Trials@uspto.gov PUBLIC VERSION
`571-272-7822
`
`Paper 82
`Date: April 15, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YITA LLC,
`Petitioner,
`v.
`MACNEIL IP LLC
`Patent Owner.
`
`IPR2020-01139
`Patent 8,382,186 B2
`
`
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`
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`
`
`Before JAMES A. WORTH, MICHAEL L. WOODS, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`PESLAK, Administrative Patent Judge.
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Denying Patent Owner’s Motion to Strike
`37 C.F.R. § 42.64
`
`
`
`
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`
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`571-272-7822
`
`Paper 82
`Date: April 15, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YITA LLC,
`Petitioner,
`v.
`MACNEIL IP LLC
`Patent Owner.
`
`IPR2020-01139
`Patent 8,382,186 B2
`
`
`
`
`
`
`
`
`
`Before JAMES A. WORTH, MICHAEL L. WOODS, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`PESLAK, Administrative Patent Judge.
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Denying Patent Owner’s Motion to Strike
`37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`
`
`IPR2020-01139
`Patent 8,382,186 B2
`
`
`INTRODUCTION
`I.
`Yita LLC (“Petitioner”) filed a petition (Paper 3, “Pet.”) to institute an
`inter partes review of claims 1–7 (the “challenged claims”) of U.S. Patent
`No. 8,382,186 B2 (Ex. 1001, “the ’186 patent”). 35 U.S.C. § 311 (2018).
`Petitioner supports the Petition with the Declaration of Paul E. Koch, Ph.D.
`Ex. 1003 (“Koch Declaration”). MacNeil IP LLC (“Patent Owner”) timely
`filed a Preliminary Response. Paper 11 (“Prelim. Resp.”). Taking into
`account the arguments presented in Patent Owner’s Preliminary Response,
`we determined there was a reasonable likelihood that Petitioner would
`prevail in its contention that at least one of the challenged claims of the ’186
`Patent is unpatentable under 35 U.S.C. § 103(a). On January 13, 2021, we
`instituted this inter partes review as to the challenged claims and all grounds
`presented in the Petition. Paper 17 (“Dec.”).
`During the course of trial, Patent Owner filed a Patent Owner
`Response. Paper 28. 1 (“PO Resp.”). Patent Owner also filed Declarations of
`Tim A. Osswald Ph.D (Ex. 2041) (“Osswald Declaration”)2, Ryan Granger
`(Ex. 2126) (“Granger Declaration”)3, a Supplemental Declaration of Ryan
`Granger (Ex. 2127) (“Supplemental Granger Declaration”), and Ray
`
`
`1 Patent Owner filed a redacted version of the Patent Owner Response. Paper
`29.
`2 Patent Owner filed a Second Supplemental Declaration of Dr. Osswald to
`add citations to evidence submitted subsequent to the Patent Owner
`Response. Ex. 2186.
`3 Exhibit 2126 was filed as supplemental information to correct the signature
`page in Mr. Granger’s original declaration (Ex. 2042). Paper 53, 6, 13.
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`Sherman (Ex. 2043) (“Sherman Declaration”)4 in support of its Patent
`Owner Response. Petitioner filed a Reply to Patent Owner’s Response.
`Paper 60 (“Pet. Reply”). In support of its Reply, Petitioner filed a Reply
`Declaration of Paul E. Koch Ph.D. (Ex. 1041) (“Reply Koch Declaration”),
`a Declaration of Mark Strachan (Ex. 1042) (“Strachan Declaration”), and a
`Declaration of Dan Perreault (Ex. 1044) (“Perreault Declaration”). Patent
`Owner filed a Sur-reply. Paper 70 (“Sur-reply”). An oral hearing was held
`on October 12, 2021, and a transcript of the hearing has been entered into
`the record. Paper 78 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This is a Final Written
`Decision under 35 U.S.C. § 318(a) as to the patentability of the challenged
`claims of the ’186 patent. For the reasons discussed below, we determine
`Petitioner has not established by a preponderance of the evidence that any
`challenged claim is unpatentable.
`A. Related Matters
`The parties identify the following matters as related:
`• MacNeil Auto. Prods. Ltd. et al. v. Yita LLC et al., No. 2:20-cv-
`00278 (WDWA);
`• MacNeil Auto. Prods. Ltd. et al. v. Jinrong (SH) Auto. Accessory
`Dev. Co., Ltd. et al., No. 2:20-cv-00856 (WDWA);
`IPR2020-01138, for which institution was denied;
`IPR2020-01140, for which institution was denied; and
`IPR2020-01142, which is currently pending and seeks review of
`U.S. Patent No. 8,883,834 B2.
`
`•
`•
`•
`
`
`4 Patent Owner filed a Second Supplemental Declaration of Mr. Sherman to
`add citations to evidence submitted subsequent to the Patent Owner
`Response. Ex. 2187.
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`Pet. 81–82; Paper 6, 2.
`
`B. Real Parties in Interest
`Petitioner identifies itself, Jinrong (SH) Automotive Development
`Co., Ltd, ShenTian (SH) Industrial Development Co., Ltd., and Hong Kong
`Yita International Trade Company Limited as the real parties-in-interest.
`Pet. 81. Patent Owner identifies itself, MacNeil Automotive Products
`Limited and WeatherTech Direct, LLC as the real parties-in-interest.
`Paper 6, 2.
`
`C. The ’186 Patent (Ex. 1001)
`The ’186 patent is directed to a “Vehicle Floor Tray.” Ex. 1001, code
`(54). The Specification describes a vehicle floor tray that is thermoformed
`from a polymer sheet of uniform thickness. Id. at code (57). The
`Specification explains a need for a removable floor tray that fits precisely
`within a vehicle’s foot well so that it’s more likely to remain in position
`during vehicle operation, thereby minimizing the chance it occludes the gas,
`brake or clutch pedal. See id. at 1:29–35; 2:4–8.
`Figure 1, reproduced below, illustrates vehicle floor tray (or cover)
`100 that is designed to protect a vehicle’s floor and lower sides of a foot
`well. Ex. 1001, 6:24–25.
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`Figure 1 is an isometric view illustrating floor tray 100 which includes floor
`(or central panel) 102 with channels 104 disposed in forward regions 106 of
`the panel, a back region 108, and a series of side panels 130, 132, 134, 136,
`and 140 projecting upward from floor panel 102. Id. at 6:27–31, 6:41, 7:56–
`58. The side panels “are all so formed so as to [] closely conform to the
`vehicle side surfaces against which they are positioned.” Id. at 7:50–60.
`D. Prior Art and Asserted Grounds
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–7
`1035
`Rabbe, 6 Yung, 7 Gruenwald8
`
`5 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’186
`patent claims priority to applications filed before the effective date of the
`relevant amendment, the pre-AIA version of § 103 applies.
`6 Fr. Pat. Publ. 2,547,252 (Pub. Dec. 14, 1982) (Ex. 1005) (“Rabbe”).
`7 U.S. Pat. Publ. No. 2002/0045029 A1 (Pub. April 18, 2002) (Ex. 1006)
`(“Yung”).
`8 G. Gruenwald, Thermoforming: A Plastics Processing Guide, Technomic
`Publishing Co., Inc. (2d. Ed.1998). (Ex. 1007) (“Gruenwald”).
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`E. Challenged Claims
`Claim 1, which is the only independent claim among the challenged
`claims, recites:
`1. A vehicle floor tray thermoformed from a sheet of
`thermoplastic polymeric material of substantially uniform
`thickness, comprising:
`[a] a central panel substantially conforming to a floor of a
`vehicle foot well,
`[b] the central panel of the floor tray having at least one
`longitudinally disposed lateral side and at least one
`transversely disposed lateral side;
`[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,
`[d] the first panel of the floor tray joined to the central panel
`of the floor tray by a curved transition;
`[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,
`[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;
`[g] a reservoir disposed in the central panel of the floor tray;
`[h] a plurality of upstanding, hollow, elongate baffles disposed
`in the reservoir,
`[i] each of the baffles having at least two ends remote from
`each other,
`[j] the central panel, the first panel, the second panel, the
`reservoir and the baffles each having a thickness from a
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`Patent 8,382,186 B2
`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;
`[k] the baffles each having a width, in any horizontal direction,
`of more than two times its thickness,
`[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,
`[m] any portion of the reservoir connected to a remote portion of
`the reservoir by a path formed around ends of the baffles.
`Ex. 1001, 19:35–20:24 (certain line breaks and Petitioner’s labels added).
`II. ANALYSIS
`A. Overview
`Petitioner bears the burden of establishing the unpatentability of any
`claim by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R.
`§ 42.1(d) (2019). This burden of persuasion never shifts to the patent owner.
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015).
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
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`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) when in evidence, objective indicia of non-obviousness (i.e.,
`secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`B. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham 383 U.S. at 17.
`Factors pertinent to a determination of the level of ordinary skill in the
`art include: (1) educational level of the inventor; (2) type of problems
`encountered in the art: (3) prior art solutions to those problems; (4) rapidity
`with which innovations are made; (5) sophistication of the technology, and
`(6) educational level of workers active in the field. Environmental Designs,
`Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing
`Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
`1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every
`case, and one or more of these or other factors may predominate in a
`particular case. Id. Moreover, these factors are not exhaustive but are
`merely a guide to determining the level of ordinary skill in the art. Daiichi
`Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
`In determining a level of ordinary skill, we also may look to the prior
`art, which may reflect an appropriate skill level. Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001).
`Petitioner contends a person of ordinary skill in the art “would have
`had a bachelor’s degree in engineering: plastics, mechanical, or a closely
`related field, or equivalent formal training, educations, or practical
`experience in a field relating to plastic product design, material science, or
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`manufacturing.” Pet. 24 (citing Ex. 1003 ¶¶ 26–28). Petitioner further
`contends that a skilled artisan would “have a minimum of three to five years
`of experience in plastics engineering, manufacturing, plastic product design,
`or a related industry.” Id.
`Patent Owner submits a skilled artisan would have general
`educational and work experience that aligns with Petitioner’s proposed level
`of skill in the art. PO Resp. 7 (citing Ex. 2041 ¶¶ 39–42). Patent Owner
`specifies that the skilled artisan would “have at least three years of
`experience in plastics engineering, design, and manufacturing” and “would
`be particularly familiar with . . . thermoforming techniques.” Id. (citing
`Ex. 2041 ¶ 41).
`Petitioner does not dispute Patent Owner’s proposed skill level. See
`generally Pet. Reply.
`In our Decision on Institution, we agreed with Patent Owner “that
`industry knowledge and experience in the thermoforming industry is
`important to understanding the claimed thermoformed tray” and that
`“thermoforming is relevant to the level of ordinary skill.” Dec. 9. In the
`Preliminary Response, Patent Owner criticized Dr. Koch because he lacked
`specific experience in thermoforming. See id. (citing Prelim. Resp. 15).
`Although we adopted Patent Owner’s proposed level of skill, we noted that
`“advanced education and experience in related methods of forming plastics
`may suffice in the absence of having specific commercial experience with
`thermoforming.” Id.; see also Consolidated Trial Practice Guide, 34 (“A
`person may not need to be a person of ordinary skill in the art in order to
`testify as an expert under Rule 702, but rather must be ‘qualified in the
`pertinent art.’” (citing Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d
`1356, 1363–64 (Fed. Cir. 2008)).
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`Patent Owner does not raise arguments about Dr. Koch’s lack of
`experience in thermoforming in the Patent Owner Response. Further,
`neither party argues that the adoption of one or the other proposed level of
`skill would affect the resolution of the parties’ disputes. See generally PO
`Resp.; Pet. Reply.
`For all of these reasons, we maintain, from the Decision on Institution,
`our preliminary determination of the level of skill in the art.
`C. Claim Construction
`We apply the same claim construction standard used by Article III
`federal courts and the ITC, both of which follow Phillips v. AWH Corp., 415
`F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. 37 C.F.R.
`§ 42.100(b). Accordingly, we construe each challenged claim of the
`’186 patent to generally be “the ordinary and customary meaning of such
`claim as understood by one of ordinary skill in the art and the prosecution
`history pertaining to the patent.” Id.
`Petitioner and Patent Owner dispute the construction of “thickness . . .
`being substantially uniform throughout the tray.” Pet. 25–26; PO Resp. 11–
`12. We do not reach this issue because it is not necessary to resolve the
`ultimate dispute between the parties. Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`Patent Owner contends the preamble of claim 1 “is limiting at least
`because it provides antecedent basis for elements in the body of the claims
`(e.g., elements 1[b] (‘the floor tray’).” PO Resp. 8–9. Patent Owner
`contends that “the preamble reflects what the inventors actually invented,
`which is a ‘vehicle floor tray thermoformed from a sheet of thermoplastic
`polymeric material of substantially uniform thickness.’” Id. at 9. Petitioner
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`does not dispute that the preamble is limiting. See Tr. 9. In the absence of a
`dispute between the parties, we treat the preamble as limiting.
`Patent Owner also requests we construe “closely conforming to a first
`foot well wall” and “closely conforming to a second foot well wall” as “‘an
`outer surface of the first panel conforming closely to a surface of a first
`vehicle foot well wall’ and ‘an outer surface of the second panel conforming
`closely to a surface of a second vehicle foot well wall.’” PO Resp. 9–11.
`Petitioner does not dispute this construction or offer its own construction of
`these terms but contends “even under MacNeil’s constructions, the claims
`would have been obvious.” Pet. Reply 2 n.1 (citing Ex. 1041 ¶¶ 13–16); see
`also Pet. 24–26 (arguing for ordinary and customary meanings for all claim
`terms except for “thickness . . . being substantially uniform throughout the
`tray.”).
`In the Sur-reply, Patent Owner contends, for the first time, that the
`’186 patent “defines ‘close conformance’ as a difference of about 1/8 inch or
`less with respect to 90 percent of the surface of the upper 1/3 of the area of
`the tray panels.” Sur-reply 14 (citing Ex. 1001, 7:61–8:1; Ex. 1049, 97:1–
`21; Ex. 1049, 116:22–117:14). Patent Owner explains that it offered this
`new construction because of testimony from the deposition of its experts and
`Petitioner’s rebuttal expert depositions. Tr. 38:1–6. Petitioner argues this
`proposed construction is not timely. Id. at 67:9–13, 70:1. Regardless of the
`timeliness, we do not adopt the construction advocated by Patent Owner in
`the Sur-reply.
`Our analysis must start with the claim language. Phillips, 415 F.3d
`at 1312–14. Claim 1 broadly recites “close conformance” and does not
`require or suggest any numerical indicators of close conformance. We do
`not agree with Patent Owner that the Specification of the ’186 patent
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`includes a definition of “close conformance.” Rather, the portion of the
`Specification cited by Patent Owner describes the “preferred embodiment
`[of the invention].” Ex. 1001, 7:61. Patent Owner, thus, requests we narrow
`the term “closely conforming” by importing numerical limitations from the
`Specification into claim 1. 9 The Federal Circuit repeatedly cautions against
`importing limitations from the Specification into the claims. See Phillips,
`415 F.3d at 1323 (“although the specification often describes very specific
`embodiments of the invention, we have repeatedly warned against confining
`the claims to those embodiments.”); see also i4i Ltd. P’ship. v. Microsoft
`Corp., 598 F.3d 831, 843 (Fed. Cir. 2010) (“[g]enerally, a claim is not
`limited to the embodiments described in the specification unless the patentee
`has demonstrated a ‘clear intention’ to limit the claim’s scope with ‘words or
`expressions of manifest exclusion or restriction.’”). Patent Owner does not
`direct us to any part of the Specification that could be construed as a
`manifest exclusion or restriction to the term “closely conforming.”
`Consequently, even if Patent Owner timely requested we adopt this
`construction, we would not do so.
`For the following reasons, we also do not adopt Patent Owner’s
`original construction of “an outer surface of the first panel conforming
`closely to a surface of a first vehicle foot well wall.” as “an outer surface of
`the first panel conforming closely to a surface of a first vehicle foot well
`wall.” PO Resp. 9. The primary issue is how a skilled artisan would
`understand “closely conforming” as recited in claim 1. Patent Owner’s
`
`
`9 The numerical limitations proposed by Patent Owner are recited in
`independent claims 1, 5, and 9 of U.S. Patent No. 8,883,834 B2, which is the
`subject of co-pending IPR2020-01142.
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`rearrangement of words from “closely conforming” to “conforming closely”
`provides little, if any, guidance regarding how a skilled artisan would
`understand this term. Therefore, we turn to the Specification of the ’186
`patent for guidance on the plain and ordinary meaning of this term.
`Prior to describing the preferred embodiment as requiring a 1/8 inch
`conformance over 90 percent of the surface area, the Specification generally
`states that “tray 100 is closely fitted to the vehicle foot well wall in which it
`is designed to be placed” and the panels are all “formed so as to closely
`conform to the vehicle surfaces against which they are positioned.” Ex.
`1001, 7:56–61. Based on this disclosure, we apply the plain and ordinary
`meaning of closely conforming that the first panel and second panel are in a
`close spatial relationship to the first foot well wall and second foot well wall
`respectively.
`D. Alleged Obviousness over Rabbe, Yung, and Gruenwald
`Petitioner contends claims 1–7 would have been obvious over the
`combined teachings of Rabbe, Yung, and Gruenwald. Pet. 27–81.
`Petitioner identifies the disclosures in Rabbe, Yung, and Gruenwald alleged
`to describe the subject matter in the challenged claims and provides reasons
`why a skilled artisan would have combined the teachings. Id. In addition,
`Petitioner offers the Koch Declaration in support of the Petition.
`Patent Owner, in turn, contends Petitioner’s proposed combination
`does not teach every claim element (PO Resp. 12–47), a skilled artisan
`would not have combined the teachings of Rabbe, Yung, and Gruenwald
`with a reasonable expectation of success (id. at 48–69), and objective indicia
`weigh in favor of non-obviousness (id. at 69–80). Patent Owner supports its
`contentions with the Osswald Declaration, the Granger Declaration, and the
`Sherman Declaration.
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`We begin our analysis with brief overviews of Rabbe, Yung, and
`Gruenwald. We then address the parties’ contentions with respect to the
`challenged claims.
`1. Rabbe
`Rabbe is an English-language translation of French Patent Document
`FR 2547252. Ex. 1005, 1. Rabbe is titled “Protective Tray for Vehicle
`Interiors” and discloses “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 the trunks, against
`water, mud, snow and other soil.” Id. at codes (54), (57). We reproduce
`Figure 3 of Rabbe, below:
`
`
`Figure 3 depicts Rabbe’s protective tray with corrugated bottom, raised
`edges 2 “of unequal heights conforming to the interior contour of the
`vehicle, particularly the location of” wheels 3, and with flanges 4. See id. at
`2:7–15.
`2. Yung
`Yung is a U.S. Patent Application titled “Mat Used in Cars.” Ex.
`1006, code (54). Yung describes a floor mat with a middle plastic plate or
`layer that is “flexible, light weight, and waterproof Polyethylene (PE) or
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`Polyethylene—Vinyl Acetate (EVA) foam.” Id. ¶ 11. We reproduce
`Figure 3 of Yung, below:
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`
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`Figure 3 depicts a cross-sectional view of Yung’s car mat. See id. ¶¶ 6, 8.
`3. Gruenwald
`Gruenwald is a book titled “Thermoforming: A Plastics Processing
`Guide.” Ex. 1007, 1. Gruenwald discloses, in relevant part, reducing wall
`thickness in male and female molds (id. at 37–43), drape forming (id. at
`162–163), billow drape forming (id. at 165), snap-back forming (id. at 166),
`reverse draw with plug-assist forming (id. at 167), and other design
`considerations (id. at 183–186).
`4. Claim 1
`a) Preamble
`The preamble of claim 1 provides “A vehicle floor tray thermoformed
`from a sheet of thermoplastic polymeric material of substantially uniform
`thickness.” Ex. 1001, 19:35–37. Petitioner contends “the combination of
`Rabbe, Yung, and Gruenwald teaches the preamble.” Pet. 37.
`Petitioner contends Rabbe discloses a vehicle floor tray “produced
`from semi-rigid rubber or materials having the same properties” but “is
`silent on the exact materials and processes for making its floor tray.” Pet.
`35–36 (citing Ex. 1005, Abstract). Petitioner contends a skilled artisan
`“would have looked to common materials and processes known in the art
`and within the basic knowledge of a” skilled artisan, which “would have . . .
`included thermoplastic materials and thermoforming processes.” Id. at 36
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`(citing Ex. 1003 ¶¶ 50–55, 124). In that regard, Petitioner further contends
`Rabbe’s disclosure of semi-rigid rubber or other material having the same
`properties “would have suggested to a [skilled artisan] to consider
`thermoplastics,” which were “well-known materials in the art, and thus
`logically [also would have suggested] thermoforming, which was well
`known for shaping thermoplastics.” Id. (citing Ex. 1003 ¶ 124).
`Petitioner also points to Yung’s disclosure of a multi-layer vehicle
`floor mat with a middle “plastic layer [that] is ‘flexible, lightweight,
`polyethylene (PE) or polyethylene-vinyl acetate (EVA) foam.’” Pet. 36
`(citing Ex. 1006 ¶ 11). According to Petitioner, “PE was and still is a well-
`known thermoplastic.” Id. (citing Ex. 1003 ¶ 125; Ex. 1007, 28 (Table 2.2)).
`Petitioner contends “[t]hermoforming Rabbe’s floor tray from a sheet
`of thermoplastic, as disclosed in Yung, would have been a simple
`combination of known prior art elements (Rabbe’s floor tray and Yung’s
`thermoplastic) according to a known technique (thermoforming) to achieve
`predictable results (thermoformed tray).” Pet. 37 (citing Ex. 1003 ¶ 124);
`see also id. at 62 (“combining the teachings of Rabbe and Yung (and
`Gruenwald) would have been applying a known technique (thermoforming)
`to a known product (vehicle floor tray)”) id. at 62–63 (arguing Gruenwald is
`“an ‘all-encompassing treatise on thermoforming technology” and evidences
`a skilled artisan’s “background knowledge.”). Petitioner further contends a
`skilled artisan would have recognized the short lead times and low cost of
`molds as favoring thermoforming over other methods of manufacture. Id. at
`37 (citing Ex. 1003 ¶¶ 31–33; Ex. 1007, 35). Petitioner also contends a
`skilled artisan would have “been aware of numerous other prior art floor
`trays made of thermoplastic using the low-cost, versatile thermoforming
`process.” Id. at 61 (citing Ex. 1003 ¶ 165).
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`IPR2020-01139
`Patent 8,382,186 B2
`Patent Owner, in turn, contends Petitioner’s proposed combination
`does not teach a floor tray thermoformed from a sheet of thermoplastic
`polymeric material. PO Resp. 13–19; see also Sur-Reply 32 (“Yung
`unequivocally does not disclose that its mat is thermoformed.”), 38
`(“Rabbe’s disclosure of natural rubber would not have led a POSITA to
`thermoformable thermoplastic materials.”). Petitioner contends these
`arguments “pertain to motivation to combine––not missing elements.” Pet.
`Reply 9. Because Petitioner does not dispute the preamble of claim 1 is
`limiting, we evaluate whether the combination discloses the subject matter
`of the preamble. 10
`We have reviewed Petitioner’s arguments and the underlying evidence
`cited in support and are persuaded that the combined teachings of Rabbe,
`Yung, and Gruenwald teach the limitations of the preamble and further
`Petitioner has articulated a sufficient motivation to combine the teachings.
`We now turn to Patent Owner’s contentions relating to the subject
`matter of the preamble.
`(1) Does Yung Teach or Suggest Thermoforming?
`Patent Owner contends Petitioner misrepresents that “Yung teaches
`thermoformed floor mats” and that “Yung disclosed doing so from a sheet of
`polyethylene (PE).” PO Resp. 14. According to Patent Owner, “Yung
`teaches compression molding a three-layer laminate that includes a layer of
`
`10 Many of Patent Owner’s arguments with respect to the preamble are
`duplicative of some of Patent Owner’s arguments regarding motivation to
`combine. See, e.g., PO Resp. 53 (arguing a skilled artisan would not have
`been motivated to thermoform Rabbe’s tray). In this section, we address
`Patent Owner’s contentions related to whether the Petition establishes that
`the combined teachings of Rabbe, Yung, and Gruenwald disclose the
`limitations of the preamble.
`
`16
`
`
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`IPR2020-01139
`Patent 8,382,186 B2
`PE foam or ethylene-vinyl acetate (EVA) foam.” Id. (citing Ex. 2023, 3, 6,
`7, 10; Ex. 2041 ¶¶ 128–129). Patent Owner also contends “Yung describes
`that its laminated body is ‘embossed to form multiple water collection
`grooves on the mat body upper surface.” Id. at 17 (citing Ex. 1006, claim 6;
`Ex. 2041 ¶ 137). In support of this contention, Patent Owner relies on
`Dr. Osswald’s testimony that Yung’s disclosure of embossing “points to the
`compression molding process because embossing of plastics with large
`features such as the channels and umbos in Yung is typically done by
`compression molding.” Id. at 17–18 (citing Ex. 2041 ¶ 137) (emphasis
`added). Resolving this contention requires analyzing several questions
`embedded in the contention.
`(a) Is Yung Limited to Compression Molding?
`Patent Owner contends Yung’s mat is compression molded, not
`thermoformed, because of disclosure in a Chinese patent application which
`Patent Owner contends is related to Yung. PO Resp. 14–16 (citing Ex.
`2023) (referred to by Patent Owner as “Yang”). Patent Owner notes that
`Yung is a continuation-in-part of U.S. Patent Application No. 09/354,067
`which issued as U.S. Patent No. 6,262,667 (“the ’667 patent”). Ex. 1006,
`code (63). Patent Owner further notes that the ’667 patent claims priority to
`Yang (foreign application CN87212432). Ex. 2012, code (30). Patent
`Owner contends that Yung, the ’667 patent, and Yang “involve the exact
`same floor mat with the exact same illustrations” and that Yang “discloses
`no less than four different times that Yung’s floor mat was compression
`molded.” PO Resp. 15 (citing Ex. 2023, 3, 6, 7, 10). Patent Owner contends
`Yang proves Yung “disclosed compression molding not thermoforming.”
`Id. at 14.
`
`17
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`
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`IPR2020-01139
`Patent 8,382,186 B2
`Petitioner, in turn, responds Yung does not claim priority to Yang and
`does not incorporate the ’667 patent nor any other application by reference.
`Pet. Reply 20 (citing Ex. 1006, cover page). Petitioner contends because the
`’667 patent does not mention compression molding, it “is meant to
`encompass more molding techniques than compression molding, such as
`thermoforming.” Id. Petitioner further contends “Yung broadens [the ’667
`patent]’s disclosure of a polyvinyl chloride middle layer with a more generic
`plastic layer” making Yung more inclusive than Yang. Id. (citing Ex. 1041
`¶¶ 116–118; Ex. 1059 ¶ 11).
`For the following reasons, we agree with Petitioner that Yung is not
`limited to compression molding and suggests using materials that can be
`thermoformed.
`First, the Petition does not rely on Yung alone to teach
`thermoforming. Pet. 37 (“Thermoforming Rabbe’s floor tray from a sheet of
`thermoplastic, as disclosed in Yung, would have been a simple combination
`of known prior art elements . . . according to a known technique
`(thermoforming).”), 62 (“Gruenwald, an ‘all-encompassing treatise on
`thermoforming technology.”). The Petition points to the material Yung
`discloses for its middle layer, PE, and argues PE is a well-known
`thermoplastic which, according to Petitioner, suggests using a sheet of
`thermoplastic to form Rabbe’s tray. Pet. 36–37, 61 (arguing a skilled artisan
`would have considered “Yung, which teaches that vehicle floor trays can be
`manufactured with rigid or semi-rigid thermoplastic material”), 65 (A skilled
`artisan “would have sought to use the PE material disclosed by Yung for
`Rabbe’s floor tray.”); see also Pet. Reply 10 (arguing that Petitioner “never
`proposed bodily incorporation of Yung and Rabbe.”); Tr. 14–15. Patent
`Owner, thus, conflates Petitioner’s proposal to use PE, as disclosed in Yung,
`
`18
`
`
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`IPR2020-01139
`Patent 8,382,186 B2
`with Petitioner’s contention that the combined teachings of Rabbe, Yung,
`and Gruenwald suggest thermoforming Rabbe’s tray.
`Second, because Yung does not claim priority to Yang, does not
`incorporate Yang’s disclosure by reference, and does not explicitly describe
`compression molding or any other manufacturing process, we find a skilled
`artisan would not interpret Yung’s disclosure as limited to fabricating a
`vehicle floor mat by compression molding. Ex. 1041 ¶¶ 116–118. We agree
`with Petitioner that, even if Patent Owner were correct and Yung’s mat is
`compression molded, Patent Owner’s contention is based on a bodily
`incorporation of Yung and Rabbe. See In re Mouttet, 686 F.3d 1322, 1332
`(Fed. Cir. 2012) (“It is well-established that a determination of obviousness
`based on teachings from multiple references does not require an actual,
`physical substitution of elements.”); In re Nievelt, 482 F.2d 965, 968 (CCPA
`1973) (“Combining the teachings of references does not involve an ability to
`combine their specific structures.”).
`For these reasons, we disagree with Patent Owner’s sweeping
`assertion th
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