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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`Case IPR2020-01139
`Patent No. 8,382,186
`
`Case IPR2020-01142
`Patent No. 8,833,834
`____________
`
`
`
`DECLARATION OF RAY SHERMAN IN SUPPORT OF PATENT
`OWNER’S RESPONSE
`
`MacNeil Exhibit 2043
`Yita v. MacNeil IP, IPR2020-01139
`Page 1
`
`

`

`
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`BACKGROUND AND QUALIFICATIONS ................................................. 4
`II.
`III. MATERIALS CONSIDERED ...................................................................... 11
`IV. LEGAL UNDERSTANDING ....................................................................... 18
`A. My Understanding of Claim Construction .......................................... 19
`B. My Understanding of Anticipation ..................................................... 20
`C.
`Obviousness ......................................................................................... 20
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 23
`V.
`VI. BRIEF SUMMARY OF THE ’186 AND ’834 PATENTS .......................... 26
`A.
`Summary of the ’186 Patent ................................................................ 26
`B.
`Challenged Claims of the ’186 Patent ................................................. 36
`C.
`Summary of the ’834 Patent ................................................................ 39
`D.
`Challenged Claims of the ’834 Patent ................................................. 48
`E.
`Patented Material Disclosed in the ’186 and ’834 Patents.................. 56
`VII. ALLEGED PRIOR ART REFERENCES ..................................................... 57
`A.
`Rabbe ................................................................................................... 58
`B.
`Yung ..................................................................................................... 60
`C.
`Gruenwald ........................................................................................... 64
`VIII. ALLEGED GROUNDS OF UNPATENTABILITY .................................... 64
`A.
`Background on Floor Mats/Trays Prior to the MacNeil
`Invention .............................................................................................. 64
`
`MacNeil Exhibit 2043
`Yita v. MacNeil IP, IPR2020-01139
`Page 2
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`
`B.
`
`1.
`
`C.
`
`The Combination of References Would Not Have Disclosed,
`Taught or Suggested to a POSITA, as of October 29, 2004, the
`Conformance Limitations of the Claims ............................................. 71
`Rabbe Does Not Disclose, Teach, or Suggest the Conformance
`Limitations ........................................................................................... 71
`Rabbe’s Floor Trays Would Not Have Been “Integrally
`Formed” From a Single Sheet of Material .......................................... 83
`D. Yung’s Floor Mat Would Have Been Compression Molded .............. 86
`E.
`A Person Skilled in the Art Would Have Had No Reasonable
`Expectation of Success to Achieve the Conformance
`Limitations ........................................................................................... 97
`Rabbe’s Floor Tray Did Not Closely Conform, and None of
`Petitioner’s References Teach A Method for Achieving Close
`Conformance. ...................................................................................... 99
`The Prior Art Does Not Teach MacNeil’s Patented Process to
`Create a Mold That Achieves Close Conformance and No
`Existing Process Could Achieve a Floor Tray Achieving the
`Claimed Degree of Conformance ...................................................... 101
`There is Objective Evidence of Non-Obviousness ........................... 112
`The Invention Solved a Long-Felt Need Where Others Had
`Failed ................................................................................................. 113
`The Invention Has Been Commercially Successful .......................... 116
`2.
`3. WeatherTech® Floor Trays Have Received Industry Praise for
`the Claimed Features ......................................................................... 118
`IX. CONCLUSION ............................................................................................ 120
`
`
`
`F.
`1.
`
`1.
`
`2.
`
`ii
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`MacNeil Exhibit 2043
`Yita v. MacNeil IP, IPR2020-01139
`Page 3
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`

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`
`
`I.
`
`I, Ray Sherman, declare as follows:
`
`INTRODUCTION
`I have been retained as a technical expert on behalf of patent
`1.
`
`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. IPR2020-01139, EX1001. 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. IPR2020-01142, EX1001.
`
`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 IPR2020-01139, Petition, 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 (IPR2020-01139, EX1005) in view of Yung
`
`(IPR2020-01139, EX1006) and Gruenwald (IPR2020-01139,
`
`MacNeil Exhibit 2043
`Yita v. MacNeil IP, IPR2020-01139
`Page 4
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`
`
`EX1007). 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 Petition, 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 (IPR2020-01142, EX1005) in view
`
`of Yung (IPR2020-01142, EX1006) and Gruenwald (IPR2020-01142,
`
`EX1007). See id.
`
`• Ground 2: Claims 2, 3, 6, 7, 10, and 11 under 35 U.S.C. § 103 as
`
`allegedly being obvious over Rabbe (IPR2020-01142, EX1005) in view
`
`of Yung (IPR2020-01142, EX1006), Gruenwald (IPR2020-01142,
`
`EX1005), and Sturtevant (IPR2020-01142, EX1011)). 1 See id.
`
`
`1 Rabbe, Yung, Gruenwald, and Sturtevant have the same exhibit numbers in both
`
`proceedings. See IPR2020-01139, Petition, v; IPR2020-01142, Petition, vi. In the
`
`remainder of my analysis, I refer to references by exhibit number without specifying
`
`a proceeding where the exhibit has the same number in each proceeding.
`
`2
`
`MacNeil Exhibit 2043
`Yita v. MacNeil IP, IPR2020-01139
`Page 5
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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 IPR2020-01139, Decision, 2; IPR2020-
`
`01142, Decision, 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 IV 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
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`MacNeil Exhibit 2043
`Yita v. MacNeil IP, IPR2020-01139
`Page 6
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`
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`II. BACKGROUND AND QUALIFICATIONS
`My background and qualifications are stated more fully in my
`8.
`
`curriculum vitae, which I have attached as Appendix A to my Declaration. Here, I
`
`provide a brief summary of my qualifications:
`
`9.
`
`I began my career in the automotive accessories industry in the
`
`1970s, injection molding motorcycle safety helmets at American Safety Equipment
`
`Corporation and manufacturing a variety of tie-down products at Raco Industries.
`
`While working at Raco, I helped develop a thermoformed car top carrier.
`
`10.
`
`From 1983 through 1989, I worked as the Vice President of Sales
`
`& Marketing at Nifty Products, Inc., an automotive accessory manufacturing
`
`company which I help create as a start-up company in 1983. I helped developed a
`
`full product line of replacement molded floor carpets for pickups, sport utility
`
`vehicles, vans, and automobiles. In the process I approached Magee Carpet
`
`Company, an OEM supplier of molded carpets, to see if they would provide Nifty
`
`Products with polyehtylene backed tufted OEM quality carpet which we could use
`
`for our replacement molded aftermarket product line and they agreed to become a
`
`supplier to us. These produces established the company as a credible supplier to the
`
`specialty automotive market. Nifty Product Inc. received patents for several of the
`
`manufacturing capabilities we developed to make replacement molded carpets for
`
`vehicles. EX2066-EX2069.
`
`4
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`Yita v. MacNeil IP, IPR2020-01139
`Page 7
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`11.
`
`From 1990 through 1993, I worked as Director of Sales at Delta
`
`Consolidated Industries Inc., the largest manufacturer in the US of pickup truck bed
`
`toolboxes made from steel, diamond tread aluminum and blow-molded plastic.
`
`Blow molding was more cost effective than fabricating steel and aluminum storage
`
`products. As the cost to fabricate the steel and aluminum toolboxes continued to
`
`rise, I was part of the new product development team that developed blow-molded
`
`poly storage containers for the automotive, hardware, sporting goods, home
`
`improvement and lawn and garden marketplaces. We had substantial blow-molding
`
`technology and equipment capabilities and were successful in developing blow-
`
`molded poly storage boxes and containers for each of these target markets.
`
`12.
`
`From 1994 through 1995, I worked as the Vice President of Sales
`
`& Marketing at Deflecta-Shield Corporation, the largest US manufacturer of Lexan
`
`plastic bug shields for autos and light trucks. The bug shields were made with a
`
`unique drape-form molding process. For each vehicle, and each bug shield design
`
`and shape, a model was hand-created to match the vehicle front hood lines. The
`
`blank size and shape of the flat Lexan plastic sheet was determined and a drape-form
`
`mold was created from this model, which included compatible clamping components
`
`and over the center clamping jigs to hold the heated Lexan plastic blank on the drape-
`
`form mold until it was completely formed and cool enough to retain its shape.
`
`13.
`
`From 1996 through 2002, I worked as the President and CEO of
`
`5
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`MacNeil Exhibit 2043
`Yita v. MacNeil IP, IPR2020-01139
`Page 8
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`Nifty Products, Inc. I acquired Nifty Products, Inc. in 1996 from the two previous
`
`owners, who I had helped start the company and worked with from 1983 through
`
`1989. I sold Nifty Products, Inc. in 1999 to an investment roll-up group, but
`
`remained as President and CEO through 2002.
`
`14.
`
`From 2003 through 2005, I worked as the Nifty Products
`
`Division Vice President and General Manager after Nifty Products, Inc. was
`
`acquired in 2003 by another investment roll-up group. Nifty product lines included:
`
`• Catch-All Floor Mats: Patented high-end custom molded carpeted floor
`
`mats for pickups, sport utility vehicles, vans and automobiles.
`
`• Catch-All Xtreme Floor Mats: Patented high-end custom molded
`
`thermoplastic floor mats for pickups, sport utility vehicles, vans and
`
`automobiles.
`
`• Cargo-Logic Floor Liners: Patented high-end custom molded cargo
`
`area floor liners for sport utility vehicles and automobile trunks.
`
`• Pro-Line replacement carpet: Replacement molded floor carpets for
`
`pickups, sport utility vehicles, vans and automobiles.
`
`The product lines listed above for Nifty Products have been manufactured using the
`
`patented manufacturing process and technologies we developed at Nifty Products.
`
`See EX2066–EX2069, EX2073-EX2075, EX1025. These patents generally cover
`
`methods for making molded flooring products and methods for improving the
`
`6
`
`MacNeil Exhibit 2043
`Yita v. MacNeil IP, IPR2020-01139
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`
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`retention or fit of those products in the vehicle interior. I am an inventor or co-
`
`inventor of four inventions that Nifty Products patented from 1998 to 2001. EX2070,
`
`EX2074-EX2075, EX1025. Based on my experience inventing new floor mat
`
`technologies, developing new floor protection products, and managing Nifty
`
`Products’ patent portfolio, I am well educated in methods and devices for improving
`
`floor protection products, including retention of the floor mat or tray in the vehicle
`
`and conforming the floor mat or tray to the vehicle interior. During my time at Nifty
`
`Products, we evaluated thermoforming as a method for manufacturing floor liner
`
`products, but chose to compression mold our floor liners for reasons discussed
`
`further below. While at Nifty, I also worked with thermoforming to manufacture
`
`thousands of parts for various purposes.
`
`15.
`
`When I purchased Nifty Products in 1996, I led the effort to find
`
`new floor protection products we could manufacture using Nifty’s patented
`
`manufacturing technology. Molded plastic floor liners were gaining popularity,
`
`especially for pickups, so we evaluated the products available and decided to create
`
`the first carpeted-surface molded floor mats, to broaden the market and present a
`
`floor protection product that would not only protect the floor area but also match the
`
`aesthetics of the vehicle interior. I had previously worked closely with Magee
`
`Carpet Company as a supplier of OEM grade polyethylene-backed tufted carpet
`
`materials to Nifty Products for making the Pro-Line replacement carpets. I worked
`
`7
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`with Magee to create a new EVA backing material so Nifty Products could
`
`manufacture a new line of carpeted-surface molded floor mats. With the EVA
`
`backing material Nifty Products created the Catch-All Molded Floor Mats product
`
`line, which grew in a few years to provide over 70% of Nifty’s revenue. Nifty
`
`Products built all our own molds, molding equipment, and heating ovens, as there
`
`was no standard molding equipment available that would meet our needs.
`
`16.
`
`For each vehicle, the Catch-All Molded Floor Mats had to
`
`conform to the shape of the floor area on top of the existing molded carpeting, so
`
`building our molds was a multi-step process. All molds built at Nifty were made of
`
`fiberglass, by taping the carpeted floor surface with masking tape covering the full
`
`vehicle area for which a mold was needed, and then laying light layer of fiberglass
`
`on top of the taped-off carpet. When this light skin of fiberglass cured it would give
`
`a reasonably good shape of the floor area, and the fiberglass skin was used to create
`
`a surface model for the mold.
`
`17.
`
`To make the surface model for the top surface of the bottom half
`
`of the mold, we used hand-held rotary grinders to remove tape marks and unevenness
`
`from the carpet surface left in the fiberglass skin taken from the taped-off footwell.
`
`The surface of the cleaned-up skin was then covered with several coats of very thin
`
`Bondo-type body filler and sanded down by hand until the entire surface was smooth
`
`enough to build the bottom mold surface.
`
`8
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`Yita v. MacNeil IP, IPR2020-01139
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`18.
`
`The bottom half of the mold created the bottom surface on the
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`Catch-All Molded mats that mated with the molded carpet surface area in the
`
`vehicle. The back side of the fiberglass bottom half of the mold was lined with bent
`
`copper tubing, running back and forth approximately 6 inches apart and encased in
`
`concrete. Chilled water ran constantly through the copper tubing to create a cold
`
`bottom surface of the mold. This allowed the EVA backing to cool quickly and retain
`
`the shape pressed into it by the top and bottom halves of the mold.
`
`19.
`
`Nifty applied a full layer of wax material, at the exact same
`
`thickness of the carpeted surface polyethylene and EVA backed Catch-All material,
`
`to make a surface model for the top half of the mold. The bottom and top halves of
`
`the mold were thus separated by the thickness of the Catch-All material, so that when
`
`the top half closed to mate with the bottom half of the mold (with the Catch-All
`
`material held between the two halves), the two halves would close completely onto
`
`each other without ripping or tearing the non-stretchable back of the tufted carpet
`
`surface material. The Catch-All material would be pulled into the mold and molded
`
`to match the surface of the vehicle interior.
`
`20.
`
`In early 2000 Nifty Products developed the patented Cargo-
`
`Logic Molded rear cargo area product line, and shortly thereafter Nifty Products
`
`developed the Catch-All Xtreme Molded Floor Mats product line, both of which
`
`used the same molds and manufacturing process as the Catch-All Molded Floor
`
`9
`
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`Yita v. MacNeil IP, IPR2020-01139
`Page 12
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`
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`Mats. During this time, we applied the compression molding process described
`
`above to every product produced at Nifty Products.
`
`21.
`
`From 2006 through the present, I have worked as President and
`
`CEO of ConfigureTech, Inc., a company I founded that supports eCommerce
`
`platforms
`
`in
`
`selling application-specific automotive accessories online.
`
`ConfigureTech developed a cloud-based AutoLink.lookup Selling Solution that runs
`
`a java script snippet on virtually any website, allowing customers to sell year, make,
`
`and model application-specific automotive accessories using ConfigureTech’s sales
`
`presentation on their eCommerce site. ConfigureTech works with pure automotive
`
`clients such as AutoZone, CARiD and Real Truck for difficult-to-present product
`
`lines such as application-specific seat covers and floor protection products.
`
`ConfigureTech’s largest eCommerce client, Bass Pro & Cabelas, is in the sporting
`
`goods market, and ConfigureTech presents over 150 product lines on their sites with
`
`our AutoLink.lookup Selling Solution.
`
`22.
`
`I have worked in the automotive accessories industry for over 35
`
`years. I have worked for 20 years on product development and manufacturing
`
`processes for floor mats, floor trays, and related floor protection and replacement
`
`products. I have developed products—including floor mats, floor trays, and molded
`
`floor carpets—with compression molding, which allows for molding of non-similar
`
`materials bonded together. I have developed manufacturing processes for floor
`
`10
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`Yita v. MacNeil IP, IPR2020-01139
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`
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`protection products, near the time of the MacNeil invention embodied in the ’186
`
`and ’834 Patents, that attempt to improve the product’s conformance to the vehicle
`
`interior. I have worked with and studied numerous plastics molding technologies—
`
`including injection molding, blow molding, drape molding, compression molding,
`
`and thermoforming—both in manufacturing products and in conferences and
`
`communications with other professionals working in the automotive accessories
`
`industry.
`
`23.
`
`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.
`
`24.
`
`I am being compensated for my time working on this matter at
`
`my standard rate of $200 per hour plus expenses. I do not have any personal or
`
`financial stake or interest in the outcome of the present proceeding. My
`
`compensation is not dependent on the outcome of this IPR and in no way affects the
`
`substance of my statements in this Declaration.
`
`III. MATERIALS CONSIDERED
`I have considered information from various sources in forming
`25.
`
`my opinions. Besides drawing from over 35 years of experience in the automotive
`
`accessory industry, I also have reviewed the documents and references as cited
`
`herein, including those identified in the following table:
`
`11
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`Yita v. MacNeil IP, IPR2020-01139
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`
`
`1001
`
`Petitioner’s Exhibits, IPR2020-01139
`U.S. Patent No. 8,382,186 to MacNeil et al., issued February
`26, 2013 (“’186 Patent”)
`File History of U.S. Patent No. 8,382,186 (“’186 Patent File
`History”)
`Declaration of Paul E. Koch, Ph.D.
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`U.S. Patent No. 7,444,748 to MacNeil, issued November 4,
`2008 (“MacNeil”)
`French Patent Application Pre-Grant Publication No. 2547252
`to Rabbe, published December 14, 1984, with attached
`certified English-language translation (“Rabbe”)
`U.S. Patent Application Pre–Grant Publication No.
`2002/0045029 A1 to Yung, published April 18, 2002
`(“Yung”)
`Gruenwald, G., Thermoforming: A Plastics Processing Guide,
`CRC Press, 2nd Edition, 1998 (“Gruenwald”)
`Throne, J., Technology of Thermoforming, Hanser, 1996
`(“Throne I”)
`Throne, J., Understanding Thermoforming, Hanser, 2nd
`Edition, 2008 (“Throne II”)
`U.S. Patent No. 2,057,873 to Atwood, issued October 20,
`1936 (“Atwood”)
`U.S. Patent No. 2,657,948 to Sturtevant, issued November 3,
`1953 (“Sturtevant”)
`U.S. Patent No. 6,793,872 to Buss, issued September 21,
`2004 (“Buss”)
`U.S. Patent No. 6,361,099 to McIntosh, issued March 26,
`2002 (“McIntosh”)
`U.S. Patent No. 4,568,581 to Peoples, issued February 4,
`1986 (“Peoples”)
`U.S. Patent No. 5,298,319 to Donahue, issued March 29,
`1994 (“Donahue”)
`DOW HDPE DGDA-5004 NT 7 Data Sheet, published
`October 10, 2003
`Black Armor Web Advertisement
`
`Husky Liner Advertisement, August 24, 2000
`
`12
`
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`
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`U.S. Patent No. 4,420,180 to Dupont et al., issued December
`13, 1983 (“Dupont”)
`U.S. Patent No. 4,280,729 to Morawski, issued July 28, 1981
`(“Morawski”)
`European Patent Application Publication No. 0379630 to
`Sagona, published August 1, 1990 (“Sagona”)
`File History of U.S. Patent No. 8,267,459 (“’459 Prosecution
`History”)
`U.S. Patent No. 3,390,912 to Stata, issued July 2, 1968
`(“Stata”)
`German Patent Application Publication No. 4000877 to
`Weitbrecht et al., published July 18, 1991
`U.S. Patent No. 6,027,782 to Sherman, issued February 22,
`2000
`Japanese Patent Application No. H11-268570 to Suzuki,
`published October 5, 1999, with attached certified English-
`language translation (“Suzuki”)
`Word Comparison of the ’703 Application as filed to the
`’899 Application as filed
`U.S. Patent No. 8,833,834 to MacNeil et al., issued
`September 16, 2014 (“’834 Patent”)
`Plastic Extrusion Tolerance Guide
`
`Merriam-Webster's Collegiate Dictionary, Eleventh Edition,
`2003
`Oxford Compact English Dictionary, First Edition, 2000
`
`Curriculum Vitae of Paul E. Koch, Ph.D. (“Koch CV”)
`
`Declaration of Sylvia Hall-Ellis, Ph.D. (“Hall-Ellis Decl.”)
`
`U.S. Patent No. 8,910,995 to MacNeil et al. (“’995 Patent”)
`
`U.S. Patent No. 6,058,618
`(“Hemmelgarn”)
`Webster’s Third New International Dictionary, 1961
`
`to Hemmelgarn et al.
`
`13
`
`MacNeil Exhibit 2043
`Yita v. MacNeil IP, IPR2020-01139
`Page 16
`
`

`

`
`
`Petitioner’s Exhibits, IPR2020-011422
`
`1001
`
`1002
`
`1028
`
`U.S. Patent No. 8,833,834 to MacNeil et al., issued September
`16, 2014 (“’834 Patent”)
`
`File History of U.S. Patent No. 8,833,834 (“’834 Patent File
`History”)
`
`U.S. Patent No. 8,382,186 to MacNeil et al., issued February
`26, 2013 (“’186 Patent”)
`
`Patent Owner’s Exhibits
`
`2004
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`Declaration of James L. Throne, Ph.D.
`
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`Hall, Inc., 2nd Edition, 2000 (“Strong”)
`
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`
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`
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`
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`
`U.S. Patent and Trademark Office, Office Action issued on
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`
`
`2 Petitioner’s Exhibits are nearly identical for the two proceedings, IPR2020-01139
`
`and IPR2020-01142. Only exhibits that differ between the two proceedings are listed
`
`for IPR2020-01142.
`
`14
`
`MacNeil Exhibit 2043
`Yita v. MacNeil IP, IPR2020-01139
`Page 17
`
`

`

`
`
`2018
`
`2019
`
`2020
`
`2021
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`2022
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`2023
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`2024
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`2036
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`U.S. Application No. 12/332,757 on June 11, 2009
`
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`
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`
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`(last
`visited October 14, 2020)
`
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`
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`
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`2021
`
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`
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`
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`2014
`
`U.S. Patent No. 9,138,917 to MacNeil et al., issued Sep. 22,
`2015
`
`U.S. Patent No. 7,316,847 to MacNeil, issued Jan. 8, 2008
`
`15
`
`MacNeil Exhibit 2043
`Yita v. MacNeil IP, IPR2020-01139
`Page 18
`
`

`

`
`
`2049
`
`2053
`
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`
`2055
`
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`(Vol. 2, 1993)
`
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`mats/benefits-of-weathertech-floor-mats/ (last accessed April
`11, 2021)
`
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`Digital
`Fit
`Floor
`Mats,
`available
`at
`https://www.oildepot.ca/interesting-articles-tsb/general-
`automotive/product-review-weathertech-floorliner-digitalfit-
`floor-mats/ (last accessed March 17, 2021)
`
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`(last
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`
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`(last
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`
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`
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`
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`
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`
`16
`
`MacNeil Exhibit 2043
`Yita v. MacNeil IP, IPR2020-01139
`Page 19
`
`

`

`
`
`2066
`
`2067
`
`2068
`
`2069
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`2070
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`2071
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`2073
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`
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`
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`
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`
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`
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`
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`
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`Additional Materials
`Paper No.
`3
`Petition for Inter Partes Review of U.S. Patent No. 8,382,186
`(IPR2020-01139)
`
`17
`
`MacNeil Exhibit 2043
`Yita v. MacNeil IP, IPR2020-01139
`Page 20
`
`

`

`
`
`Paper No. 11
`(IPR2020-01139)
`
`Paper No. 15
`(IPR2020-01139)
`
`Paper No. 16
`(IPR2020-01139)
`
`Patent Owner’s Preliminary Response
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Patent Owner's Sur-Reply in Response to Petitioner's Reply to
`Patent Owner's Preliminary Response
`
`17
`Paper No.
`(IPR2020-01139)
`
`Decision Granting Institution of Inter Partes Review 35
`U.S.C. § 314
`
`3
`Paper No.
`(IPR2020-01142)
`
`Paper No. 11
`(IPR2020-01142)
`
`Paper No. 15
`(IPR2020-01142)
`
`Paper No. 16
`(IPR2020-01142)
`
`Petition for Inter Partes Review of U.S. Patent No. 8,833,834
`
`Patent Owner’s Preliminary Response
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Patent Owner's Sur-Reply in Response to Petitioner's Reply to
`Patent Owner's Preliminary Response
`
`17
`Paper No.
`(IPR2020-01142)
`
`Decision Granting Institution of Inter Partes Review 35
`U.S.C. § 314
`
`
`IV. LEGAL UNDERSTANDING
`I have relied on instructions from counsel for MacNeil as to the
`26.
`
`applicable legal standards to use in arriving at my opinions in this Declaration. My
`
`opinions are informed by my understanding of the relevant law.
`
`27.
`
` 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
`
`18
`
`MacNeil Exhibit 2043
`Yita v. MacNeil IP, IPR2020-01139
`Page 21
`
`

`

`
`
`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
`I have been informed by counsel that a purpose of claim
`28.
`
`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.
`
`29.
`
`I understand that the prosecution history can inform the meaning
`
`of the claim language by demonstrating how the inventor