relatively low mold-cost makes thermoforming
`
`particularly suitable for vehicle floor trays where several molds (or sets of molds)
`
`must be made to fit vehicle foot wells of different makes, models, and years.
`
`EX1003, ¶¶31-33.
`
`- 2 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`Additionally, thermoplastics such as polyethylene (PE) or polyvinyl chloride
`
`(PVC) are relatively inexpensive “commodity resins” produced in high volumes
`
`for a variety of applications. Id., ¶50; EX1007, 135; EX1008, 0260. And these
`
`relatively inexpensive thermoplastics can still provide the necessary structural
`
`rigidity and durability for a vehicle floor mat. EX1003, ¶50. These materials also
`
`can be readily formed into appropriate shapes to cover the floor and side-walls of a
`
`vehicle foot well. EX1016, 1-2; EX1003, ¶50. Additionally, at ambient
`
`temperatures, thermoplastics do not need to be very thick to hold their shape and
`
`provide resistance to abrasions and punctures. Id. This is particularly useful for
`
`vehicle floor trays, which should cover and protect the vehicle foot well without
`
`sacrificing space or adding extra weight. Id.
`
`Impact of Non-Uniform Thinning During Thermoforming
`2.
`Because thermoforming involves applying heat to a flat sheet of
`
`thermoplastic and subsequently applying that flat sheet to a mold, the process
`
`stretches the thermoplastic sheet as the sheet is draped on or pressed in to the mold
`
`surface. EX1003, ¶36. Accordingly, the surface area of the thermoformed product
`
`is greater than the original sheet. Id.; EX1007, 35. The increased surface area
`
`- 3 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`results from reducing the thickness of the starting sheet. EX1008, 05251; EX1007,
`
`35.)
`
`Thermoformed parts have substantially variable wall thicknesses depending
`
`on localized stretching. EX1003, ¶¶37-38. As POSAs appreciated, “[b]ecause
`
`thermoforming is a differential stretching process, the product wall thickness is
`
`non-uniform, as shown in schematic in Fig. 1.2.” EX1009, 0022.
`
`EX1009, FIG. 1.2.
`
`
`
`Localized, non-uniform thinning during thermoforming can create
`
`significant areas of mechanical weakness in the final thermoformed part. EX1003,
`
`¶¶39-40; EX1008, 0477. Thus, failing to plan for non-uniform thinning can be a
`
`serious flaw in part design. EX1003, ¶¶40-42. “Safety factors and sources of
`
`inherent product weakness must always be considered when designing for critical
`
`applications.” EX1009, 0042. “[T]he thinnest section of the part is the weakest
`
`
`1 Unless otherwise indicated, all emphasis has been added.
`
`- 4 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`under load … This is true whether the part is a thin-walled deli container or a
`
`heavy-gauge spa.” EX1008, 0477.
`
`Several techniques used alone or in combination existed in the prior art to
`
`control or limit thinning that occurs during thermoforming and achieve a
`
`thermoformed part having substantially uniform wall thicknesses. EX1003, ¶¶43-
`
`44. For example, common prior art methods for controlling or limiting thinning
`
`during thermoforming include but are not limited to (i) bubble or billow
`
`prestretching, (ii) plug assisting, and (iii) zonal heating of the surface. EX1003,
`
`¶¶44-47; EX1008, 0037-0038, 0094-0096; EX1007, 59-60, 159-182. “In this
`
`process the wall thickness is completely controlled. The part’s cross sections can
`
`be made fully uniform throughout or strengthened in any area.” EX1007, 167.
`
`Localized thinning during thermoforming was not universally detrimental
`
`and sometimes desirable. EX1003, ¶¶48-49. For example, non-uniform thinning at
`
`the edges of a thermoformed part can facilitate trimming. EX1012, 3:67-4:8, FIG.
`
`5.
`
`- 5 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`EX1012, FIG. 5.
`
`
`
`Thermoplastic Floor Trays of the Prior Art
`3.
`Given the advantages of thermoforming in the field of vehicle floor trays, it
`
`is no wonder numerous prior art floor trays and related products, such as vehicle
`
`trunk liners and cargo liners, were thermoformed using thermoplastics. EX1003,
`
`¶¶50-51, 54-55.
`
`For example, U.S. Patent No. 6,793,872 to Buss (“Buss”) discloses a
`
`“Method for Making Cargo Liners and Mats with Channeled Edge.” EX1012,
`
`Title. The methods disclosed by Buss include thermoforming. Id., Abstract.
`
`Specifically, Buss provides that “[c]argo liners for pickup trucks, SUVs, vans, and
`
`even automobile trunks are well known in the art, as are floor mats for all types of
`
`vehicles. A common method for manufacturing such devices is a plastic
`
`thermoforming process, in particular vacuum or pressure forming.” Id., 1:14-18.
`
`- 6 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`EX1012, FIG. 1.
`
`
`
`Buss explained the state of the art with respect to thermoforming vehicle floor
`
`trays: “While other methods are applicable to forming cargo liners and floor mats,
`
`thermoforming of sheet materials has proven to provide a cost effective method of
`
`producing finished product of consistent quality.” Id., 1:47-50; EX1003, ¶52.
`
`Similarly, U.S. Patent No. 6,361,099 to McIntosh discloses a “molded floor
`
`covering for a vehicle floor [which] includes a thermoplastic polymer layer ….”
`
`EX1013, Abstract. According to McIntosh, “[t]he use of molded thermoplastic
`
`polymer compositions as floor coverings for vehicles known as sport utility
`
`vehicles (SUVs) . . . have found growing popularity among consumers . . . ..” Id.,
`
`1:22-25. “Many conventional floor coverings, particularly floor coverings for
`
`SUVs, are formed from material that is impervious to water.” Id., 1:37-39.
`
`- 7 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`McIntosh demonstrates advantages offered by thermoplastics in this field,
`
`disclosing “a molded floor covering for a vehicle floor that includes a
`
`thermoplastic polymer layer with a contoured configuration adapted to conform to
`
`the contour of a vehicle floor ….” Id., 1:56-57; EX1003, ¶53.
`
`Prior art floor trays closely conformed to vehicle sidewalls.
`B.
`Removable, plastic floor trays having side panels that substantially conform
`
`to the foot well’s sidewalls and floor was certainly not new at the time of the
`
`alleged invention. EX1003, ¶¶56-57. The ’186 patent specification admits “[i]t is
`
`also common for such floor mats, where provided for front seat foot wells, to have
`
`portions which are meant to lie against the firewalls or front surfaces of the foot
`
`wells.” EX1001, 1:41-44. The ’186 patent specification further admits:
`
`[m]ore recently, vehicle floor trays have come onto the market. Most
`front-seat vehicle foot wells are actually three-dimensional concave
`shapes, typically with complex curved surfaces. Floor trays have
`sidewalls that offer enhanced protection to the surfaces surrounding
`the vehicle floor, as might be needed against wearers with very muddy
`or snowy shoes.
`Id., 1:50-61.
`
`Additionally, prior art floor trays disclosed by Black ArmorTM provided
`
`“Custom Molded Floor Guards [to] protect the most wear-prone area of your
`
`Truck, Sport utility Vehicle or Van.” EX1003, ¶58. According to published
`
`- 8 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`advertisements, the floor guards disclosed by Back Armor were “precision-crafted
`
`to the exact fit and shape of your vehicle.” EX1017, 0001. Additionally, “[t]he
`
`tough co-polymer material is heated and then vacuum formed over a vehicle
`
`specific aluminum mold.” Id.
`
`EX1017, 0003.
`
`
`
`Similarly, the Husky brand of floor liners advertised prior-art thermoplastic
`
`floor mats formed to fit the vehicle foot well area “like a glove.” EX1018, 0002.
`
`The Husky Liner Advertisement discloses “[t]ough and durable protection for your
`
`pickup, sport utility vehicle” in the form of a molded thermoplastic vehicle floor
`
`tray having a textured central panel made to closely conform to the contours of the
`
`vehicle floor and upstanding sidewalls of the vehicle foot well. Id., 0001; EX1003,
`
`¶59.
`
`- 9 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`EX1018, 0002.
`
`
`
`Furthermore, French Application No. 2,547,252 to Rabbe published
`
`December 14, 1984 “concerns floor mats with raised edges, forming a tray and
`
`providing effective protection of the floors and side walls of vehicle interiors at the
`
`feet of the driver, of the passengers, as well as of the trunks, against water, mud,
`
`snow and other soil.” EX1005, Abstract. Rabbe discloses that “[t]he floor 1 is
`
`totally covered” and “[t]he raised edges 2 and 3 conform to the topography of the
`
`interior and do not change the aesthetics desired by the manufacturer.” Id.;
`
`EX1003, ¶60.
`
`- 10 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`
`
`
`
`EX1005, FIGs. 3-4.
`
`In Rabbe’s floor tray, “the sides . . . perfectly conform to the contour of the
`
`vehicle interior at the feet of the driver, those of front and rear passengers as well
`
`as front or rear trunks, for the purpose of ensuring effective protection against any
`
`soiling.” EX1005, 1:3-6. The “raised edges (2) [are] of unequal heights conforming
`
`to the interior contour of the vehicle.” Id., 2:8-10. Rabbe’s floor tray is “produced
`
`from semi-rigid rubber or another material having the same properties” and “[t]he
`
`rigidity of the material used presses the unit against the side walls of the vehicle.”
`
`Id., 1:16-20; EX1003, ¶¶61-62. Rabbe teaches that “[t]he thinness of the material
`
`- 11 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`used only encroaches on a few millimeters of the space designed by the vehicle
`
`manufacturer, and thus does not change the desired aesthetic aspect.” Id., 1:24-26.
`
`Like Rabbe, Donahue discloses that the side panels of the trunk-liner closely
`
`conform to the sidewalls of the trunk compartment to contact or engage the
`
`sidewalls of the trunk compartment. EX1003, ¶62. Donohue’s sidewalls
`
`“resiliently engage the sidewalls of the trunk compartment when the sidewalls of
`
`the liner are biased inwardly toward an upright position when installed and
`
`mounted in a trunk compartment.” EX1015, 1:14-18. This engagement “facilitates
`
`the mounting of the trunk liner in the trunk compartment and the maintaining of
`
`the trunk liner in the installed position and engagement with the walls of the trunk
`
`compartment.” Id., 1:18-23.
`
`
`
`EX1015, FIG. 1.
`
`- 12 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`Prior art floor mats had a reservoir for collecting liquid.
`C.
`The ’186 patent admits that prior art floor mats included reservoirs for
`
`collecting and containing liquid, snow, and mud that might be tracked into in
`
`vehicle. EX1003, ¶63; EX1001, 2:11-18.
`
`One such prior art floor mat is U.S. Patent No. 4,420,180 to Dupont which
`
`discloses a floor tray made from “any suitable material, such as vinyl, rubber, or
`
`the like.” EX1019, 3:56–57. The floor tray disclosed by Dupont includes a “[m]ain
`
`portion 12 [that] contains a centrally disposed pan 16 which is designed to catch
`
`moisture in the form of water, mud, etc., which would otherwise accumulate on the
`
`trouser legs of the automobile occupants.” Id., 2:40–43.
`
`
`
`EX1019, FIGs. 2-3.
`
`- 13 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`Additionally, U.S. Patent No. 4,280,729 to Morawski provides a
`
`floor mat having an upper and an underside, and a forward and rear end,
`and in which the upper side is provided with a tread portion, having a
`multiplicity of water flow guide-ways or channels or grooves,
`communicating with the rear end of the mat, and guiding water flow
`from the front towards the rear of the mat, and further having water
`collectors at the rear end of the mat, below the plane of the water guide-
`ways, in which water may collect.
`EX1020, 1:29-37. “The use of the floor mat is self-evident. Water will simply
`
`collect in the grooves 14, and as the vehicle accelerates it will flow back into the
`
`water recesses defined by the walls 26, 28, 30 and 32. At the end of the day, the
`
`water collected there may simply be dumped out.” Id., 2:49-54. See also EX1021,
`
`1:32-40, 3:13-15 EX1003, ¶¶65-66.
`
`- 14 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`
`
`
`
`EX1020, FIGs. 2, 6.
`
`
`
`
`
`- 15 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`D. Hollow baffles to elevate feet above water collected in a reservoir
`were not new.
`Hollow baffles were known long before the alleged invention in the ’186
`
`patent. EX1003, ¶¶67-77. For example, U.S. Application No. 2002/0045029 to
`
`Yung discloses a prior art example of a floor tray with a reservoir and hollow
`
`baffles. Published April 18, 2002, Yung discloses “an improved mat used in cars”
`
`including “an upper polyester fabric, a middle plastic plate or layer, and an under
`
`net lining.” EX1006, Abstract. The plastic plate or layer of Yung is “flexible,
`
`lightweight, polyethylene (PE) or polyethylene-vinyl acetate (EVA).” Id., ¶11.
`
`The floor mat disclosed by Yung includes multiple raised areas within a
`
`recessed plate-shaped reservoir. Id., FIG. 1.
`
`
`
`EX1006, FIG. 1.
`
`- 16 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`Figures 3 and 4, showing cross sections of the thermoformed mat, disclose
`
`these hollow raised baffles which are referred to in Yung’s disclosure as “umbos.”
`
`Id., ¶13.
`
`
`
`
`
`EX1006, FIGs. 3-4.
`
`Additional prior art including U.S. Patent No. 3,390,912 to Stata, which
`
`issued in 1968, and German Patent DE4000877 to Weitbredcht disclose hollow
`
`baffles in a vehicle floor tray reservoir for the purpose of elevating the feet of a
`
`vehicle occupant. EX1023, FIGs. 1, 3; EX1024; EX1003, ¶¶67-77.
`
`- 17 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`III. THE ’186 PATENT
`The ’186 patent summarizes the state of the art as set forth above in Section
`
`II.A-D by first admitting that there is nothing new about the idea of forming a
`
`vehicle floor tray from a single sheet of plastic or rubber material so that it
`
`conforms to the shape of a vehicle foot well. EX1003, ¶¶29-77, 78-89. For
`
`example, it explains that “foot wells of cars, trucks and SUVs vary in size in shape
`
`[sic] from one model of vehicle to the next. Floor mat manufacturers have noticed
`
`that floor mats which at least approximately conform to the shape of the bottom
`
`surface of the foot well stay in place better and offer more protection.” EX1001,
`
`1:37-41. It then goes on to admit that “[m]ost front-seat vehicle foot wells are
`
`actually three-dimensional concave shapes, typically with complex curved
`
`surfaces. Floor trays have sidewalls that offer enhanced protection to the surfaces
`
`surrounding the vehicle floor, as might be needed against wearers with very muddy
`
`or snowy shoes.” Id., 1:50-55. The ’186 patent admits further that “[a]
`
`conventional vehicle floor tray is typically molded of a single-ply rubber or plastic
`
`material, exhibits enough stiffness to retain a three-dimensional shape, but is also
`
`at least somewhat flexible.” Id., 1:58-60; see also id., 2:30-31 (“Conventional
`
`vehicle floor mats and trays are molded from a single rubber or plastic material.”).
`
`After admitting that there is nothing new about the idea of forming a vehicle
`
`floor tray from a single sheet of plastic or rubber material so that it conforms to the
`
`- 18 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`shape of a vehicle foot well, the ’186 patent’s background explains further that
`
`“[s]ome vehicle floor mats that are now on the market have fluid reservoirs built
`
`into them.” Id., 2:9-10. “These reservoirs typically are recessed areas in the mats
`
`that provide the mats with an enhanced ability to retain snow-melt and the like,
`
`until the water evaporates or can be disposed of by the vehicle owner or user.” Id.,
`
`2:14-18. Thus, the ’186 patent admits that its primary objective and key elements
`
`were already known in the prior art.
`
`Problems Allegedly Addressed by the ’186 Patent
`A.
`The ’186 patent states the “foot wells of cars, trucks and SUVs vary in size
`
`in shape [sic] from one model of vehicle to the next.” Id., 1:37-40.
`
`Therefore, the alleged need purportedly addressed by the ’186 patent was
`
`“for a floor tray that will have a more exact fit to the vehicle foot well for which it
`
`is provided, that stays in place once it is installed, and that provides a more solid
`
`and certain feel to the occupants’ feet.” Id., 2:5-8; EX1003, ¶¶78-89.
`
`’186 Patent Prosecution History
`B.
`The ’186 patent issued on February 26, 2013. The application giving rise to
`
`the ’186 patent was U.S. Application Serial No. 13/595,703 (“the ’703
`
`Application”). (EX1002.) The ’703 Application was filed on August 27, 2012 as a
`
`continuation application from U.S. Application No. 12/879,899 (“the ’899
`
`Application”) (EX1022). The ’899 Application issued as U.S. Patent No.
`
`- 19 -
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`
`8,267,459 (“the ’459 patent”). The ’899 application was filed on September 10,
`
`2010 as a continuation of