UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`DECLARATION OF TIM A. OSSWALD, PH.D.
`
`MacNeil Exhibit 2041
`Yita v. MacNeil IP, IPR2020-01139
`Page 1
`
`

`

`V.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`BACKGROUND AND QUALIFICATIONS ................................................. 4
`II.
`III. MATERIALS CONSIDERED ........................................................................ 9
`IV.
`LEGAL UNDERSTANDING ....................................................................... 15
`A. My Understanding of Claim Construction .......................................... 15
`B. My Understanding of Anticipation ..................................................... 16
`C.
`Obviousness ......................................................................................... 16
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 19
`A.
`The ’186 Patent ................................................................................... 20
`B.
`The ’834 Patent ................................................................................... 23
`VI. BRIEF OVERVIEW OF THE ’186 PATENT .............................................. 27
`A.
`Summary of the ’186 Patent ................................................................ 27
`B.
`Challenged Claims of the ’186 Patent ................................................. 37
`C.
`Claim Construction.............................................................................. 39
`1.
`The “closely conforming” limitations should be construed to
`require close conformance between a panel surface and a
`corresponding surface of a vehicle foot well wall. ...................39
`Petitioner’s construction of “thickness . . . being substantially
`uniform throughout the tray” is inconsistent with the claim
`language and the specification. .................................................42
`VII. BRIEF SUMMARY OF THE ’834 PATENT .............................................. 45
`A.
`Summary of the ’834 Patent ................................................................ 45
`B.
`Challenged Claims of the ’834 Patent ................................................. 54
`C.
`Claim Construction.............................................................................. 62
`
`2.
`
`i
`
`MacNeil Exhibit 2041
`Yita v. MacNeil IP, IPR2020-01139
`Page 2
`
`

`

`1.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Petitioner’s construction of “thickness . . . being substantially
`uniform throughout the tray” is inconsistent with the claim
`language and the specification. .................................................62
`VIII. ALLEGED PRIOR ART REFERENCES ..................................................... 65
`A.
`Rabbe ................................................................................................... 67
`1.
`Rabbe’s trays are not formed from a single, integral material. 68
`2.
`A POSITA would not have been motivated to thermoform
`Rabbe’s trays. ............................................................................79
`A POSITA would not use a living hinge in a vehicle floor tray.
` ...................................................................................................87
`Rabbe’s trays do not disclose the conformance to the vehicle
`foot wells required by the claims of the ’186 and ’834 Patents.
` ...................................................................................................90
`Yung ................................................................................................... 105
`1.
`A POSITA would understand that Yung’s floor mat is not
`thermoformed. .........................................................................108
`Yung’s mat is compression molded. .......................................112
`Thermoplastics can be compression molded. .........................115
`A POSITA would not look to thermoforming given the foamed
`materials described in Yung. ...................................................116
`Mere disclosure of polyethylene, or polyethylene foam, would
`not lead a POSITA to thermoforming. ....................................121
`A POSITA would not have been motivated to combine Rabbe
`and Yung. ................................................................................122
`Yung teaches away from thermoforming a custom-fit floor tray.
` .................................................................................................126
`Gruenwald ......................................................................................... 128
`
`2.
`3.
`4.
`
`B.
`
`C.
`
`ii
`
`MacNeil Exhibit 2041
`Yita v. MacNeil IP, IPR2020-01139
`Page 3
`
`

`

`1.
`
`2.
`
`Gruenwald teaches that thermoforming is applicable to
`thermoplastics, not the rubber Rabbe uses for its trays. .........129
`Gruenwald teaches away from thermoforming Rabbe’s floor
`trays and Yung’s floor mat. ....................................................130
`Sturtevant ........................................................................................... 136
`D.
`IX. CONCLUSION ............................................................................................ 138
`Appendix A:
`Curriculum vitae of Tim A. Osswald
`
`iii
`
`MacNeil Exhibit 2041
`Yita v. MacNeil IP, IPR2020-01139
`Page 4
`
`

`

`I, Tim A. Osswald, declare as follows:
`
`I.
`
`INTRODUCTION
`1.
`I have been retained as a technical expert on behalf of patent owner
`
`MacNeil IP LLC (“MacNeil” or “Patent Owner”) in connection with inter partes
`
`review (“IPR”) proceedings IPR2020-01139 and IPR2020-01142 initiated by Yita
`
`LLC (“Petitioner”). I understand that IPR2020-01139 involves U.S. Patent No.
`
`8,382,186 (the “’186 Patent”), titled “Vehicle Floor Tray” by named inventors
`
`David F. MacNeil and Scott A. Vargo, and that the ’186 Patent is currently
`
`assigned to MacNeil. EX1001 (IPR2020-01139). I understand that IPR2020-01142
`
`involves U.S. Patent No. 8,833,834 (the “’834 Patent”), titled “Molded Vehicle
`
`Floor Tray and System” by named inventors David F. MacNeil and Scott Vargo,
`
`and that the ’834 Patent is currently assigned to MacNeil. EX1001 (IPR2020-
`
`01142).
`
`2.
`
`I understand that in IPR2020-01139, Petitioner challenged Claims
`
`1-7 of the ’186 Patent as allegedly being unpatentable under 35 U.S.C. § 103 in
`
`view of certain alleged prior art references. See Paper 3 (IPR2020-01139)
`
`(“Petition-01139”) at 27. Specifically, I understand that Petitioner challenged
`
`Claims 1-7 of the ’186 Patent on the following ground:
`
` Ground 1: Claims 1-7 under 35 U.S.C. § 103 as allegedly being
`
`obvious over Rabbe (EX1005 (IPR2020-01139)) in view of Yung
`
`1
`
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`Yita v. MacNeil IP, IPR2020-01139
`Page 5
`
`

`

`(EX1006 (IPR2020-01139)) and Gruenwald (EX1007 (IPR2020-
`
`01139)). See id.
`
`3.
`
`I understand that in IPR2020-01142, Petitioner challenged Claims
`
`1-15 of the ’834 Patent as allegedly being unpatentable under 35 U.S.C. § 103 in
`
`view of certain prior art references. See Paper 3 (IPR2020-01142) (“Petition-
`
`01142”) at 23. Specifically, I understand that Petitioner challenged Claims 1-15 of
`
`the ’834 Patent on the following grounds:
`
` Ground 1: Claims 1, 4, 5, 8, 9, and 12-15 under 35 U.S.C. § 103 as
`
`allegedly being obvious over Rabbe (EX1005 (IPR2020-01142)) in
`
`view of Yung (EX1006 (IPR2020-01142)) and Gruenwald (EX1007
`
`(IPR2020-01142)). See id.
`
` Ground 2: Claims 2, 3, 6, 7, 10, and 11 under 35 U.S.C. § 103 as
`
`allegedly being obvious over Rabbe (EX1005 (IPR2020-01142)) in
`
`view of Yung (EX1006 (IPR2020-01142)), Gruenwald (EX1007
`
`(IPR2020-01142)), and Sturtevant (EX1011 (IPR2020-01142)).1 See
`
`id.
`
`1 Rabbe, Yung, Gruenwald, and Sturtevant have the same exhibit numbers in both
`
`proceedings. See Petition-01139 at v; Petition-01142 at vi. In the remainder of my
`
`analysis, I refer to each reference by exhibit number without specifying a
`
`proceeding.
`
`2
`
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`Yita v. MacNeil IP, IPR2020-01139
`Page 6
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`

`

`4.
`
`I also understand that the Board instituted review of all Challenged
`
`Claims in both proceedings upon consideration of the Petitions and Patent Owner’s
`
`Preliminary Responses. See Paper 17 (IPR2020-01139) (“Decision-01139”) at 2;
`
`Paper 17 (IPR2020-01142) (“Decision-01142”) at 2.
`
`5.
`
`I have been asked to provide my technical review, analysis,
`
`insights, and opinions regarding the ’186 Patent, the ’834 Patent, and the prior art
`
`references that form the basis for the grounds of unpatentability set forth in the
`
`Petitions, as well as the analyses set forth in the Petitions, the declarations of
`
`Petitioner’s declarant, Dr. Koch, and the Board’s Institution Decisions. I have been
`
`asked to consider how a person having ordinary skill in the art (“POSITA”) would
`
`understand the claims of the ’186 Patent, the ’834 Patent, and the applied
`
`references. I am familiar with the technology at issue, including during the period
`
`prior to October 29, 2004, which I understand is the priority date of the ’186 and
`
`’834 Patents.
`
`6.
`
`In reaching the opinions stated herein, I have considered the
`
`materials identified in Section III in the context of my own education, training,
`
`research, and knowledge, as well as my personal and professional experience.
`
`7.
`
`I make this Declaration based on my own personal knowledge and,
`
`if called upon to testify, would testify competently to the matters contained herein.
`
`3
`
`MacNeil Exhibit 2041
`Yita v. MacNeil IP, IPR2020-01139
`Page 7
`
`

`

`II.
`
`BACKGROUND AND QUALIFICATIONS
`8.
`My background and qualifications are stated more fully in my
`
`curriculum vitae, which I have attached as Appendix A to my Declaration. Here, I
`
`provide a summary of my qualifications:
`
`9.
`
`I am currently a Professor at the University of Wisconsin-Madison
`
`in the Department of Mechanical Engineering, where I am the Co-Director of the
`
`Polymer Engineering Center. I am also an Honorary Professor of Plastics
`
`Technology at the University of Erlangen-Nuremberg in Germany and the National
`
`University of Colombia.
`
`10.
`
`I earned both a Bachelor of Science degree (1981) and a Master of
`
`Science degree (1982) in Mechanical Engineering from the South Dakota School of
`
`Mines & Technology. I also earned a Ph.D. (1987) in Mechanical Engineering
`
`from the University of Illinois at Urbana-Champaign. My Ph.D. research was in
`
`the field of polymer processing, and more specifically, in the area of compression
`
`molding.
`
`11.
`
`From 1987 to the present, I have held a variety of professional and
`
`academic positions. I was a consultant for the Dynamit Nobel Research Center in
`
`Leverkusen, Germany, as well as a Humboldt Fellow at the Institute for Plastics
`
`Processing at the Technical University of Aachen, Germany, between 1987 and
`
`1989. In 1989, I joined the Mechanical Engineering Department at the University
`
`4
`
`MacNeil Exhibit 2041
`Yita v. MacNeil IP, IPR2020-01139
`Page 8
`
`

`

`of Wisconsin-Madison as an Assistant Professor. I became a Full Professor in
`
`1999.
`
`12.
`
`In relation to this case, I have extensive experience with secondary
`
`shaping operations, including thermoforming, film blowing and blow molding
`
`processes, as well as other manufacturing processes such as injection molding,
`
`compression molding and extrusion. I also have extensive experience with
`
`behavior and characterization of polymeric materials, including thermoplastics,
`
`thermosets, and rubber.
`
`13.
`
`I am a member of numerous professional societies and
`
`organizations. For example, I am a member of the Society of Plastics Engineers,
`
`the Scientific Alliance of the University Professors of Polymer Technology, the
`
`Polymer Processing Society, where I currently serve as treasurer, and the German
`
`Technical Journalists Organization (DFJV).
`
`14.
`
`For over 30 years, I have conducted research and taught classes in
`
`the field of mechanical engineering, and more specifically regarding polymers and
`
`polymer processing. My research has focused on polymer and polymer composites
`
`processing, polymer and polymer composites materials science, and engineering
`
`design with polymers and polymer composites. Furthermore, I regularly serve as a
`
`consultant to the plastics industry and have extensive experience dealing with the
`
`design and manufacture of plastic parts, such as for automotive applications,
`
`5
`
`MacNeil Exhibit 2041
`Yita v. MacNeil IP, IPR2020-01139
`Page 9
`
`

`

`packaging, and consumer goods. In the past, I have worked with Placon® on
`
`various areas involving thermoformed packages, with Penda, regarding a project
`
`involving alternative materials containing wood fiber in the manufacture of
`
`thermoformed truck bedliners, and I have served as an expert on various lawsuits
`
`involving thermoformed consumer goods. Throughout the years I have consulted
`
`for many companies involving the compression molding of thermosetting and
`
`thermoplastic automotive panels and structural components. I consulted with
`
`Dynamit Nobel on a project that involved the compression molding of explosive
`
`charges, and I have also worked with Adidas™ in the characterization of their TPU
`
`(a thermoplastic elastomer based on polyurethane) foam materials, which are used
`
`in the compression molding of athletic shoes’ midsoles. I also serve on the
`
`Technical Advisory Board of Teel Plastics, a plastic tube and pipe manufacturer,
`
`and on the Scientific Advisory Board of SABIC, a large international chemical
`
`company and plastic resin manufacturer. Since February of 2019, I have served as
`
`an Advisor to the Colombian President on matters regarding science and
`
`technology, and the creation of a new Ministry of Science, Technology and
`
`Innovation.
`
`15.
`
`At the University of Wisconsin-Madison, I teach a variety of
`
`courses,
`
`including Manufacturing Processes,
`
`Introduction
`
`to Competitive
`
`Manufacturing, Introduction to Transport Phenomena in Polymer Processing,
`
`6
`
`MacNeil Exhibit 2041
`Yita v. MacNeil IP, IPR2020-01139
`Page 10
`
`

`

`Engineering Design with Polymers, Modeling and Simulation in Polymer
`
`Processing, Introduction to Additive Manufacturing and Introduction to Polymer
`
`Composites Processing.
`
`16.
`
`In addition to my teaching and research duties at the University of
`
`Wisconsin-Madison, twice a year I teach a Modeling and Simulation in Polymer
`
`Processing course at the University of Nuremberg-Erlangen in Germany. I have
`
`also taught the Materials Science of Polymers for Engineers and Polymer
`
`Processing courses at the EAFIT University and the National University in
`
`Colombia.
`
`17.
`
`Over the years, my research and teaching have led to the issuance
`
`of seven patents, as well as several honors, and awards. For example, in 2001 I was
`
`the recipient of the VDI-K (German Engineering Society – Plastics) Dr.-Richard-
`
`Escales-Prize, in 2006 I was named Honorary Professor of the University of
`
`Erlangen-Nuremburg in Germany, in 2011 I received an Honorary Professorship at
`
`the National University of Colombia, in 2016 I was named Educator of the Year by
`
`the Society of Plastics Engineers (SPE), and in 2017, the same organization named
`
`me Educator of the Year in the Field of Composites.
`
`18.
`
`I have also published over 300 papers in the field of polymer
`
`engineering and have authored 11 books in the area: Polymer Materials Science for
`
`Engineers (Hanser Publishers, 1st Edition 1996, 2nd Edition 2003, 3rd Edition 2012),
`
`7
`
`MacNeil Exhibit 2041
`Yita v. MacNeil IP, IPR2020-01139
`Page 11
`
`

`

`Polymer Processing Fundamentals (Hanser Publishers, 1998), Injection Molding
`
`Handbook (Hanser Publishers, 1st Edition 2001, 2nd Edition 2006), Compression
`
`Molding (Hanser Publishers, 2003), Polymer Processing – Modeling and
`
`Simulation (Hanser Publishers, 2006), Plastics Handbook (Hanser Publishers 2006,
`
`2019), Kunststoff-Taschenbuch (Hanser Publishers 2006, 2013), Plastics Testing
`
`and Characterization
`
`(Hanser Publishers 2007), Understanding Polymer
`
`Processing (Hanser Publishers, 1st Edition 2010, 2nd Edition 2017), Polymer
`
`Rheology
`
`(Hanser Publishers, 2015) and Discontinuous Fiber-Reinforced
`
`Composites- Fundamentals and Applications (Hanser Publishers, 2020). Some of
`
`my books have been translated into Chinese, Japanese, Spanish, Italian, and
`
`Russian. I am also the series editor for the Plastics Pocket Power Series of Hanser
`
`Publishers.
`
`19.
`
`My textbook Polymer Processing Fundamentals, published in
`
`1998, rewritten and published under the name Understanding Polymer Processing
`
`(2010 and 2017), has a chapter dedicated to secondary shaping operations, which
`
`includes thermoforming. This book and its later versions have been used in my
`
`teachings, in particular in a required undergraduate mechanical engineering course
`
`called Manufacturing Processes. This course dedicates 7 weeks to plastics
`
`processing and plastics products design, which includes a thermoforming unit and
`
`laboratory.
`
`8
`
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`Page 12
`
`

`

`20.
`
`As I stated above, I have attached my curriculum vitae, which
`
`contains a more detailed list of my experience and qualifications, as Appendix A to
`
`my Declaration.
`
`21.
`
`I am being compensated for my time working on this matter at my
`
`standard hourly rate of $650 per hour plus expenses. I do not have any personal or
`
`financial stake or interest in the outcome of the present proceedings. My
`
`compensation is not dependent on the outcome of these IPRs and in no way affects
`
`the substance of my statements in this Declaration.
`
`III. MATERIALS CONSIDERED
`22.
`I have considered information from various sources in forming my
`
`opinions. Besides drawing from my 38 years of experience in the plastics
`
`processing industry, I also have reviewed the documents and references cited
`
`herein, including those identified in the following table:
`
`Petitioner’s Exhibits – IPR2020-01139 and IPR2020-011422
`U.S. Patent No. 8,382,186 to MacNeil et al., issued February 26, 2013
`(“’186 Patent”)
`
`1001
`(-01139)
`
`2 Other than Exhibits 1001-1003 and 1028, the exhibits filed by Petitioner in
`
`IPR2020-01139 and IPR2020-01142 are identical. In the remainder of my analysis,
`
`I refer to the identical exhibits in both proceedings by exhibit number without
`
`specifying a proceeding.
`
`9
`
`MacNeil Exhibit 2041
`Yita v. MacNeil IP, IPR2020-01139
`Page 13
`
`

`

`U.S. Patent No. 8,833,834 to MacNeil et al., issued September 16, 2014
`(“’834 Patent”)
`
`File History of U.S. Patent No. 8,382,186 (“’186 Patent File History”)
`
`File History of U.S. Patent No. 8,833,834 (“’834 Patent File History”)
`
`Declaration of Paul E. Koch, Ph.D.
`
`1001
`(-01142)
`
`1002
`(-01139)
`
`1002
`(-01142)
`
`1003
`(-01139)
`
`Declaration of Paul E. Koch, Ph.D.
`
`1003
`(-01142)
`1004 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”)
`1006 U.S. Patent Application Pre–Grant Publication No. 2002/0045029 A1 to
`Yung, published April 18, 2002 (“Yung”)
`1007 Gruenwald, G., Thermoforming: A Plastics Processing Guide, CRC
`Press, 2nd Edition, 1998 (“Gruenwald”)
`Throne, J., Technology of Thermoforming, Hanser, 1996 (“Throne I”)
`
`1005
`
`1008
`
`Throne, J., Understanding Thermoforming, Hanser, 2nd Edition, 2008
`1009
`(“Throne II”)
`1010 U.S. Patent No. 2,057,873 to Atwood, issued October 20, 1936
`(“Atwood”)
`1011 U.S. Patent No. 2,657,948 to Sturtevant, issued November 3, 1953
`(“Sturtevant”)
`1012 U.S. Patent No. 6,793,872 to Buss, issued September 21, 2004 (“Buss”)
`1013 U.S. Patent No. 6,361,099 to McIntosh, issued March 26, 2002
`(“McIntosh”)
`
`10
`
`MacNeil Exhibit 2041
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`Page 14
`
`

`

`1021
`
`1014 U.S. Patent No. 4,568,581 to Peoples, issued February 4, 1986
`(“Peoples”)
`1015 U.S. Patent No. 5,298,319 to Donahue, issued March 29, 1994
`(“Donahue”)
`1016 DOW HDPE DGDA-5004 NT 7 Data Sheet, published October 10,
`2003
`1017 Black Armor Web Advertisement
`1018 Husky Liner Advertisement, August 24, 2000
`1019 U.S. Patent No. 4,420,180 to Dupont et al., issued December 13, 1983
`(“Dupont”)
`1020 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”)
`1022
`1023 U.S. Patent No. 3,390,912 to Stata, issued July 2, 1968 (“Stata”)
`1024 German Patent Application Publication No. 4000877 to Weitbrecht et
`al., published July 18, 1991, with attached certified English-language
`translation (“Weitbrecht”)
`1025 U.S. Patent No. 6,027,782 to Sherman, issued February 22, 2000
`Japanese Patent Application No. H11-268570 to Suzuki, published
`1026
`October 5, 1999, with attached certified English-language translation
`(“Suzuki”)
`1027 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”)
`
`1028
`(-01139)
`
`U.S. Patent No. 8,382,186 to MacNeil et al., issued February 26, 2013
`(“’186 Patent”)
`
`1028
`(-01142)
`
`Plastic Extrusion Tolerance Guide
`1029
`1030 Merriam-Webster's Collegiate Dictionary, Eleventh Edition, 2003
`
`11
`
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`
`

`

`1031 Oxford Compact English Dictionary, First Edition, 2000
`1032 Curriculum Vitae of Paul E. Koch, Ph.D. (“Koch CV”)
`1033 Declaration of Sylvia Hall-Ellis, Ph.D. (“Hall-Ellis Decl.”)
`1034 U.S. Patent No. 8,910,995 to MacNeil et al. (“’995 Patent”)
`1035 U.S. Patent No. 6,058,618 to Hemmelgarn et al. (“Hemmelgarn”)
`1036 Webster’s Third New International Dictionary, 1961
`Patent Owner’s Exhibits – IPR2020-01139 and IPR2020-011423
`2004
`Declaration of James L. Throne, Ph.D.
`(-01139)
`
`Declaration of James L. Throne, Ph.D.
`
`2004
`(-01142)
`
`2012 U.S. Patent No. 6,261,667 to Yang, issued July 17, 2001
`
`2013 U.S. Patent No. Des. 408,342 to Yang, issued April 20, 1999
`2022 Merriam Webster’s Online Dictionary, “Contour”
`https://www.merriam-webster.com/dictionary/contour (last visited
`October 14, 2020)
`2023 Chinese Patent Application No. 87212432 to Yang, filed July 29, 1998,
`with attached certified English-language translation
`2024 Declaration of Bruce D. Popp, Ph.D., March 3, 2021
`
`3 Other than Exhibit 2004, the exhibits filed by Patent Owner in IPR2020-01139
`
`and IPR2020-01142 are identical. In the remainder of my analysis, I refer to the
`
`identical exhibits in both proceedings by exhibit number without specifying a
`
`proceeding.
`
`12
`
`MacNeil Exhibit 2041
`Yita v. MacNeil IP, IPR2020-01139
`Page 16
`
`

`

`2025 Collins Le Robert Comprehensive Dictionary: French-English, English-
`French © 2017 Dictionnaires Le Robert/HarperCollins Publishers
`2026 Beryl T. Atkins et al., Collins-Robert French to English Dictionary,
`entry for rebord (2d ed. 1993)
`Larousse French to English Dictionary, entry for rebord (unabridged ed.
`2027
`2010)
`2028 Gustave Rudler and Norma C. Anderson, Collins French Gem
`Dictionary, French to English, entry for rebord (1964)
`2029 Richard Ernst, Dictionnaire des techniques et sciences appliquées,
`entries for bride, collarette and rebord (Paris 2002)
`Image from https://wholesalecoolies.com/product/blank-thick-hard-
`2030
`foam-old-school-can-koozie/
`2038 Richard Ernst, Dictionnaire des techniques et sciences appliquées, entry
`for relief (Paris 2002)
`2039
`Transcript of Deposition of Paul E. Koch, Ph.D. on March 2, 2021
`
`2040
`
`Transcript of Deposition of John E. Dawson on March 17, 2021
`
`2042 Declaration of Ryan Granger
`The New Shorter Oxford English Dictionary, entry for relief (Vol. 2,
`1993)
`2058 U.S. Patent No. 4,434,832 to Koch et al., issued March 6, 1984
`
`2049
`
`2059 U.S. Patent No. 3,968,198 to Honda et al., issued July 6, 1976
`
`2060 U.S. Patent No. 4,181,780 to Brenner et al., issued January 1, 1980
`
`2061 U.S. Patent No. 10,239,586 to Harbaugh, issued March 26, 2019
`
`2072
`
`Tim A. Osswald, Georg Menges, Materials Science of Polymers for
`Engineers ( 2nd ed. 2003)
`
`2076
`
`Tim A. Osswald et al., Injection Molding Handbook (2002)
`
`2077 Bruce A. Davis et al., Compression Molding (2003)
`
`2096
`
`2097
`
`Plate 3/5 of Rabbe 2547252, annotated
`
`Plate 4/5 of Rabbe 2547252, annotated
`
`13
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`Yita v. MacNeil IP, IPR2020-01139
`Page 17
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`

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`2099
`
`2100
`
`2101
`
`2102
`
`2103
`
`Scan image, Lada Niva DS foot well, from rear inboard, annotated.
`
`Scan image, Lada Niva DS foot well, from rear, annotated.
`
`Scan image, Lada Niva DS foot well, from rear outboard, annotated.
`
`Scan image, Lada Niva PS foot well, from rear inboard, annotated.
`
`Scan image, Lada Niva PS foot well, from rear, annotated.
`
`Scan image, Lada Niva PS foot well, from rear outboard, annotated.
`2104
`Additional Materials
`Paper
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`No. 3
`(-01139)
`
`Petition for Inter Partes Review of U.S. Patent No. 8,833,834
`
`Patent Owner’s Preliminary Response
`
`Patent Owner’s Preliminary Response
`
`Decision Granting Institution of Inter Partes Review 35 U.S.C. § 314
`
`Decision Granting Institution of Inter Partes Review 35 U.S.C. § 314
`
`Paper
`No. 3
`(-01142)
`
`Paper
`No. 11
`(-01139)
`
`Paper
`No. 11
`(-01142)
`
`Paper
`No. 17
`(-01139)
`
`Paper
`No. 17
`(-01142)
`
`14
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`Page 18
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`IV. LEGAL UNDERSTANDING
`23.
`I have relied on instructions from counsel for Patent Owner as to
`
`the applicable legal standards to use in arriving at my opinions in this Declaration.
`
`My opinions are informed by my understanding of the relevant law.
`
`24.
`
` I understand that a patentability analysis is conducted on a claim-
`
`by-claim basis and that there are several possible reasons that a patent claim may
`
`be found to be unpatentable. I understand that earlier publications and patents may
`
`act to render a patent claim unpatentable for one of two reasons: (1) anticipation
`
`and (2) obviousness.
`
`A. My Understanding of Claim Construction
`25.
`I have been informed by counsel that a purpose of claim
`
`construction is to determine what a POSITA would have understood the claim
`
`terms to mean. I understand that during an IPR proceeding, claims are to be
`
`construed in light of the specification as would be read by a POSITA at the time
`
`the application was filed. I understand that claim terms are given their ordinary and
`
`customary meaning as would be understood by a POSITA in the context of the
`
`entire disclosure. A claim term, however, will not receive its ordinary meaning if
`
`the patentee acted as his own lexicographer and clearly set forth a definition of the
`
`claim term in the specification. In this case, the claim term will receive the
`
`definition set forth in the patent.
`
`15
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`26.
`
`I understand that the prosecution history can inform the meaning of
`
`the claim language by demonstrating how the inventors understood the invention
`
`and whether the inventors limited the invention in the course of prosecution,
`
`making the claim scope narrower than it otherwise would be. Extrinsic evidence
`
`may also be consulted in construing the claim terms, such as dictionary definitions
`
`and expert testimony.
`
`B. My Understanding of Anticipation
`27.
`I understand that a single piece of prior art anticipates a claim if
`
`that prior art discloses each and every claim element as arranged in the claim. I
`
`further understand that, where a claim element is not explicitly disclosed in a prior
`
`art reference, the reference may only anticipate a claim if the missing claim
`
`element is necessarily present in the apparatus or is a natural result of the method
`
`disclosed, i.e., the missing claim element is “inherent.” I understand that inherency
`
`may not be established by probabilities or possibilities and that the mere fact that a
`
`certain thing may result from a given set of circumstances is not sufficient.
`
`C.
`28.
`
`Obviousness
`I understand that a patent claim is invalid if the claimed invention
`
`would have been obvious to a POSITA at the time the claimed invention was
`
`made. This means that even if all the of the requirements of the claim cannot be
`
`found in a single prior art reference that would anticipate the claim, the claim can
`
`16
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`Page 20
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`

`

`still be invalid. I understand that two or more pieces of prior art that each disclose
`
`fewer than all elements of a patent claim may nevertheless be combined to render a
`
`patent claim obvious if the combination of the prior art collectively discloses all
`
`elements of the claim.
`
`29.
`
`I understand that the obviousness analysis must focus on the
`
`knowledge available to one of ordinary skill in the art at the time the claimed
`
`invention was made in order to avoid impermissible hindsight. I have also been
`
`informed that the framework for determining obviousness involves considering the
`
`following factors: (i) the scope and content of the prior art; (ii) the differences
`
`between the prior art and the claimed subject matter; (iii) the level of ordinary skill
`
`in the pertinent art; and (iv) any objective evidence of non-obviousness.
`
`30.
`
`I understand that a POSITA is assumed to have knowledge of all
`
`prior art references. I also understand that when considering the obviousness of a
`
`patent claim, one should consider whether a teaching, suggestion, or motivation to
`
`combine the references exists so as to avoid impermissibly applying hindsight
`
`when considering the prior art.
`
`31.
`
`I understand that to prove that prior art or a combination of prior
`
`art renders a patent claim obvious, it is necessary to: (1) identify the particular
`
`references that, singly or in combination, render the patent obvious; (2) specifically
`
`identify which elements of the patent claims appear in each of the asserted
`
`17
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`references; and (3) explain how the prior art references could have been combined
`
`in order to create the invention claimed.
`
`32.
`
`I understand that for prior art references to be combined for
`
`purposes of an obviousness analysis, there must be some motivation for a POSITA
`
`to combine the references and a reasonable expectation of success in doing so. I
`
`understand that there must be some reason why a person of ordinary skill in the art
`
`would have thought to combine particular available elements of knowledge, as
`
`evidenced by the prior art, to reach the claimed invention. I further understand that
`
`a combination is improper when one of ordinary skill in the art, upon reading a
`
`reference, would be discouraged from following the path set out in the reference. I
`
`understand this standard may be met when a reference criticizes, discredits, or
`
`otherwise discourages modifying the reference to arrive at the claimed invention.
`
`33.
`
`I understand that obviousness requires a suggestion of all
`
`limitations in a claim. I further understand that a party asserting obviousness must
`
`prove that all claimed limitations are disclosed or suggested in the prior art.
`
`34.
`
`I understand that inherency may supply a missing claim limitation
`
`in an obviousness analysis. I further understand that in an obviousness analysis,
`
`inherency may not be established by probabilities or possibilities. I understand that
`
`the mere fact that a certain thing may result from a given set of circumstances is
`
`not sufficient. I understand that a party must meet a high standard in order to rely
`
`18
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`

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`on inherency to establish the existence of a claim limitation in the prior art in an
`
`obviousness analysis—the limitation at issue necessarily must be present, or the
`
`natural result of the combination of elements explicitly disclosed by the prior art.
`
`35.
`
`I understand that objective evidence of non-obviousness (also
`
`referred to as “secondary considerations” of non-obviousness) should be
`
`considered when evaluating whether a claimed invention would have been obvious
`
`to one of ordinary skill at the time of invention. These secondary considerations
`
`may include, for example: (i) a long-felt but unmet need in the prior art that was
`
`satisfied by the claimed invention; (ii) commercial success of processes covered by
`
`the patent; (iii) unexpected results achieved by the invention; (iv) praise of the
`
`invention by others skilled in the art;