IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`MACNEIL AUTOMOTIVE PRODUCTS
`
`LJMITED, d/b/a WEATHERTECH,
`an Illinois Corporation,
`
`Plaintiff,
`
`V.
`
`JINRONG (SH) AUTOMOTIVE
`ACCESSORY DEVELOPMENT CO., LTD.,
`a Chinese Company, and RUI DAI, a Chinese
`Company andfor Individual,
`
` Defendants.
`
`Case No. 1:19-cv-02460
`
`Hon. Matthew F. Kennelly
`
`JINRONG (SH) AUTOMOTIVE ACCESSORY DEVELOPMENT CO., LTD’S LPR 2.3
`INITIAL NON-INFRINGED’IENT, UNENFORCEABILITY, AND INVALlDITY
`CONTENTIONS AND LPR 2.4 SIIPPLEIVIENTAL INITIAL DISCLOSURES
`
`MacNeiI Exhibit 2037
`
`Yita v. MacNeiI IP, |PR2020-01139
`
`Page 1
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 1
`
`

`

`Pursuant to the Scheduling Order and LPR 2.3, Defendant Jinrong Automotive Accessory
`
`Development Co., LTD (“Jinrong” or “Defendant”) hereby provides notice of Jinrong’s Initial
`
`Non-Infringement, Unenforceability and Invalidity Contentions, including Exhibits A-l to A—lO,
`
`B-l to B-lO, C, and D, for:
`
`0 Claims 1, 2, 3, 6, and 7 ofU.S. Patent No. 8,382,186 (“the ’186 Patent” 1
`
`0 Claims 1, 4, 5, 8, 9, l2, l3, and 14 ofU.S. Patent No. 8,833,834 (“the ’834 Patent")2
`
`(collectively “Asserted Claims”). Jinrong further supplements its Initial Disclosures in accordance
`
`with LPR 2.4.
`
`Jinrong reserves the right to amend, modify, and/or supplement these Initial LPR 2.3
`
`Contentions based on, among other things, amendments, modifications or supplements to
`
`Plaintiff’s infringement contentions, further investigation,
`
`fact or expert discovery, and/or
`
`evaluation of the scope and content of the prior art, disclosure of the parties’ claim constructions,
`
`an order construing the Asserted Claims, or any other basis contemplated by the Federal Rules of
`
`Civil Procedure, the Court’s Local Rules, and any other applicable order entered by the Court.
`
`Jinrong’s Initial LPR 2.3 Contentions are based on information reasonably available at this
`
`time with respect to the Asserted Claims, and are necessarily preliminary and may require
`
`1 MacNeil refers to claim 4 of the ’186 Patent on page 7 of its LPR 2.2 contentions but does not
`include claim 4 in its claim charts or identify any specific products that purportedly infringe
`claim 4. Therefore, claim 4 of the ’186 Patent is not specifically addressed in these contentions,
`but Jinrong contends that it is not infringed and invalid for at least the same reasons discussed
`with respect to the other claims herein. Jinrong reserves the right to revise or amend these
`contentions to specifically address this claim should MacNeil properly allege infiingement of
`this claim.
`
`2 MacNeil does not identify any specific products that purportedly infi'inge claim 14 of the “834
`Patent other than the product in Exhibit 2. Jinrong reserves the right to revise or amend these
`contentions to Specifically address additional products should MacNeil specifically identify
`additional accused products with respect to this claim.
`
`JINRONG’S INITIAL INVALIDITY CONTEN’HONS
`
`2
`
`CASE No. Mfibgdifilizggthibit 2037
`Yita V. MaCNeiI IP, |PR2020-01139
`
`Page 2
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 2
`
`

`

`subsequent amendment, modification, and/or supplementation. Moreover, this case is in its early
`
`stages, and Jinrong has not obtained deposition testimony from any of the named inventors of the
`
`Asserted Patents or any third party. These disclosures are made Without prejudice to Jinrong’s right
`
`to supplement or amend its contentions as additional facts are ascertained, analyses are made,
`
`research is completed, and/or claims are construed.
`
`Because this case is in its early stages, Jinrong has not yet completed its investigation,
`
`discovery, or analysis of matters relating to the infringement, validity, or enforceability of the
`
`Asserted Claims, including, without limitation, invalidity due to on—sale statutory bars, public use
`
`statutory bars or improper inventorship, or unenforceability due to inequitable conduct. The
`
`disclosures herein are not and should not be construed as a statement that no other persons have
`
`discoverable information, that no other documents, data compilations, and/or tangible things exist
`
`that Jinrong may use to support their claims or defenses, or that no other legal theories or factual
`
`bases will be pursued. Accordingly, Jinrong reserves the right to amend, modify and supplement
`
`these Initial LPR 2.3 Contentions as additional information is discovered, identified, or otherwise
`
`appreciated, including testimony about the Asserted Claims and the scope and content of the prior
`
`art.
`
`I.
`
`LPR 2.3 (a) — Initial Non-Infringement Contentions
`
`Jinrong contends that
`
`it does not infringe the Asserted Claims directly,
`
`indirectly,
`
`contributorily, literally, under the doctrine of equivalents, or willfully. Jinrong’s Initial Non-
`
`Infiingement Contentions are provided in Exhibit C as to the ’186 Patent and in Exhibit D as to
`
`the ’834 Patent-
`
`II.
`
`LPR 2.3(b) — Initial Invalidity Contentions
`
`JINRONG’S INITIAL INVALIDHY CONTENTIONS
`
`CASE NO. MfiW—lizgéll'b't 2037
`Yita v. MacNeil IP, |PR2020-01139
`
`Page 3
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 3
`
`

`

`As set forth in further detail below, Jinrong contends that each of the Assorted Claims is
`
`invalid under at least 35 U.S.C. §§ 102, 103, and/or 112.
`
`Jinrong expects further discovery will reveal additional prior art,
`
`including related
`
`disclosures and corresponding evidence for many of the prior art references identified below. For
`
`example, Jinrong has not received fi‘om MacNeil a copy of any ofthe invalidity contentions served
`
`by any defendant in a prior case in which Jinrong has asserted any of the Asserted Patents.
`
`Accordingly, Jinrong incorporates by reference each such invalidity contention as if fully set forth
`
`herein.
`
`Jinrong’s Initial Invalidity Contentions are based on Plaintiffs apparent understanding of
`
`the meaning of the claim terms and scope of the claims as evidenced by Plaintiffs Infringement
`
`Contentions- Jinrong’s Initial Invalidity Contentions should not be taken to mean that (i) Jinrong
`
`agrees with Plaintiffs bases for infringement; (ii) Jinrong agrees with Plaintiff regarding the scope
`
`of any of the Asserted Claims; (iii) Jinrong agrees with Plaintiff‘s claim constructions advanced
`
`expressly or implicitly by Plaintiff s lnfiingement Contentions or in any other pleading, discovery
`
`request or response, or written or verbal communication; or (iv) Jinrong agrees or believes that the
`
`claims at issue are amenable to a meaningful construction or satisfy the requirements of 35 U.S.C.
`
`§ 1 12. Jinrong expressly reserves the right to propose and advocate for alternative constructions to
`
`those apparently advocated by Plaintiff.
`
`Unless otherwise specified, the Invalidity Contentions set forth herein are in reliance on
`
`the alleged priority dates of the Assorted Patents asserted by Plaintiff in its Infringement
`
`Contentions. To the extent Plaintiff asserts entitlement to a different priority date for prior art
`
`purposes, Jinrong reserves the right to amend these contentions. Further, nothing in these
`
`JTNRONG’S INITIAL INVALIDITY CONTENTIONS
`
`CASE No. Wllzgsti‘ibit 2037
`Yita V. MaCNeiI IP, |PR2020-01139
`
`Page 4
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 4
`
`

`

`contentions constitutes an admission concerning the priority dates, conception date or reduction to
`
`practice of the Asserted Claims of the Asserted Patents.
`
`Prior art not included in this disclosure, whether known or unknown to Jinrong, may
`
`become relevant. In particular, Jinrong is currently unaware of the extent, if any, to which Plaintiff
`
`will contend that limitations of the asserted claims are not disclosed in the prior art identified by
`
`Jinrong. To the extent that such an issue arises, Jinrong reserves the right to identify additional
`
`teachings in the same references or in other references that anticipate or would have made the
`
`addition of the allegedly missing limitation to the device or method obvious.
`
`Jinrong’s invalidity claim charts cite to particular teachings and disclosures of the prior art
`
`as applied to features of the Asserted Claims. However, a person having ordinary skill in the art
`
`(“POSITA”) may view an item ofprior art generally in the context of other publications, literature,
`
`products, and understanding. Accordingly, the cited portions are only examples, and Jinrong
`
`reserves the right to rely on uncited portions of the prior art references and other publications and
`
`expert testimony as aids in understanding and interpreting the cited portions, as providing context
`
`thereto, and as additional evidence that a claim limitation is known or disclosed. Jinrong firrther
`
`reserves the right to rely on uncited portions of the prior art references, other publications, and
`
`testimony to establish bases for combinations of certain cited references that render the asserted
`
`claims obvious. Further, the references discussed in the claim charts or elsewhere identified, may
`
`disclose the elements of the asserted claims explicitly, and/or inherently, and/or they may be relied
`
`upon to show the state of the art
`
`in the relevant
`
`timefi‘ame. The suggested obviousness
`
`combinations are provided in the alternative to Jinrong’s anticipation contentions and are not to be
`
`construed to suggest that any reference included in the combinations is not itself anticipatory.
`
`JINRONG’S INITIAL INVALIDITY CONTENTTONS
`
`CASE No. Wflzfid‘ibit 2037
`Yita V. MacNeil IP, IPR2020-01139
`
`Page 5
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 5
`
`

`

`Iinrong has identified exemplary portions of the references disclosing the claimed
`
`limitations. The references, however, may contain additional support for particular claim
`
`limitations. Jinrong expressly reserves the right to rely on uncited portions of the prior art
`
`references, other documents, and expert testimony to provide context or to aid in the understanding
`
`of the cited portions of the references. Where Jinrong cites to a particular figure in a reference, the
`
`citation should be understood to encompass the caption of the figure and any text relating to or
`
`discussing the figure. Where Jinrong cites to particular text referring to a figure, the citation should
`
`be understood to include the referenced figure as well.
`
`The combinations of references provided herein, and the attached claim charts demonstrate
`
`the anticipation and obviousness of the Asserted Claims pursuant to 35 U.S.C. §§ 102, 103, but
`
`are exemplary and are not meant or intended to be exhaustive. The cited references may be
`
`combined and modified in a number of ways to meet the limitations recited in the ASSerted Claims.
`
`Jinrong is not aware of how Plaintiff may attempt to distinguish the prior art cited herein, and
`
`Jinrong reserves the right to identify other references that would have supplied the allegedly
`
`missing elements to render the Asserted Claims obvious or to negate alleged evidence of secondary
`
`indicia of nonobviousness. Plaintiff has not identified what limitations of the Asserted Claims it
`
`alleges were not known to one skilled in the art at the time of the alleged inventions recited in the
`
`Asserted Claims. For any claim limitation that Plaintiff alleges is not disclosed in a prior art
`
`reference, Jinrong reserves the right to assert that such limitation is either inherent in the reference
`
`or obvious to one skilled in the art in light of the same, or that the limitation is disclosed in one or
`
`more prior art references and in combination would have rendered the Asserted Claims obvious.
`
`Jinrong reserves the right to reply upon any related patents and patent applications, foreign
`
`patent counterparts and foreign patent applications of U.S., patents or applications identified in
`
`JINRONG’S INITIAL INVALIDITY CONTENTIONS
`
`CASE NO. Wkfifllibit 2037
`Yita V. MacNeil IP, IPR2020-01139
`
`Page 6
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 6
`
`

`

`these Initial
`
`Invalidity Contentions, U.S. counterparts of foreign patents or applications
`
`corresponding to articles and publications identified in these Initial Invalidity Contentions. For
`
`prior art patents and publications identified in these Initial Invalidity Contentions, Jinrong reserves
`
`the right to rely on public use, offer for sale, and/or sale of the products described in those prior
`
`art patents or publications once Jinrong has had an opportunity to take discovery on these subjects.
`
`Jinrong further incorporates by reference the prior art identified in the file histories of the ’186
`
`Patent, the ”834 Patent, and the family members of those patents.
`
`LPR 2.3
`
`1
`
`Subject to the foregoing reservations, the following 25 prior art references anticipate or
`
`render obvious each of the Asserted Claims, either explicitly and/or inherently, and may also be
`
`relied upon to show the state of the art in the relevant timefiames.
`
`Patent References:i
`
`i 8
`
`
`it??? .. ‘zv «a ‘
`
`;:3
`
`Us Patent AppiPub US2002/0045029 Ui.s
`Apr18,2
`
`
`
`
`
`
`
`
`(S‘YungS'J)
`
`DE4000877 (“Weitbrecht”)
`
`Ju1y18, 1991
`
`WO 95/34443 (“Vidal”)
`
`PCT/France
`
`December 21, 1995
`
`FR2547252 (“Rabbe”)
`
`December 14, 1984
`
`U.S. Patent No. 6,817,649 (“Stanesic”)
`
`U.S.
`
`November 16, 2004 (filed
`March 19, 2003)
`
`U.S- Patent No. 4,828,898 (“Bailey”)
`
`May 9, 1989
`
`
`
`
`U.S. Patent No. 6,905,650 (“McIntosh”) U.S.
`
`June 14, 2005 (filed
`November 5, 2001)
`
`
`
`
`
`3 Exhibits A—9 and B-9 also reference KR100329298B1 (“KR100329298”), EP0022702A1 (“Lahaye Al“), U.S.
`Patent No. 3,852,146 (“Squier”), U.S. Patent No. 4,801,} 69 (“Queen”), and U.S. Patent No. 6,129,402 (“Carriere”),
`but those references have been omitted here because of the 25 reference limit. Iinrong may rely on these references
`as background information such as state of the art.
`
`JINRONG’S INITIAL INVALIDITY CONTENTIONS
`
`CASE NO. M§§Nfiib§éfihibit 2037
`Yita v. MacNeiI IP, |PR2020-01139
`
`Page 7
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 7
`
`

`

`US. Patent No- 4,377,614 (“Alfter”)
`
`U.S. Patent No. 4,568,581 (“Peoples”)
`
`U.S. Patent No. 4,958,876 (“Diaco”)
`
`
` EP0022702B1 (“Lahaye B 1”)
`
`
`
`
`
`
`
`
`U.S. Patent No. 5,298,319 (“Donahue”)
`
`
`
`
`U.S. Patent No. 6,793,872 (“Buss”)
`September 21, 2004 (filed
`
`June 16, 2000
`
`
`
`
`
`
`
`
`U.S. Patent No. D489,306 (“Kraines”)
`
`U.S.
`
`U.S. Patent No. D454,321 (“Lu 321”)
`
`Se tember 30, 1999)
`
`May 4, 2004 (filed August
`27, 2003
`
`March 12, 2002
`
`U.S. Patent No. 7,444,748 (“MacNeil”)
`
`November 4, 2008
`
`Printed Publications References:
`
`8‘
`_
`111.
`Michael L. Benns ..... Plastics Enginermg I
`Handbook of the
`
`I.
`
`Reinhold
`
`Inc, Fifth Edition
`
`Society of the
`Plastics Industry,
`
`Sale, Public Knowledge / Use References:
`
`
`
` %
`
`
`E
`1
`
`a
` u
`1,:
`
` 81‘
`111%”11,2:
`‘1 1
`1:11:11
`6.1
`158111
`
`
`
`
`
`12 W i
`
`
`to O
`MacNe
`
`
`i1; see Feb. 17, 20
`
`
`Information Disclosure
`
`
`Statement in U.S. Patent App.
`No. 12/879,999
`
`
`
`Volvo Floor Mat
`
`Prior to October 29, 2003
`
`MacNeil; see Feb. 17, 2012
`Information Disclosure
`
`
`
`
`IINRONG’S INITIAL INVALIDITY CONTENTIONS
`
`CASE NO. M§W§02§50hibit 2037
`Yita V. MaCNeiI IP, |PR2020-01139
`
`Page 8
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 8
`
`

`

`
`
`Husky Liner Floor Tray (e.g., Prior to October 29, 2003
`models 3060, 3780)
`
`Statement in US. Patent App.
`No. 12/879,999
`
`MacNeil; see Feb. 17, 2012
`Information Disclosure
`Statement in US. Patent App.
`No. 12/879,999
`
`The Black Armor Floor Guard, Volvo Floor Mat, and Husky Liner Floor Trays are
`
`collectively referred to as “Floor Tray Products” (see Exhibits A—11 and B-1 1). The following
`
`printed publications are relied on to show the features of each of these products:
`
`The following documents identified in the Feb. 17, 2012 Information Disclosure
`
`Statement in US. Patent App. No. 12/879,999:
`
`“Photographs of a Highland {Black Armor] Floor Guard with unknown date of
`manufacture, obtained by Applicant in 2010, and believed to be on sale and in public use
`prior to October 29, 2003.” (“Black Armor Photos”)
`Catalog entries relating to Black Armor Floor Guard by Highland (“Black Armor
`Catalog”)
`“Photographs of Volvo floor mat with unknown manufacture date, obtained by Applicant
`in 2010, and believed to be on sale and in public use prior to October 29, 2003-” (“Volvo
`Photos”)
`
`Brochure entries relating to Volvo floor mat (“Volvo Brochure”)
`
`“Photographs of 3 Husky Liner floor tray with unknown manufacture date, obtained by
`Applicant in 2010, and believed to be on sale and in public use prior to October 29,
`2003.” (“Husky Photos”)
`
`Catalog entries relating to Husky Liner floor tray (“Husky Catalog”)
`“Photographs of Winfield’s Husky Liner Model 3780 for 2000-2001 BMW X6
`possessed by Applicant, believed to be on sale and in public use prior to October 29,
`2003.” (“Husky 3780 Photos”)
`
`The following webpages available on the Wayback Machine (archive.org/web):
`
`http://black—armor.com/MoldedFloor/Moldedhtml (April 20, 1999)
`(web.archive.org/web/l9990420224616/http://www.black-
`armor.com/MoldedFloor/Moldedhtml) (“Black Armor Webpage”)
`http://www.huskyliners.com/chero.html (December 13, 2003)
`(https://web.archive.org/web/20031213094843/http://wvvw.huskyliners.com/chero.html)
`(“Husky Webpage”)
`
`http://www.huskylinerscom/3060 DOdef (July 31, 2004)
`(https ://Web.archive.org/web/2004073 l2 1 5 5 03/htth//wwwhuskylinerscomf3060
`DOC.pdf ) (“Husky 3060 Instructions”)
`
`JINRONG’S INITIAL 1N VALIDITY CONTENTIONS
`
`CASE N0. M§M§§§hibit 2037
`Yita V. MaCNeil IP, |PR2020-01139
`
`Page 9
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 9
`
`

`

`'1
`
`http://WWW.huskyliners.com/3780 doc.pdf (July 14, 2003)
`(httpsz/lweb.archiveorg/web/2003071401 1 1 15/http://WWW.huskyliners.com/3780
`doc.pdf) (“Husky 3780 Instructions”)
`
`Jinrong reserves the right to supplement these citations and photos with additional
`
`supporting documentation for these prior art products as discovery progresses.
`
`LPR. 2.3112112!
`
`Subject to the foregoing reservations, the following prior art anticipates and/or renders
`
`obvious the Assorted Claims, either explicitly and/or inherently.
`
`A.
`
`Anticipation
`
`The following references anticipate one or more Asserted Claims of the Asserted Patents
`
`as set forth in the claim charts attached as exhibits hereto.
`
`2186;Patent Claims1,2,3 6vand7
`
`
`
`“834 Patent Claims 1, 4, 5, 8, 9, 12, 13, and 14
`
`
`
`
`’834 Patent Claims 1, 5, 9, 13, and 14
`
`
`
`
`
`
`Floor Tray Products (Exhibits A—l 1, B-1 1)
`
`’186 Patent Claims 1, 2, 3, 6, and 7
`
`’834 Patent Claims 1, 4, 5, s, 9, 12, 13, and 14
`
`Rabbe (Exhibits A—4, 153—4)
`
`Stanesic (Exhibits A-S, B-S)
`
`
`
`
`
`
`
`
`
`
`JINRONG’S INITIAL INVALIDITY CONTENTIONS
`
`10
`
`CASE NO. Mfii‘lfitizfiééhibit 2037
`Yita V. MacNeiI IP, IPR2020-01139
`
`Page 10
`
`V
`
`Weitbrecht (Exhibits A-2, B-2)
`
`’186 Patent Claims 1, 2, 3, 6, and 7
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 10
`
`

`

`In addition, the ’ 186 Patent expanded and added to its disclosure by including new matter
`
`in the specification that was not in its parent applications. Specifically, Plaintiff added at least the
`
`following language to the specification: “The tray is thermoformed from a sheet of polymer
`
`material having substantially uniform thickness, and this means that the components of the tray
`
`after thermoforming will have a substantially uniform thickness.” ’ 186 Patent at 5:13-16. Plaintiff
`
`also added the following sentence: “Each tread/baffle is hollow and has a width, in any horizontal
`
`direction, which is more than twice its thickness as meaSured fiom the top surface thereof to the
`
`nearest point on the bottom surface thereof.” ’186 Patent at 5:20-23. Additional disclosure was
`
`added as well. Therefore, the Asserted Claims of the ’186 Patent, and the Asserted Claims of the
`
`later-filed ’834 Patent are entitled to a priority date no earlier than the filing date ofthe ’ 186 Patent,
`
`August 27, 2012. Therefore, based on Plaintiff‘s apparent construction of the Asserted Claims, the
`
`Asserted Claims of the ’ 186 Patent and ’834 Patent are anticipated by US. Patent App. Pub. No.
`
`2011/0009994, published January 13, 201 1, or the floor trays on sale by Plaintiff as of August 27,
`
`2011, as well as earlier published patents to MacNeil (and their published pending applications),
`
`including US. Patent Nos. 7,444,748, 7,607,713, 7,686,371, and 7,784,848, 7,401,837, 7,686,370.
`
`B. Obviousness
`
`To the extent that MacNeil argues that any anticipatory reference identified above does not
`
`anticipate the Asserted Claims, the reference would render the Asserted Claims obvious alone or
`
`in combination as set forth below. The Asserted Claims are obvious in light of these references,
`
`including because: (1) they combine the prior art elements according to known methods to yield
`
`predictable results; (2) they involve simple substitution of one known element for another to obtain
`
`predictable results; (3) they involve use of a known technique to improve similar devices, methods,
`
`JINRONG’S INITIAL INVALIDITY CONTENTIONS
`
`11
`
`.
`.
`.
`CASE No. WUzfidfii‘m't 2037 ,
`Yita v. MaCNeil IP, |PR2020-01139
`
`Page 11
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 11
`
`

`

`and products in the same way; (4) they apply a known technique to a known device, method, and
`
`product ready for improvement to yield predictable results; (5) modifying or combining the art in
`
`the manner claimed involves choosing from a finite number of identified, predictable solutions,
`
`with a reasonable expectation of success; (6) the prior art references disclose known work in one
`
`field or endeavor that prompt predictable variations of it for use in either the same field or a
`
`different one based on design incentives and market forces; and (7) the prior art, individually and
`
`collectively, provides teaching, suggestion, and motivation to modify the prior art references and
`
`combine the prior art teachings to arrive at the claimed invention.
`
`The following references alone or in combination render obvious ’186 Patent Claims 1, 2,
`
`3, 6, and 7 and ’834 Patent Claims 1, 4, 5, 8, 9,12,13,and14.
`
`0 Yung alone
`
`0 Rabbe Alone
`
`- Weitbrecht alone
`
`0
`
`Floor Tray Products alone
`
`0 Rabbe in view of McIntosh and/or Yung
`
`o Rabbe in view of Buss and/or Yung
`
`0» Rabbe in view of Diaco and Stata
`
`0 Yung or Weitbrecht in View of Floor Tray Products
`
`0 Yung or Weitbrecht or Floor Tray Products in view of Vidal
`
`0 Yung or Weitbrecht or Floor Tray Products in view of Rabbe
`
`0 Yung or Weitbrecht or Floor Tray Products in View of Stanesic
`
`- Yung or Weitbrecht or Floor Tray Products in View of McIntosh
`
`c Any of the obviousness grounds above in view of Bailey
`
`JINRONG’S iNiTLAL INVALIDITY CONTENTIONS
`
`12
`
`CASE NO. MPfiE‘lQ-lizgdll‘ibit 2037
`Yita V. MacNeiI IP, IPR2020-01139
`
`Page 12
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 12
`
`

`

`a Any of the obviousness grounds above in View of Diaco
`
`- Any of the obviousness grounds above in view of Lu 530, Kraines, or Lu 321
`
`c Any of the obviousness grounds above in View of Berins
`
`I Any of the obviousness grounds above in View of Admitted Prior Art
`
`The following additional references alone or in combination also render obvious ’834
`
`Patent Claims 1, 4, 5, 8, 9, and 12.
`
`I Vidal alone
`
`- Rabbe alone
`
`0 Rabbe in View of McIntosh and Yung
`
`o Rabbe in View of McIntosh and Diaco
`
`-
`
`Stanesic alone
`
`0 McIntosh alone
`
`0 Any of the obviousness grounds above in View of Bailey
`
`0 Bailey alone
`
`0 Any of the obviousness grounds above in View of Floor Tray Products
`
`0 Any of the obviousness grounds above in View of Diaco
`
`0 Any of the obviousness grounds above in View of Berins
`
`0 Any of the obviousness grounds above in view of Admitted Prior Art
`
`To the extent Plaintiff contends that any of the anticipation or obviousness grounds above
`
`fails to disclose or render obvious a claim limitation, the claim limitations are obvious in further
`
`View of one or more of the references identified as a “Secondary Prior Art Reference” in Exhibits
`
`A—9 and B-9, namely Berins, Lahaye B1, Alfier, Peoples, Reynolds, Diaco, Donahue, Buss, Tyler
`
`545, L11 530, Kraines, and/or Lu 321.
`
`JINRONG’S INITIAL INVALIDITY CONTENTIONS
`
`13
`
`CASE NO. Méfii‘ifidbfiiéhib” 2037
`Yita V. MacNeiI IP, IPR2020-01139
`
`Page 13
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 13
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`

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`A POSITA would be motivated to combine each of the prior art references above for at
`
`least the following reasons. The majority of references disclose floor mat or floor tray systems
`
`designed to protect a vehicle floor. A POSITA would have been motivated to combine mat or tray
`
`features fiom one design with mat or tray features for another design. Certain other references
`
`disclose vehicle cargo and bed liners, and a POSITA would have found it obvious to look to
`
`features of other protective liners in vehicles when designing floor trays because the different types
`
`of liners often use similar materials and serve similar purposes. Finally, a POSITA would have
`
`found it obvious to look to Berins because it is a textbook related to design and processing of
`
`various plastics, which includes the material commonly used for floor trays and mats.
`
`In addition, for each of the references combined with Yung, Weitbrecht, or the Floor Tray
`
`Products above, the following sections identify certain limitations disclosed by those combined
`
`references for purposes of the obviousness combinations.
`
`1.
`
`“Thermoformed from a sheet of thermoplastic polymeric material of
`
`substantially uniform thickness” (186 claim lpre); “thicknesses
`
`being
`
`substantially uniform throughout the tray” (186 claim If; 834 claim lg, 5g, 9g,
`
`13g); “molded from a sheet of polymeric material of substantially uniform
`
`thickness” (834 claim 1b, 5b, 9b)
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`Vidal (Exhibits A—3, B-3)
`
`Rabbe (Exhibits A—4, B-4)
`
`Stanesic (Exhibits A—S, B-S)
`
`Bailey (Exhibits A-6, B-6)
`
`McIntosh (Exhibits A-7, B-7)
`
`JINRONG’S INITIAL INVALIDITY CONTENTIONS
`
`l4
`
`.
`.
`.
`CASE NO_ M§$§fl2fi§éhlblt 2037
`Yita V. MaCNeiI IP, |PR2020-01139
`
`Page 14
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 14
`
`

`

`f.
`
`Secondary References (A—9, B-9): Berins, Lahaye Bl, Alfier, Peoples,
`
`Reynolds, Diaco Buss, Tyler 545
`
`2.
`
`Panels/tray walls “closely c0nforming”/“substantially conformiingr’ to foot
`
`well walls (186 claims 11), lo; 834 claims 1d, 1e, 5d, 5e, 9d, 9e); “Within one-
`
`eighth of an inch” (834 claim 1h, 5h, 9h)
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`Vidal (Exhibits A-3, B-3)
`
`Rabbe (Exhibits A—4, B-4)
`
`Stanesic (Exhibits A—S, B-S)
`
`Bailey (Exhibits A—6, B-6)
`
`McIntosh (Exhibits A-7, B-7)
`
`Secondary References (A—9, B-9): Lahaye B1, Alfter, Peoples, Reynolds,
`
`Diaco Buss, Tyler 545
`
`3.
`
`“Curved transition[s]” (186 claims 1b, 1c, 2-3; 834 claims Id, 1e, 1f, 5d, 5e, 51',
`
`9d, 9e, 9f, 13]), 13c, 13d)
`
`21.
`
`b.
`
`0.
`
`d.
`
`e.
`
`f.
`
`Vidal (Exhibits A—3, B-3)
`
`Rabbe (Exhibits A-4, B-4)
`
`Stanesic (Exhibits A-S, B-S)
`
`Bailey (Exhibits A-6, B-6)
`
`McIntosh (Exhibits A-7, B-7)
`
`Secondary References (A-9, B-9): Berins, Lahaye B1, Alfler, Peoples,
`
`Reynolds, Diaco, Buss, Tyler 545
`
`4.
`
`Reservoir with baffles (186 claims 1d, 1e, 1h, 1i, 6-7, 131)
`
`a.
`
`Stanesic (Exhibits A-S, 13-5)
`
`JINRONG’S INITIAL INVALIDITY CONTENTIONS
`
`15
`
`CASE NO. Mfigfillfiwibit 2037
`Yita v. MacNeiI IP, |PR2020-01139
`
`Page 15
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 15
`
`

`

`b.
`
`c.
`
`Secondary References (A-S, B—8): Lu 530, Kraines, Lu 321
`
`Admitted Prior Art (Exhibits A—lO, B-IO)
`
`5.
`
`“Hollow” baffles (186 claim 1e, 131); baffle width “of more than two times its
`
`thickness” (186 claim 1g)
`
`a.
`
`b.
`
`Stanesic (Exhibits AnS, B-5)
`
`Secondary References (A-9, B-9): Bering, Lahaye B1, Diaco
`
`6.
`
`Vehicle foot well (834 claim 1b, 5b, 9b)
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`g.
`
`Vidal (Exhibits A—3, B-3)
`
`Rabbe (Exhibits A-4, B-4)
`
`Stanesic (Exhibit A-S, B-5)
`
`Bailey (Exhibits A-6, B-6)
`
`McIntosh (Exhibits A-7, B-7)
`
`Secondary References (A-9, B-9): Alfter
`
`Admitted Prior Art (Exhibits A—lO, B—lO)
`
`7.
`
`Joined through maximum heights (834 claim 4, 8, 12)
`
`a.
`
`b.
`
`0.
`
`Vidal (Exhibits A-3, B-3)
`
`Rabbe CExhibits A—4, B-4)
`
`Bailey (Exhibits A—6, B-6)
`
`8.
`
`Reservoir and general portion (834 claim 13c, 14)
`
`a.
`
`b.
`
`Secondary References (A-9, B-9): Lu 530, Kraines, Lu 321
`
`Admitted Prior Art (Exhibits A—lO, B—lO)
`
`In addition, as discussed above with respect to anticipation, the Asserted Claims ofthe ’ 186
`
`and ’834 Patents are not entitled to a priority date earlier than August 27, 2012, and the AsseIted
`
`HNRONG’S INITIAL INVALIDITY CONTENTIONS
`
`16
`
`CA N M We” EXhibit 2037
`Yita v. fiac‘heiii‘ , I' fifihzo-m 139
`
`Page 16
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 16
`
`

`

`Claims would have been obvious based on MacNeil alone; the floor trays on sale by Plaintiff as of
`
`August 27, 2011 alone; or either reference in further combination with the references identified
`
`above. A POSITA would have been motivated to combine these references for the same reasons
`
`discussed above.
`
`LPR 2.3
`
`3
`
`Subject to the foregoing reservations, Jinrong provides the following charts identifying
`
`specifically where and how each limitation of each asserted claim is found.
`
`Exhibits A—l to A-1 1: Charts for the ‘186 Patent
`
`Appendix B-l to B-1 1: Charts for the ‘834 Patent
`
`1.
`
`2.
`
`LPR 2.3191141
`
`Subject to the foregoing reservations, Jinrong states that each of the asserted claims of the
`
`Asserted Patents containing the following terms, phrases, and limitations (and substantially similar
`
`phrases), and any dependent claim thereof, are invalid under 35 U.S.C. § 112 as indefinite, lacking
`
`enablement, and lacking written description, as such terms are not adequately disclosed in the
`
`specification, and accordingly are indefinite and would not apprise one of skill in the art how to
`
`make and use the invention, or demonstrate that the inventors were in possession of such limitation:
`
`o
`
`0
`
`0
`
`o
`
`-
`
`o
`
`“substantially conforming”
`
`“at least one longitudinally disposed lateral side and at least one transversely
`
`disposed lateral side”
`
`“closely conforming”
`
`“curved transition”
`
`“substantially uniform”
`
`“substantially longitudinally disposed” / “substantially transversely disposed”
`
`JINRONG’S INITIAL INVALIDITY CONTENTIONS
`
`l7
`
`.
`.
`.
`CASE NO. 1;%?8l>‘.8lLE)Xh'b't 2037
`Yita V. MaCNeil IP, |PR202 0-01139
`
`Page 17
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 17
`
`

`

`0
`
`-
`
`-
`
`LPR. 2.3
`
`5
`
`“upper margin”
`
`“substantially horizontal”
`
`“general portion with an upward facing general surface”
`
`Jinrong does not allege invalidity under 35 U.S.C. § 101 at this time but reserves the right
`
`to revise or amend these contentions as discovery progresses.
`
`III.
`
`LPR 2.3(c) — Initial Unenforceability Contentions
`
`Jinrong asserts that both the ’186 and the ”834 patents are unenforceable because Plaintiff
`
`appears to have knowingly and intentionally underpaid fees. For example, on March 12, 2014,
`
`Plaintiff paid for prioritized examination (Track 1) of the application giving rise to the ’834 Patent
`
`as a small entity. On information and believe on March 12, 2014, plaintiff did not meet the
`
`requirements for small entity status. Similarly, when the applicant for the ’ 186 patent paid the issue
`
`fee, that fee was paid as a small entity. On information and belief, when the applicant for the ‘186
`
`patent paid the issue fee, it was not eligible for small entity status.
`
`Jinrong does not raise any additional grounds of unenforceability at this time but reserves
`
`the right to revise or amend these contentions as discovery progresses.
`
`IV.
`
`LPR 2.4 — Supplemental Initial Disclosures
`
`In addition to the documents identified and produced in conjunction With Jinrong’s January
`
`15, 2020 Initial Disclosures, Jinrong is concurrently producing the following documents
`
`responsive to LPR 2.4:
`
`LPR 2.4(a): HNRONG00000191-232, IINRONG000001726-1736.
`
`LPR 2.4(b): JINRONG00000233—927, IINRONG000001706—1725.
`
`JINRONG’S INITIAL INVALIDITY CONTENTIONS
`
`18
`
`CASE NO I'ngacye” 6EXhibit 2037
`Yita v. MacNéi] I5, ii??? 02001139
`
`Page 18
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 18
`
`

`

`Dated: May 11, 2020
`
`JINRONG (SH) AUTOMOTIVE
`ACCESSORY DEVELOPMENT CO.,
`LTD.
`
`By: s/Mark P. Walters/
`
`Robert D. Leighton
`A. Colin Wexler
`
`GOLDBERG KOHN, LTD.
`55 East Monroe, Suite 3300
`Chicago, Illinois 60603
`312-201-4000
`
`robert.1eighton@goldbergkohn.com
`colin-wexler@goldbergkohn.com
`
`Of Counsel:
`
`Mark P. Walters (pro hac vice)
`Lowe Graham Jones PLLC
`
`701 Fifth Ave, Suite 4800
`Seattle, WA 98104
`(206) 381-3300
`walters@10wegrahamj ones.com
`
`JINRONG’S INITIAL INVALIDITY CONTENTIONS
`
`19
`
`CASE NO, figqglyghghibit 2037
`Yita V. MaCNeil IP, |PR2020-01139
`
`Page 19
`
`MacNeil Exhibit 2037
`Yita v. MacNeil IP, IPR2020-01139
`Page 19
`
`

`

`
`
`vo