UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`
`__________________
`
`DECLARATION OF RYAN GRANGER
`
`1
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 1
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`
`__________________
`
`DECLARATION OF RYAN GRANGER
`
`1
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 1
`
`
`
`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 3
`I.
`BACKGROUND AND QUALIFICATIONS ................................................ 6
`II.
`III. MATERIALS CONSIDERED ....................................................................... 7
`IV. LEGAL UNDERSTANDING ........................................................................ 7
`V.
`LEVEL OF ORDINARY SKILL IN THE ART .......................................... 11
`VI. WEATHERTECH PRODUCTS EMBODY THE CLAIMED
`INVENTIONS OF THE ’186 AND ’834 PATENTS .................................. 14
`VII. WEATHERTECH FLOOR TRAYS HAVE HAD EXTRAORDINARY
`COMMERCIAL SUCCESS ......................................................................... 31
`VIII. THE RABBE FLOOR TRAYS DO NOT “PERFECTLY CONFORM” TO
`THE “LADA NIVA 4 X 4” .......................................................................... 38
`
`2
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 2
`
`
`
`I, Ryan Granger, declare as follows:
`I.
`INTRODUCTION
`
`1.
`
`I have been asked to provide my testimony on behalf of patent owner
`
`MacNeil IP LLC (“MacNeil” or “Patent Owner”) in connection with inter partes
`
`review (“IPR”) proceedings in 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
`
`3
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 3
`
`
`
`(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
`
`4
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 4
`
`
`
`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 am familiar with the technology at issue in the ’186 and ’834
`
`Patents. I have been asked to provide my technical review, analysis, insights, and
`
`opinions regarding the ’186 Patent, the ’834 Patent, and certain of the prior art
`
`references that form the basis for the grounds of unpatentability set forth in the
`
`Petitions, as well as opinions related to how WeatherTech’s products practice
`
`certain claims of the ’186 and ’834 Patents and the commercial success of
`
`WeatherTech’s patented products.
`
`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.
`
`analysis, I refer to each reference by exhibit number without specifying a
`
`proceeding.
`
`5
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 5
`
`
`
`II.
`
`BACKGROUND AND QUALIFICATIONS
`
`8.
`
`I received a Bachelor of Fine Arts in Industrial Design from Southern
`
`Illinois University in 2005.
`
`9.
`
`I have spent my entire 15 year career in the product development
`
`industry, with 11 years in the design of automotive accessories.
`
`10.
`
`Prior to working at WeatherTech, I designed furniture for customers
`
`such as Macy’s, Restoration Hardware and Vera Wang.
`
`11.
`
`I joined WeatherTech in 2010 as a Product Development Specialist. I
`
`worked on product categories such as side window deflectors, floor trays and cargo
`
`liners. I have worked on floor tray development since I joined the company.
`
`Currently I am Vice President of Product Development.
`
`12.
`
`In this position, I oversee the development and design of many
`
`product categories that WeatherTech sells, one of which is the WEATHERTECH
`
`FLOORLINER product line.
`
`6
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 6
`
`
`
`13.
`
`I have extensive knowledge of the design and manufacturing
`
`techniques WeatherTech uses in the production of its WeatherTech FloorLiners, a
`
`highly successful product line of custom vehicle floor trays. In particular, I am
`
`very familiar with the digital acquisition, computer assisted design and
`
`thermoforming manufacturing process steps used by WeatherTech in making its
`
`FloorLiners.
`
`III. MATERIALS CONSIDERED
`
`14.
`
`I have considered information from various sources in forming my
`
`opinions. Besides drawing from my 11 years of experience in the design of
`
`automotive accessories, I also have reviewed the documents and references cited
`
`herein.
`
`IV. LEGAL UNDERSTANDING
`
`15.
`
`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.
`
`16.
`
`I have been asked to provide opinions on whether a certain prior art
`
`reference would have disclosed certain claim limitations in the ’186 and ’834
`
`Patents to a person of ordinary skill in the art as of 2004, which I understand to be
`
`the priority date of the ’186 Patent claims and of the ’834 Patent claims. It is my
`
`7
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 7
`
`
`
`understanding that there are two ways that prior art references can render a patent
`
`claim unpatentable: anticipation and obviousness, based on 35 U.S.C. §§ 102 and
`
`103, respectively.
`
`17. Regarding anticipation, I understand that the subject matter of a patent
`
`claim is anticipated only if a single item of prior art teaches each and every
`
`element recited in the claim. The prior art also needs to disclose the elements
`
`arranged the same way that they are arranged in the claim — merely disclosing the
`
`elements is not enough. Moreover, the disclosure of the prior art must be
`
`substantial enough that it would have enabled a person of ordinary skill in the art to
`
`make and use the invention recited in the claim without undue experimentation. I
`
`understand that, in some cases, a prior art reference can be considered to disclose
`
`an element of the claim even if the reference does not expressly teach it. But for
`
`so-called “inherent” disclosure, I understand that a person of ordinary skill in the
`
`art would have had to recognize from what is expressly disclosed in the reference
`
`that the missing element was necessarily present despite the reference’s failing to
`
`expressly disclose it. 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 enough.
`
`18. Regarding obviousness, I understand that a patent claim that is not
`
`anticipated might still be unpatentable if the subject matter of the claim would have
`
`8
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 8
`
`
`
`been obvious to a person of ordinary skill in the art in light of the prior art at the
`
`time of the invention. The claimed subject matter as a whole must be considered
`
`when determining obviousness. Additionally, I understand that an obviousness
`
`analysis takes into account the scope and content of the prior art, the differences
`
`between the claimed subject matter and the prior art, the level of ordinary skill in
`
`the art at the time of the invention, and any objective evidence of non-obviousness.
`
`I understand that the proponent of an obviousness challenge must provide clear
`
`reasoning showing why the claimed subject matter would have been obvious to a
`
`person of ordinary skill in the art at the time of the invention.
`
`19.
`
`I understand that a person of ordinary skill in the art is assumed to
`
`have knowledge of all prior art references. I understand that multiple prior art
`
`references or teachings can be combined to show that a patent claim would have
`
`been obvious. When taking this approach, I understand that the proponent of an
`
`obviousness challenge must show that a person of ordinary skill in the art would
`
`have had reason or motivation to combine the references in the way the elements
`
`are recited in the claim. This reason or motivation can come from different
`
`sources—like the prior art—but it cannot come from the challenged patent’s own
`
`disclosure. That is, the challenger of a patent claim cannot use the inventor’s own
`
`work against the inventor to argue that the invention would have been obvious. I
`
`further understand that a combination is improper when one of ordinary skill in the
`
`9
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 9
`
`
`
`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.
`
`20.
`
`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.
`
`21.
`
`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
`
`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.
`
`22.
`
`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
`
`10
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 10
`
`
`
`satisfied by the claimed invention; (ii) commercial success of products covered by
`
`the patent; (iii) unexpected results achieved by the invention; (iv) praise of the
`
`invention by others skilled in the art; (v) the taking of licenses under the patent by
`
`others; (vi) whether others had tried and failed to make the invention; (vii) whether
`
`persons of ordinary skill in the art expressed surprise or disbelief regarding the
`
`invention; (viii) whether the inventor proceeded contrary to accepted wisdom; and
`
`(ix) deliberate copying of the invention. I understand that there must be a nexus
`
`between any such secondary consideration of non-obviousness and the claimed
`
`invention.
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`23.
`
`I have been informed by counsel for Patent Owner that the claims of a
`
`patent are judged from the perspective of a hypothetical construct involving a
`
`person of ordinary skill in the art at the time the claimed invention of the patent
`
`was made. I understand that the “art” is the field of technology to which the patent
`
`is related.
`
`24.
`
`I understand that Patent Owner contends that a POSITA in the
`
`relevant time period for the ’186 Patent would have had an associate’s or
`
`bachelor’s degree in mechanical engineering or plastics processing, or an
`
`equivalent degree, or, comparable formal training or practical industry experience
`
`in plastics engineering, design, and manufacturing. This person would also have
`
`11
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 11
`
`
`
`had at least three years of experience in plastics engineering, design, and
`
`manufacturing. In addition, this person would be particularly familiar with and
`
`have experience with plastic product design and manufacturing using
`
`thermoforming techniques. See Paper 11 (IPR2020-01139) (“POPR-01139”) at
`
`15-16. I understand that for purposes of its Institution Decision, the Patent Trial
`
`and Appeal Board (the “Board”) adopted Patent Owner’s proposed level of skill in
`
`the art. Decision-01139 at 9.
`
`25.
`
`I understand that this is similar to the level of skill in the art proposed
`
`by Petitioner’s declarant, Dr. Koch, except that his proposed definition does not
`
`specifically require thermoforming industry experience. Specifically, Dr. Koch
`
`proposes that a person of ordinary skill in the art for the ’186 Patent “would
`
`typically have had a bachelor’s degree in engineering: plastics, mechanical, or a
`
`closely related field, or equivalent formal training, education, or practical
`
`experience in a field relating to plastic product design, material science, or
`
`manufacturing. This person would also have a minimum of three to five years of
`
`experience in plastics engineering, manufacturing, plastic product design, or a
`
`related industry. This description is an approximation and a higher level of
`
`training or practical experience might make up for less education, and vice versa.”
`
`EX1003 (IPR2020-01139), ¶27.
`
`12
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 12
`
`
`
`26.
`
`I understand that Patent Owner contends that a POSITA in the
`
`relevant time period for the ’834 Patent would have had an associate’s or
`
`bachelor’s degree in mechanical engineering or plastics processing, or an
`
`equivalent degree, or, comparable formal training or practical industry experience
`
`in plastics engineering, design, and manufacturing. This person would also have
`
`had at least three years of experience in plastics engineering, design, and
`
`manufacturing. In addition, this person would be particularly familiar with and
`
`have experience with plastic product design and manufacturing using
`
`thermoforming techniques. See Paper 11 (IPR2020-01142) (“POPR-01142”) at 13-
`
`14.
`
`27.
`
`I understand that for purposes of its Institution Decision in IPR2020-
`
`01142, the Board adopted Petitioner’s proposed level of skill in the art. Decision-
`
`01142 at 9-10. I understand that Petitioner proposes that a POSITA in the relevant
`
`time period for the ’834 Patent “would have had a bachelor’s degree in
`
`engineering: plastics, mechanical, or a closely related field, or equivalent formal
`
`training, education, or practical experience in a field relating to plastic product
`
`design, material science, or manufacturing. This person would also have a
`
`minimum of three to five years of experience in plastics engineering,
`
`manufacturing, plastic product design, or a related industry.” Id. at 9 (citing
`
`Petition-01142 at 20; EX1003 (IPR2020-01142), ¶¶26-28).
`
`13
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 13
`
`
`
`28. Based on my education and experience in the field set forth above, I
`
`believe I meet each of the definitions of one of ordinary skill in the art discussed
`
`above (including the levels of skill articulated by Patent Owner and Petitioner for
`
`both the ’186 and ’834 Patents), and I believe that I am qualified to provide
`
`opinions about how one of ordinary skill in the art would have interpreted and
`
`understood the ’186 Patent, the ’834 Patent, and the alleged prior art cited in the
`
`Petitions. Specifically, I meet this definition because I have a Bachelor’s degree in
`
`Industrial Design, 15 years of experience in the product development industry, and
`
`11 years of experience in plastics engineering, design, and manufacturing
`
`specifically in the context of thermoformed vehicle floor trays.
`
`29.
`
`In rendering the opinions set forth in this Declaration, I was asked to
`
`consider the ’186 Patent and ’834 Patent claims and prior art through the eyes of a
`
`person of ordinary skill in the art. I have applied the perspective of a person of
`
`ordinary skill in the art in rendering my opinions below.
`
`VI. WEATHERTECH PRODUCTS EMBODY THE CLAIMED
`INVENTIONS OF THE ’186 AND ’834 PATENTS
` It is my understanding that Petitioner Yita LLC is challenging the
`
`30.
`
`validity of the ’186 Patent and the ’834 Patent. The ’186 Patent is directed to a
`
`vehicle floor tray, as are Claims 13 – 15 of the ’834 Patent. Claims 1 – 12 of the
`
`’834 Patent are directed to systems including a vehicle floor tray and a vehicle foot
`
`14
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 14
`
`
`
`well for which the floor tray is custom-designed, and express various criteria for
`
`the closeness of fit between the floor tray and the vehicle foot well.
`
`31.
`
` The claims of the ’186 Patent, and Claims 1 – 12 of the ’834 Patent,
`
`require at least close conformance of the side panels of the claimed vehicle floor
`
`tray to respective side walls of the vehicle foot well for which the vehicle floor tray
`
`is custom-designed.
`
`32.
`
`The claims of the ’186 Patent require panel outer surfaces that
`
`“closely conform” to the surfaces of the respective foot well walls. Claims 1, 5
`
`and 9 of the ’834 Patent require certain, specific conformance requirements as
`
`follows:
`
`a. 90% of that top 1/3 of the outer surface that is closest to the top
`
`margin of the side panel is within 1/8 inch of the side wall, or
`
`b. 90% of that top ½ of the outer surface that is closest to the top margin
`
`of the side panel is within 1/8 inch of the side wall, or
`
`c. 50% of the outer surface of the side panel is within 1/8 inch of the
`
`vehicle foot well side wall. ’186 Patent Col. 9 line 62 – Col 10 line 3;
`
`’834 Patent, Col. 9 line 58 – Col. 10 line 3; ’834 Patent, Col. 10 line 4
`
`– Col. 10 line 15.
`
`33.
`
`The claims of the ’186 Patent, and Claims 13 – 15 of the ’834 Patent,
`
`also require that the floor tray have a reservoir formed therein, and a plurality of
`
`15
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 15
`
`
`
`hollow baffles formed in the reservoir. During the design of a custom floor tray,
`
`the reservoir and baffles start out as part of a design file with which each vehicle
`
`foot well model is modified. ’186 Patent, Col. 10, lines 46 – 48.
`
`34.
`
`The lateral shape or boundary of the reservoir depends on the shape
`
`and extent of the vehicle foot well floor.
`
`35.
`
` As a portion of WeatherTech’s design/manufacturing process, the
`
`spacing and shape of the “baffles” intentionally are made as uniform as possible,
`
`from one custom floor tray to the next, so as to present a uniform trade dress to the
`
`public.
`
`36.
`
`The number and extent of the “baffles” depends on how extensive the
`
`reservoir size is. This varies from one vehicle model to the next.
`
`37.
`
`Submitted herewith as Exhibits 2090 through 2095 are claim charts
`
`applying Claim 1 of the ’186 Patent to each of six representative floor trays made
`
`by WeatherTech:
`
`a. EX2090, Tool No. 02554, in which is thermoformed the passenger’s
`
`side floor tray for the 2014 – 2018 Chevrolet Silverado / Sierra
`
`1500/2500HD/3500HD Double Cab;
`
`b. EX2091, Tool No. 00814, in which is thermoformed the passenger’s
`
`side floor tray for the 2013 – 2018 Dodge RAM 1500 Quad Cab;
`
`16
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 16
`
`
`
`c. EX2092, Tool No. 01846, in which is thermoformed the passenger’s
`
`side floor tray for the 2014 – 2018 Jeep Wrangler JK 4 Dr. Unlimited;
`
`d. EX2093, Tool No. 00944, in which is thermoformed the passenger’s
`
`side floor tray for the 2013 – 2018 Toyota 4Runner / 2014 – 2017
`
`Lexus GX460;
`
`e. EX2094, Tool No. 00804, in which is thermoformed the passenger’s
`
`side floor tray for the 2015 – 2018 Ford Escape; and
`
`f. EX2095, Tool No. 00840, in which is thermoformed the passenger’s
`
`side floor tray for the 2013 – 2017 Honda Accord.
`
`38.
`
`In my opinion, at least the six representative floor trays made by
`
`WeatherTech listed above embody the claims of the ’186 Patent, for the reasons
`
`detailed in the attached claim charts.
`
`39. As of April 9, 2021, there are 2,123 different molds or tools which
`
`WeatherTech has manufactured and used to thermoform front-row floor trays for
`
`particular makes, models and years of vehicles from 2004 until now.
`
`40.
`
`Each kind of WeatherTech FloorLiner is assigned a unique
`
`shopkeeping unit or SKU. A separate SKU or part number is assigned for black,
`
`tan, grey and cocoa-colored floor tray sets, even if they are thermoformed using the
`
`same mold. Thus, a single tool may be used to thermoform, in whole or in part,
`
`several SKUs of WeatherTech FloorLiners.
`
`17
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 17
`
`
`
`41. As of April 9, 2021, there are 9,417 SKUs or part numbers for front-
`
`row WeatherTech FloorLiners. There are a further 6,620 kits that include a front-
`
`row FloorLiner, but also include mats or trays for the second, or second and third,
`
`rows of the vehicle.
`
`42.
`
`Every SKU and every kit in the WeatherTech FloorLiner product line
`
`is covered by Claim 1 of the ’186 Patent and Claim 13 of the ’834 Patent. In my
`
`opinion, at least 95% of these part numbers and kits, when considered with the foot
`
`wells that they are designed to fit, will be covered by at least one of Claims 1, 5
`
`and 9 of the ’834 Patent, which set up alternative “closeness of fit” criteria.
`
`43. Claims 1-12 of the ’834 Patent require that the recited floor tray fit
`
`within a predetermined tolerance of the foot well surfaces of the vehicle for which
`
`the floor tray was custom-manufactured. This is recited, in three different ways, in
`
`’834 Claims 1, 5 and 9, as a 1/8 inch tolerance between specified areas on the outer
`
`surface of the floor tray side panels and the corresponding sidewalls of the vehicle
`
`foot well.
`
`44.
`
`In my opinion, at least 95% of the SKUs or models of the
`
`WeatherTech FloorLiner floor tray product line molded between 2004 and now
`
`meet at least one of these tolerance requirements.
`
`45.
`
`This percentage would be much closer to 100% if certain vehicle
`
`manufacturers did not build vehicles with significant variations in the shape or
`
`18
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 18
`
`
`
`dimensions of their vehicle foot wells. For such vehicles, we measure multiple
`
`vehicles of the same make, model and year, and design a floor tray that closely fits
`
`to an “average” foot well for such vehicles, or which is designed to acceptably fit
`
`to as many of the variations we encounter as possible.
`
`46.
`
`Submitted herewith as Exhibits 2084 – 2089 are claim charts applying
`
`Claim 1 of the ’834 Patent to each of six representative floor trays and the vehicle
`
`foot wells that they are designed to fit:
`
`a. EX2084, Tool No. 02554, in which is thermoformed the passenger’s
`
`side floor tray for the 2014 – 2018 Chevrolet Silverado / Sierra
`
`1500/2500HD/3500HD Double Cab;
`
`b. EX2085, Tool No. 00814, in which is thermoformed the passenger’s
`
`side floor tray for the 2013 – 2018 Dodge RAM 1500 Quad Cab;
`
`c. EX2086, Tool No. 01846, in which is thermoformed the passenger’s
`
`side floor tray for the 2014 – 2018 Jeep Wrangler JK 4 Door
`
`Unlimited;
`
`d. EX2087, Tool No. 00944, in which is thermoformed the passenger’s
`
`side floor tray for the 2013 – 2018 Toyota 4Runner / 2014 – 2017
`
`Lexus GX460;
`
`e. EX2088, Tool No. 00804, in which is thermoformed the passenger’s
`
`side floor tray for the 2015 – 2018 Ford Escape; and
`
`19
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 19
`
`
`
`f. EX2089, Tool No. 00840, in which is thermoformed the passenger’s
`
`side floor tray for the 2013 – 2017 Honda Accord.
`
`47.
`
`In my opinion, at least the six representative floor trays made by
`
`WeatherTech listed above embody the claims of the ’834 Patent, or form material
`
`parts thereof, for the reasons detailed in the attached claim charts.
`
`48.
`
`It should be understood that separate tools are almost always used to
`
`separately thermoform driver’s side floor trays and passenger’s side floor trays.
`
`For any particular vehicle, the driver’s side foot well almost never has the same
`
`shape as the passenger’s side foot well, and thus floor trays are custom-molded for
`
`each. The exception is that for certain trucks, a single floor tray will be
`
`thermoformed that includes a driver’s side component, a passenger’s side
`
`component, and an “over the hump” transmission tunnel component that connects
`
`and is integrally molded with the driver’s and passenger’s components, but even
`
`here the driver’s side foot well has a different shape than the passenger’s side foot
`
`well.
`
`49. Below I briefly describe the process by which all WeatherTech
`
`FloorLiners are made. This process is itself covered by several WeatherTech
`
`patents (i.e., patents owned by WeatherTech’s commonly controlled affiliate,
`
`MacNeil IP LLC): US Patent Nos. 7,444,478, 8,899,655, 8,910,995 and 9,138,917.
`
`I have reviewed the claims of these patents and to my understanding, WeatherTech
`
`20
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 20
`
`
`
`practices the processes claimed therein. These patents issued on application
`
`specifications that were substantially similar to the specifications of the ’834 and
`
`’186 Patents.
`
`50.
`
`First, WeatherTech makes digital measurements of the vehicle foot
`
`well. In 2004, this was done by using a mechanical coordinate measuring machine
`
`(CMM) known as a Faro Arm. ’834 Patent Col. 16 line 67 – Col. 17 line 7.
`
`Today, WeatherTech digitally acquires the concave shape of the vehicle foot well
`
`by the use of a handheld laser scanner.
`
`51.
`
`The CMM digital capture resulted in the acquisition of a large number
`
`of points in a 3D virtual space. These points were stored in a data file. ’834 Patent
`
`Col. 17 lines 6 – 22.
`
`52.
`
`The data file was then imported into a computer assisted design
`
`(CAD) program. ’834 Patent Col. 17 line 23. The CAD program included a 3D
`
`modeling program called Polyworks, sold by Innovmetric Software Inc. of
`
`Canada. We continue to use a version of this software today. Using this software
`
`and this data file, the designer creates a three-dimensional model of the vehicle
`
`foot well. ’834 Patent Col. 17 lines 23 – 55.
`
`53.
`
`The designer determined the upper boundary of the floor tray. This
`
`was established by using an upper sketch plane. ’834 Patent Col. 17 lines 56 –
`
`Col. 18 line 4.
`
`21
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 21
`
`
`
`54.
`
`The designer established a lower sketch plane and then drew side
`
`panels between the lower and upper sketch planes. ’834 Patent Col. 17 line 59 –
`
`Col. 18 line 11.
`
`55.
`
`The designer next modified the abrupt corners between the sidewalls
`
`of the model and the floor by making them curved transitions. ’834 Patent Col. 18
`
`lines 30 – 38. Most of these curved transitions emulated the curved transitions in
`
`the vehicle foot well. For certain models and at certain places, the radii of the
`
`curved transitions were (and are) increased, as where a deep and relatively vertical
`
`surface meets the floor. This is done to make sure that the subsequent vacuum
`
`molding process does not create a thin place in the molded part at the deep corners.
`
`’834 Patent Col. 18 lines 54 – 64.
`
`56.
`
`In more recent practice, WeatherTech has used a handheld three-
`
`dimensional laser scanner from Creaform. This scanner outputs actual surface data
`
`rather than a set of points on that surface. These digital surface data are imported
`
`directly into Polyworks as a model of the vehicle foot well shape. The model is
`
`subsequently modified according to the steps described below.
`
`57. Next, the designer modifies the floor of the foot well model by
`
`importing into it a standardized reservoir/ baffle design. ’834 Patent Col. 19 lines
`
`6 – 9. The extent of the reservoir, and of the baffles inside the reservoir, vary from
`
`one vehicle model to the next. The shape and spacing of the baffles inside of the
`
`22
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 22
`
`
`
`reservoir is preserved as much as possible, so that each WeatherTech FloorLiner
`
`will have the same trade dress when presented to the public.
`
`58.
`
`The designer then “shells” the 3D model, which up to that point is a
`
`solid. This creates an upper surface of the model by mathematically translating the
`
`lower surface upward/inward by .120 in. - .125 in. ’834 Patent Col 19 lines 28 –
`
`31.
`
`59.
`
`The “shelled” 3D model is converted to a .stl file, which can act as a
`
`stereolithographic apparatus (SLA) instruction file. Using the SLA instruction file,
`
`an SLA machine is instructed to create, by selectively curing a liquid
`
`photopolymer with a laser, a solid plastic fitment part called an “SLA” by
`
`WeatherTech personnel. ’834 Patent Col. 19 lines 36 – 41. This process is similar
`
`to what is now called 3D printing.
`
`60.
`
`The SLA(s) are test-fitted into the foot wells of the vehicle. The
`
`designer notes any necessary changes, for example to smooth out carpeting
`
`wrinkles or to achieve closer tolerance. The 3D model is modified accordingly.
`
`’834 Patent Col. 19 lines 41 – 44.
`
`61.
`
`I have read the Declaration of Paul E. Koch, Ph.D., submitted in
`
`support of the Petition for Inter Partes Review, EX1003. Dr. Koch makes the
`
`following statement: “Using a device called a coordinate measure machine
`
`(CMM), three-dimensional data was gathered from the vehicle foot well using a
`23
`
`MacNeil Exhibit 2042
`Yita v. MacNeil IP, IPR2020-01139
`Page 23
`
`
`
`CMM machine. … A POSA would have downloaded these coordinates to a 3D
`
`milling machine. There, through the use of Direct Machine Control (DMC), the
`
`3D data gathered from a foot well was used to create either a male or a female
`
`thermoform mold, for example, from an aluminum solid block.” EX1003, p. 127.
`
`62. As of 2004, and even now, the simplistic procedure described by Dr.
`
`Koch could not yield a mold ready to thermoform a floor tray. Dr. Koch omits
`
`many important steps that we had to take in 2004 to turn points of data gathered by
`
`a CMM machine into a machined mold:
`
`a. In the CAD program, the designer established top and bottom sketch
`
`planes between which the tray model was to be created. ’834 Patent
`
`Col 17 lines 59 – 61, Fig. 7 step 703.
`
`b. For each of the foot well sidewalls, the designer had to connect
`
`respective sets of the data points together
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
