UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`__________________
`
`Case No. IPR2020-01139
`Patent No. 8,382,186
`__________________
`
`PATENT OWNER RESPONSE
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`TABLE OF CONTENTS
`
`I.
`II.
`III.
`IV.
`V.
`
`VI.
`
`C.
`
`Page
`INTRODUCTION ........................................................................................... 1
`THE ’186 PATENT ......................................................................................... 4
`EXPERT TESTIMONY .................................................................................. 6
`LEVEL OF ORDINARY SKILL IN THE ART ............................................. 7
`CLAIM CONSTRUCTION ............................................................................ 7
`A.
`The preamble of Claim 1 is limiting. .................................................... 8
`B.
`The Board should construe “closely conforming” to require
`close conformance between a panel surface and a corresponding
`surface of a vehicle foot well wall. ....................................................... 9
`The Board should reject Petitioner’s construction of “thickness
`… being substantially uniform throughout the tray.” .........................11
`THE CHALLENGED CLAIMS ARE NOVEL AND NOT OBVIOUS ......12
`A.
`The Rabbe-Yung-Gruenwald combination does not teach every
`element of the claims. ..........................................................................12
`1.
`The combination does not teach a vehicle floor tray
`thermoformed from a sheet of thermoplastic polymeric
`material. .....................................................................................13
`a.
`Yung’s intrinsic record reveals that Yung’s
`flexible, universal floor mat was compression
`molded, not thermoformed, using foamed
`materials. .........................................................................14
`A POSITA would immediately recognize that
`Yung’s mat is not thermoformable. ................................16
`Gruenwald does not disclose the thermoformed
`vehicle floor tray absent from Rabbe and Yung. ............18
`
`b.
`
`c.
`
`i
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`2.
`
`3.
`
`B.
`
`c.
`
`d.
`
`e.
`
`b.
`
`b.
`
`Petitioner’s translator concedes he mistranslated the
`exact purported disclosure of Rabbe on which the Board
`relied to institute........................................................................19
`a.
`It is not the “sides” of the tray where Rabbe
`discloses conformance, it is at the rims on the
`upper perimeter of the tray. ............................................19
`Petitioner’s translation of Rabbe does not disclose
`close conformance of the sides. ......................................22
`Petitioner’s Rabbe translation suffers from another
`material flaw. ..................................................................24
`PO can now prove that the sides of Rabbe’s tray
`did not conform at all to the sides of the foot well
`of a Lada Niva 4x4, let alone “perfectly conform.” .......27
`The Rabbe-Yung-Gruenwald combination does not
`disclose the claimed close conformance. ........................42
`The relied-upon references do not teach the claimed
`integrally formed panels. ..........................................................42
`a.
`Rabbe discloses an assembly, not an integrally
`formed tray. .....................................................................42
`The combination of Rabbe, Yung, and Gruenwald
`does not disclose the claimed integrally formed
`panels. .............................................................................46
`A POSITA would not have combined Rabbe, Yung, and
`Gruenwald, and could not have done so with a reasonable
`expectation of success. ........................................................................48
`1.
`Even if the relied-upon references were combined, there
`is no reasonable expectation of success to achieve the
`claimed invention. .....................................................................48
`a.
`PO invented, and patented, a mold-making method
`that enabled achievement of close conformance. ...........49
`
`ii
`
`

`

`2.
`
`3.
`
`4.
`
`5.
`
`Case IPR2020-01139
`Patent No. 8,382,186
`
`b.
`
`b.
`
`b.
`
`Petitioner’s arguments regarding reasonable
`expectation of success are completely unsupported. ......50
`A POSITA would not have been motivated to
`thermoform Rabbe’s tray based on Yung and Gruenwald. ......53
`a.
`Yung would have led a POSITA to use
`compression molding. .....................................................54
`A POSITA would have known that Yung’s foamed
`thermoplastic materials are not suitable for
`Rabbe’s tray or thermoforming. .....................................55
`i.
`Thermoplastics materially differ from
`Rabbe’s thermoset rubber. ....................................55
`Yung’s foamed materials could not be used
`to thermoform Rabbe’s tray. ................................56
`Even if Yung described a sheet of PE, a
`POSITA would not have been led to
`thermoforming. .....................................................58
`A POSITA would not be motivated to look
`to Yung’s middle layer in isolation. .....................59
`Yung teaches away from thermoforming a floor tray that
`closely conforms. ......................................................................60
`Gruenwald teaches away from thermoforming Rabbe’s
`floor tray as claimed. .................................................................62
`Petitioner has not identified a realistic motivation to
`combine. ....................................................................................67
`a.
`Thermoforming Rabbe’s trays would not be cost-
`effective and would result in significant material
`waste. ..............................................................................67
`Petitioner’s other motivation to combine
`arguments fail. ................................................................68
`
`ii.
`
`iii.
`
`iv.
`
`iii
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`4.
`
`C.
`
`The objective evidence weighs heavily in favor of
`nonobviousness. ..................................................................................69
`1. WeatherTech’s® products embody the claimed invention. .......70
`2.
`PO is entitled to a presumption of nexus. .................................74
`3.
`The invention solved a long-felt need for a floor tray that
`fits well. .....................................................................................75
`The claimed invention’s commercial success is
`extraordinary. ............................................................................77
`The industry praised WeatherTech’s® floor trays for
`claimed features. .......................................................................78
`Multiple competitors have licensed PO’s vehicle floor
`tray patents, including the ’186 Patent. .....................................79
`VII. CONCLUSION ..............................................................................................80
`
`5.
`
`6.
`
`iv
`
`

`

`TABLE OF AUTHORITIES
`
`Case IPR2020-01139
`Patent No. 8,382,186
`
` Page(s)
`
`Federal Cases
`Apple Inc. v. Samsung Elecs. Co.,
`839 F.3d 1034 (Fed. Cir. 2016) .............................................................. 69, 78, 79
`Belden Inc. v. Berk-Tec LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 53
`CFMT, Inc. v. Yieldup Intern. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .......................................................................... 12
`Corning Glass Works v. Sumitomo Elec. U.S.A., Inc.,
`868 F.2d 1251 (Fed. Cir. 1989) ............................................................................ 8
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) .......................................................................... 60
`Fox Factory, Inc. v. SRAM LLC,
`IPR2016-01876, Paper 59 (P.T.A.B. April 2, 2018) .............................. 75, 76, 77
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ...................................................................... 60, 66
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 48
`Lectrosonics, Inc. v. Zaxcom, Inc.,
`IPR2018-01129, Paper 33 (P.T.A.B. Jan. 24, 2020) .......................................... 74
`Metabolite Lab'ys, Inc. v. Lab'y Corp. of Am. Holdings,
`370 F.3d 1354 (Fed. Cir. 2004) .......................................................................... 80
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed. Cir. 2012) .......................................................................... 69
`Pac-Tec Inc. v. Amerace Corp.,
`903 F.2d 796 (Fed. Cir. 1990) .............................................................................. 8
`
`v
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`Shoes by Firebug LLC v. Stride Rite Children's Grp., LLC,
`962 F.3d 1362 (Fed. Cir. 2020) ............................................................................ 8
`Spectralytics, Inc. v. Cordis Corp.,
`649 F.3d 1336 (Fed. Cir. 2011) .......................................................................... 61
`Standard Oil Co. v. Am. Cyanamid Co.,
`774 F.2d 448 (Fed. Cir. 1985) ............................................................................ 41
`Yita LLC v. MacNeil IP LLC,
`IPR2020-01138, Paper 3 (P.T.A.B. June 30, 2020) ........................................... 11
`Yita LLC v. MacNeil IP LLC,
`IPR2020-01142, Paper 17 (P.T.A.B. Jan. 13, 2021) .......................................... 57
`
`vi
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`Exhibit No.
`2001
`2002
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`
`2012
`2013
`2014
`
`2015
`
`2016
`2017
`
`2018
`
`2019
`
`2020
`
`EXHIBIT LIST
`Description
`
`Reserved
`Reserved
`Reserved
`Declaration of James L. Throne, Ph.D.1
`Reserved
`Reserved
`Reserved
`Reserved
`Reserved
`Reserved
`Strong, A. Brent, Plastics Materials and Processing, Prentice-
`Hall, Inc., 2nd Edition, 2000 (“Strong”)
`U.S. Patent No. 6,261,667 to Yang, issued July 17, 2001
`U.S. Patent No. Des. 408,342 to Yang, issued April 20, 1999
`U.S. Patent and Trademark Office, Office Action issued on U.S.
`Application No. 11/463,215 on June 6, 2007
`U.S. Patent No. 3,288,187 to Wheaton, issued November 29,
`1966
`U.S. Patent No. 3,401,975 to Oger, issued September 17, 1968
`U.S. Patent and Trademark Office, Office Action issued on U.S.
`Application No. 11/463,215 on November 27, 2007
`U.S. Patent and Trademark Office, Office Action issued on U.S.
`Application No. 12/332,757 on June 11, 2009
`Husky Deep Tray Floor Liner, downloaded from
`http://www.truckstuffusa.com/cusfitdeeptr.html on January 3,
`2005
`Advertisement for Highland’s Black Armor Floor Guard, Stylin
`Concepts “Custom Truck Accessors” catalog, 2003, pp. 1, 2, and
`109
`
`1 As discussed below, Patent Owner is affirmatively withdrawing the testimony of
`
`Dr. Throne in Exhibit 2004 pursuant to the Patent Trial and Appeal Board
`
`Consolidated Trial Practice Guide 2019.
`
`vii
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`Advertisement for Highland floor guards, Counterman Info
`Pages, prior to Nov. 2002, page 27
`Merriam Webster’s Online Dictionary, “Contour”
`https://www.merriam-webster.com/dictionary/contour (last visited
`October 14, 2020)
`Chinese Patent Application No. 87212432 to Yang, filed July 29,
`1998, with attached certified English-language translation
`Declaration of Bruce D. Popp, Ph.D., March 3, 2021
`Collins Le Robert Comprehensive Dictionary: French-English,
`English-French © 2017 Dictionnaires Le Robert/HarperCollins
`Publishers
`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. 2010)
`Gustave Rudler and Norma C. Anderson, Collins French Gem
`Dictionary, French to English, entry for rebord (1964)
`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-foam-old-school-can-koozie/
`Declarations of Vladimir Orlov and Janina Kaminskiene, March
`23, 2021
`Richard Ernst, Dictionnaire des techniques et sciences appliquées,
`entry for contour (Paris 2002)
`Screen Shot of Google Translate from ENGLISH Contour to
`FRENCH Contour,
`https://translate.google.com/?sl=auto&tl=fr&text=contour&op=tr
`anslate
`Richard Ernst, Dictionnaire des techniques et sciences appliquées,
`entry for topographie (Paris 2002)
`Screen Shot of Google Translate of ENGLISH Topography to
`FRENCH Topography,
`https://translate.google.com/?sl=auto&tl=fr&text=topography&op
`=translate
`Jinrong Invalidity Contentions, WDWI
`Jinrong Invalidity Contentions, NDIL
`
`2021
`
`2022
`
`2023
`
`2024
`2025
`
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`2031
`
`2032
`
`2033
`
`2034
`
`2035
`
`2036
`2037
`
`viii
`
`

`

`2038
`
`2039
`
`2040
`2041
`2042
`2043
`2044
`2045
`2046
`2047
`2048
`2049
`
`2050
`
`2051
`
`2052
`2053
`
`2054
`
`2055
`
`2056
`
`2057
`
`Case IPR2020-01139
`Patent No. 8,382,186
`
`Richard Ernst, Dictionnaire des techniques et sciences appliquées,
`entry for relief (Paris 2002)
`Transcript of Deposition of Paul E. Koch, Ph.D. on March 2,
`2021
`Transcript of Deposition of John E. Dawson on March 17, 2021
`Declaration of Tim A. Osswald, Ph.D.
`Declaration of Ryan Granger
`Declaration of Ray Sherman
`U.S. Patent No. 8,899,655 to MacNeil et al., issued Dec. 2, 2014
`U.S. Patent No. 9,138,917 to MacNeil et al., issued Sep. 22, 2015
`Prosecution History of U.S. Patent No. 9,138,917
`U.S. Patent No. 7,316,847 to MacNeil, issued Jan. 8, 2008
`Prosecution History of U.S. Patent No. 7,316,847
`The New Shorter Oxford English Dictionary, entry for relief (Vol.
`2, 1993)
`Settlement Agreement between MacNeil Automotive Products
`Limited and Winfield Consumer Products, Inc.
`Confidential Settlement Agreement between MacNeil
`Automotive Products Limited, MacNeil IP, LLC, Kramer
`America, Inc., and Vandapac Company Limited
`Reserved
`D&S Automotive, Benefits of WeatherTech Floor Mats, available
`at https://www.dsautomotive.com/accessories/floor-mats/benefits-
`of-weathertech-floor-mats/ (last accessed April 11, 2021)
`OilDepot.ca, Product Review: WeatherTech FloorLiner 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)
`Leonard, Floor Mats by WeatherTech, available at
`https://www.leonardusa.com/floor-mats-weathertech (last
`accessed April 11, 2021)
`John Goreham, BestRide.com, Product Review: WeatherTech
`Floor Mats and Trunk Cargo Liners, available at
`https://bestride.com/news/technology/product-review-
`weathertech-floor-mats-and-trunk-cargo-liners (last accessed
`March 17, 2021)
`Jon Paul, Crutchfield.com, WeatherTech floor mat buying guide:
`Quality mats and liners are a sound investment, available at
`
`ix
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`https://www.crutchfield.com/S-FbjcJw9F7qy/learn/floor-mat-
`buying-guide.html (last accessed April 11, 2021)
`U.S. Patent No. 4,434,832 to Koch et al., issued March 6, 1984
`U.S. Patent No. 3,968,198 to Honda et al., issued July 6, 1976
`U.S. Patent No. 4,181,780 to Brenner et al., issued January 1,
`1980
`U.S. Patent No. 10,239,586 to Harbaugh, issued March 26, 2019
`Kraco R5704 Tan Premium Rubber Matt, available at
`https://www.ebay.com/itm/Kraco-R5704tan-Tan-Premium-
`Rubber-Mat-4-Piece-/362620894686 (last accessed April 25,
`2021)
`WoosterRubber, Ltd., Rubber Queen Catalog (2008)
`Nifty Products Inc., NPI Catalog (2002)
`Nifty Products Inc., NPI Catalog (2003-2004)
`U.S. Patent No. 5,207,963 to Grace, issued May 4, 1993
`U.S. Patent No. 5,071,614 to Grace, issued December 10, 1991
`U.S. Patent No. 5,034,258 to Grace, issued July 23, 1991
`U.S. Patent No. 4,849,269 to Grace, issued July 19, 1989
`U.S. Patent No. 6,381,806 to Stanesic et al., issued May 7, 2002
`Stern and Stern Polyester Properties, available at
`https://web.archive.org/web/20040831025315/http://www.sternan
`dstern.com:80/polyester.asp (last accessed April 19, 2021)
`Tim A. Osswald, Georg Menges, Materials Science of Polymers
`for Engineers (2nd ed. 2003)
`U.S. Patent No. 6,406,085 to Stanesic, issued June 18, 2002
`U.S. Patent No. 6,244,802 to Stanesic et al., issued June 12, 2001
`U.S. Patent No. 6,155,629 to Sherman, issued December 5, 2000
`Tim A. Osswald et al., Injection Molding Handbook (2002)
`Bruce A. Davis et al., Compression Molding (2003)
`Signoff Record for Tool 02554, 2014 – 2018 Chevrolet
`Silverado/Sierra 1500/2500HD/3500HD Double Cab
`Signoff Record for Tool 0814, 2013 – 2018 Dodge RAM 1500
`Quad Cab
`Signoff Record for Tool 01846, 2014 – 2018 Jeep Wrangler JK 4
`Door Unlimited
`Signoff Record for Tool 00944, 2013 – 2018 Toyota 4Runner /
`2014-2017 Lexus GX460
`Signoff Record for Tool 00804, 2015 – 2018 Ford Escape
`
`x
`
`2058
`2059
`2060
`
`2061
`2062
`
`2063
`2064
`2065
`2066
`2067
`2068
`2069
`2070
`2071
`
`2072
`
`2073
`2074
`2075
`2076
`2077
`2078
`
`2079
`
`2080
`
`2081
`
`2082
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`2083
`2084
`
`2085
`
`2086
`
`2087
`
`2088
`
`2089
`
`2090
`
`2091
`
`2092
`
`2093
`
`2094
`
`2095
`
`2096
`2097
`2098
`2099
`
`Signoff Record for Tool 00840, 2013 – 2017 Honda Accord
`Claim Chart of ’834 Patent Claim 1 as Applied to WeatherTech
`Tool No. 02554 for 2014 – 2018 Chevrolet Silverado/Sierra
`1500/2500HD/3500HD Double Cab (PS)
`Claim Chart of ’834 Patent Claim 1 as Applied to WeatherTech
`Tool No. 00814 for 2013 – 2018 Dodge RAM 1500 Quad Cab
`(PS)
`Claim Chart of ’834 Patent Claim 1 as Applied to WeatherTech
`Tool No. 01846 for 2014 – 2018 Jeep Wrangler JK 4 Door
`Unlimited (PS)
`Claim Chart of ’834 Patent Claim 1 as Applied to WeatherTech
`Tool No. 00944 for 2013 – 2018 Toyota 4Runner / 2014 – 2017
`Lexus GX460 (PS)
`Claim Chart of ’834 Patent as Applied to WeatherTech Tool No.
`00804 for 2015 – 2018 Ford Escape (PS)
`Claim Chart of ’834 Patent Claim 1 as Applied to WeatherTech
`Tool No. 00840 for 2013 – 2017 Honda Accord (PS)
`Claim Chart of ’186 Patent Claim 1 as Applied to WeatherTech
`Tool No. 02554 for 2014 – 2018 Chevrolet Silverado / Sierra
`1500/2500HD/3500HS Double Cab (PS)
`Claim Chart of ’186 Patent Claim 1 as Applied to WeatherTech
`Tool No. 00814 for 2013 – 2018 Dodge RAM 1500 Quad Cab
`(PS)
`Claim Chart of ’186 Patent Claim 1 as Applied to WeatherTech
`Tool No. 01846 for 2014 – 2018 Jeep Wrangler JK 4 Door
`Unlimited (PS)
`Claim Chart of ’186 Patent Claim 1 as Applied to WeatherTech
`Tool No. 00944 for 2013 – 2018 Toyota 4Runner / 2014 – 2017
`Lexus GX460 (PS)
`Claim Chart of ’186 Patent Claim 1 as Applied to WeatherTech
`Tool No. 00804 for 2015 – 2018 Ford Escape (PS)
`Claim Chart of ’186 Patent Claim 1 as Applied to WeatherTech
`Tool No. 00840 for 2013 – 2017 Honda Accord (PS)
`Plate 3/5 of Rabbe 2547252, annotated
`Plate 4/5 of Rabbe 2547252, annotated
`View from Lada Niva Scan: DS and PS Foot Wells
`Scan image, Lada Niva DS foot well, from rear inboard,
`annotated.
`
`xi
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`2100
`2101
`
`2102
`
`2103
`2104
`
`2105
`2106
`
`2107
`2108
`2109
`2110
`2111
`2112
`
`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.
`Photos of Foot Wells of 1984 Lada Niva (VAZ 2121)
`Kraftwagen VAZ 2121 21211 21212 Betriebsanleitung, relevant
`pages.
`Andy Thompson, Cars of the Soviet Union (2nd ed. 2019)
`U.S. Patent No. D313789 to Thundercloud, issued Jan. 15, 1991
`Web Advertisement for Fox WeatherBoots Floor Liner
`U.S. Patent No. D525,576 to Lu, issued July 25, 2006
`U.S. Patent No. 4,921,742 to Altus, issued May 1, 1990
`International Chemical Safety Card, Polyethylene, available at
`http://www.inchem.org/documents/icsc/icsc/eics1488.htm (last
`accessed May 1, 2021)
`
`xii
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`I.
`
`INTRODUCTION
`The Board properly included the disclaimer “at this stage of the proceeding”
`
`throughout its institution decision. At that stage, both the Board and Patent Owner
`
`(“PO”) accepted Petitioner’s representations about the relied-upon references.
`
`Subsequent investigation by PO has revealed that Petitioner’s arguments about what
`
`the references teach—which the Board relied upon in its decision to institute—are
`
`completely wrong.
`
`First, Petitioner’s obviousness challenge is built around an admittedly
`
`inaccurate English translation of Rabbe, a French patent application filed in 1983.
`
`Petitioner relies heavily on translated language that the “sides” of Rabbe’s tray
`
`“perfectly conform to the contour of the vehicle interior at the feet of the driver” as
`
`allegedly disclosing the “closely conforming” first and second panels in limitations
`
`1[c] and 1[e] of Claim 1. Petition, 41, 47. The Board repeatedly focused on this
`
`exact alleged disclosure in its decision to institute. But Petitioner’s translator
`
`admitted that “sides” is not the correct translation of Rabbe and should have been
`
`translated as “flanges.” EX2040, 32:7-16.
`
`When correctly translated, this materially changes the entire meaning of
`
`Rabbe’s disclosure, resulting in Petitioner’s proposed combination lacking
`
`disclosure of a floor tray having panels that “closely conform” to respective walls of
`
`a vehicle foot well. PO can also conclusively prove that Rabbe’s floor trays did not
`
`1
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`conform to the foot well of the Lada Niva 4x4 for which they were designed, let
`
`alone closely, because PO purchased the actual vehicle and has analyzed it at its
`
`design facility.
`
`Second, PO’s subsequent investigation has confirmed that none of the relied-
`
`upon references discloses a thermoformed floor tray—including Yung, which
`
`Petitioner represented to the Board as teaching thermoforming a floor mat. The
`
`Board expressly relied on Petitioner’s representation as to what Yung disclosed in
`
`its decision to institute: “Petitioner submits that an ordinarily skilled artisan would
`
`have manufactured Rabbe’s floor tray using thermoforming, based on Yung’s
`
`teaching of thermoformed floor mats….” Paper 17 (“Decision”), 24. But Yung
`
`teaches no such thing.
`
`Yung’s intrinsic record includes a priority claim to a foreign application,
`
`which PO had translated after the institution decision, that explicitly confirms (no
`
`less than four times) what PO has argued all along—Yung’s one-size-fits-all mat is
`
`compression molded, not thermoformed as Petitioner alleged. The translation also
`
`confirms that the flexible middle layer disclosed in Yung and relied-upon by
`
`Petitioner is foamed polyethylene and not just polyethylene, which are different
`
`materials and renders Petitioner’s expert testimony inaccurate. Thus, on these two
`
`critical points about Yung’s disclosure, PO was right and Petitioner and its expert
`
`were dead wrong.
`
`2
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`Rabbe, meanwhile, merely discloses a rubber tray—without specifying a
`
`method of manufacture—that has features a person of ordinary skill in the art
`
`(“POSITA”) would immediately recognize preclude not only thermoforming but
`
`integral formation. That leaves Gruenwald, a treatise on thermoforming that makes
`
`no mention of vehicle floor trays, as the sole teaching of thermoforming in
`
`Petitioner’s combination. But a POSITA would not have been motivated to
`
`thermoform Rabbe’s tray as Petitioner alleges, as Gruenwald confirms.
`
`Third, not only would a POSITA have had no motivation to combine Rabbe,
`
`Yung, and Gruenwald to arrive at the claimed invention, a POSITA could not have
`
`combined the references to arrive at the claimed vehicle floor tray with a reasonable
`
`expectation of success. At the time of the invention, it simply was not within the
`
`skill set of a POSITA to manufacture a vehicle floor tray that closely conforms as
`
`claimed. PO invented, and patented, mold-making techniques needed to create the
`
`claimed closely conforming tray. Petitioner’s assertions that a POSITA would have
`
`had a reasonable expectation of achieving what was claimed are based on the
`
`conclusory, unsupported testimony of its expert (who is admittedly not a car guy)
`
`and a reference that, like many of the other references relied upon by Petitioner, does
`
`not disclose what Petitioner says it does.
`
`Finally, the objective indicia in this case are strong and demonstrate that the
`
`claims would not have been obvious. The commercial success of PO’s
`
`3
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`WeatherTech® FloorLiners™, virtually every model of which embodies and is
`
`coextensive with the claimed invention, is astounding. The WeatherTech®
`
`FloorLiners™ have been praised by the industry for their exceptional fit, which
`
`solved a long-felt need in the industry that others had tried, and failed, to achieve.
`
`Accordingly, the Board should uphold the validity of the challenged claims.
`
`II.
`
`THE ’186 PATENT
`U.S. Patent No. 8,382,186 (the “’186 Patent”) describes and claims an
`
`innovative vehicle floor tray thermoformed from a sheet of thermoplastic polymeric
`
`material that is embodied in the hugely successful WeatherTech® FloorLiner™
`
`product. Unlike prior art floor mats and floor trays—including those described in
`
`the Rabbe and Yung references on which Petitioner relies—the panels of the claimed
`
`vehicle floor tray closely conform to respective walls of the vehicle foot well:
`
`4
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`This close conformance produces a protective tray that resists displacement under
`
`forces created by the occupant’s feet, or by the motion of the vehicle—problems that
`
`plagued prior art floor mats and trays. EX1001, 1:16-2:4, 8:6-20.
`
`The close conformance claimed in the ’186 Patent set the WeatherTech®
`
`FloorLiner™ apart from its competitors. No one in the automotive accessory
`
`industry had been able to achieve this level of conformance before PO invented—
`
`and patented—the techniques necessary to achieve this level of conformance. Infra,
`
`§VI.B.1. Prior art floor mats, like the flexible, one-size-fits-all mat described in
`
`Yung, relied on other methods—not close conformance—to attempt to hold the mat
`
`in place. EX2043, ¶¶75-76, 83-84. And prior art floor trays, like the rubber tray
`
`described in Rabbe, at most achieved a modicum of conformance at the upper
`
`5
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`perimeter of the tray, not along the surfaces of the side panels. Id., ¶¶96-98. Neither
`
`approach, however, actually prevented the mats from being displaced. The
`
`WeatherTech® FloorLiner™, which creates stability by having the surfaces of its
`
`side panels closely conform to respective surfaces of the vehicle foot well walls, was
`
`unlike anything the industry had seen before—it will not fold over, it will not bunch
`
`up or deform, it will not occlude the pedals, and it does not pull away from the foot
`
`well walls. Id., ¶¶86, 167.
`
`The claims of the ’186 Patent, which are directed to the WeatherTech®
`
`FloorLiner™, would not have been obvious to a POSITA. Petitioner has not come
`
`close to meeting its burden to show otherwise.
`
`III. EXPERT TESTIMONY
`PO submitted the Declaration of James L. Throne, Ph.D., a recognized expert
`
`in thermoforming, in support of its preliminary response. EX2004. PO’s subsequent
`
`investigation into Petitioner’s allegations and the actual disclosure of Rabbe and
`
`Yung, however, more deeply implicated technologies beyond thermoforming,
`
`including compression molding and the properties of the materials described in
`
`Rabbe and Yung.
`
`Accordingly, pursuant to the Consolidated Trial Practice Guide November
`
`2019, PO is affirmatively withdrawing the testimony of Dr. Throne submitted as
`
`Exhibit 2004. This Response is supported by the testimony of Tim A. Osswald,
`
`6
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`Ph.D., a recognized expert in thermoforming, compression molding, and rubber.
`
`EX2041, ¶¶8-20. This Response is also supported by, among others, the testimony
`
`of Ray Sherman, who has over 30 years of experience in the design and
`
`manufacturing of automotive accessories, including vehicle floor trays. EX2043,
`
`¶¶8-24.
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`In
`the
`institution decision,
`the Board agreed
`
`that “experience
`
`in
`
`thermoforming is relevant to the level of ordinary skill” and adopted PO’s proposal.
`
`Decision, 9-10. Specifically, a POSITA for the ’186 Patent technology in 2004
`
`would have had an associate’s or bachelor’s degree in mechanical engineering or
`
`plastics processing, an equivalent degree, or comparable formal training or practical
`
`industry experience in plastics engineering, design, and manufacturing. EX2041,
`
`¶¶39-42, 48. This person would also have at least three years of experience in
`
`plastics engineering, design, and manufacturing. Id., ¶41. This person would be
`
`particularly familiar with plastic product design and manufacturing using
`
`thermoforming techniques. Id.
`
`V.
`
`CLAIM CONSTRUCTION
`Except as set out below, for purposes of this Response PO construes the claims
`
`to have their ordinary meaning.
`
`7
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`The preamble of Claim 1 is limiting.
`A.
`The recitation of “[a] vehicle floor tray thermoformed from a sheet of
`
`thermoplastic polymeric material of substantially uniform thickness” in the
`
`preamble of Claim 1 limits the challenged claims. EX1001, 19:35-37. The preamble
`
`is limiting at least because it provides antecedent basis for elements in the body of
`
`the claim (e.g., elements 1[b] (“the floor tray”), 1[c]-1[g], 1[j]). See Shoes by
`
`Firebug LLC v. Stride Rite Children's Grp., LLC, 962 F.3d 1362, 1368 (Fed. Cir.
`
`2020) (use of preamble terms to define positive limitations in the body of claims
`
`may limit the claim).
`
`Moreover, the Petition relies solely on the thermoforming method of
`
`manufacture to argue that the challenged claims would have been obvious to a
`
`POSITA and repeatedly acknowledges that thermoforming the floor tray will impact
`
`the structure of the claimed invention. See, e.g., Petition, 2-5, 33-34, 55-57, 63-64.
`
`Terminology in the preamble that limits the structure of the claimed invention must
`
`be treated as a claim limitation. Corning Glass Works v. Sumitomo Elec. U.S.A.,
`
`Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989) (whether preamble recitations are
`
`structural limitations can be resolved only on review of the entirety of the application
`
`“to gain an understanding of what the inventors actually invented and intended to
`
`encompass by the claim”); Pac-Tec Inc. v. Amerace Corp., 903 F.2d 796, 801 (Fed.
`
`Cir. 1990).
`
`8
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`Here, the preamble reflects what the inventors actually invented, which is a
`
`“vehicle floor tray thermoformed from a sheet of thermoplastic polymeric material
`
`of substantially uniform thickness” having the features recited in Claim 1.
`
`Accordingly, the preamble limits Claim 1.2
`
`B.
`
`The Board should construe “closely conforming” to require
`close conformance between a panel surface and a
`corresponding surface of a vehicle foot well wall.
`The phrases “closely conforming to a first foot well wall” and “closely
`
`conforming to a second foot well wall” should be construed to mean “an outer
`
`surface of the first panel conforming closely to a surface of a first vehicle foot well
`
`wall” and “an outer surface of the second panel conforming closely to a surface of a
`
`second vehicle foot well wall,” respectively, consistent with the intrinsic record and
`
`the understanding of a POSITA. EX2041, ¶¶56-59.
`
`Claim 1 recites a first panel “closely conforming to a first foot well wall” and
`
`a second panel “closely conforming to a second foot well wall.” EX1001, 19:42-
`
`20:3. The specification explains what is meant by closely conforming. One of the
`
`advantages of the patented tray is “greatly enhanced conformance to the surface of
`
`2 Regardless, the Petition is limited to thermoforming as that is the method of
`
`manufacture that Petitioner solely relies on in Ground 1.
`
`9
`
`

`

`Case IPR2020-01139
`Patent No. 8,382,186
`
`the vehicle foot well for which it is provided.”3 EX1001, 4:14-16. The specification
`
`makes clear that the conformance is between an outer surface of the floor tray pa