`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`
`__________________
`
`DECLARATION OF RYAN GRANGER
`
`1
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`MacNeil Exhibit 2126
`Yita v. MacNeil IP, IPR2020-01139
`Page 1
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`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
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`MacNeil Exhibit 2126
`Yita v. MacNeil IP, IPR2020-01139
`Page 2
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`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
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`3
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`MacNeil Exhibit 2126
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`Page 3
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`
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`(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
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`4.
`
`I also understand that the Board instituted review of all Challenged
`
`Claims in both proceedings upon consideration of the Petitions and Patent Owner’s
`
`Preliminary Responses. See Paper 17 (IPR2020-01139) (“Decision-01139”) at 2;
`
`Paper 17 (IPR2020-01142) (“Decision-01142”) at 2.
`
`5.
`
`I 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
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`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
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`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
`
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`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
`
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`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
`
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`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
`
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`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
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`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.
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`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).
`
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`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
`
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`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
`
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`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;
`
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`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.
`
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`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
`
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`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
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`foot wells that they are designed to fit:
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`a. EX2084, Tool No. 02554, in which is thermoformed the passenger’s
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`side floor tray for the 2014 – 2018 Chevrolet Silverado / Sierra
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`1500/2500HD/3500HD Double Cab;
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`b. EX2085, Tool No. 00814, in which is thermoformed the passenger’s
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`side floor tray for the 2013 – 2018 Dodge RAM 1500 Quad Cab;
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`c. EX2086, Tool No. 01846, in which is thermoformed the passenger’s
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`side floor tray for the 2014 – 2018 Jeep Wrangler JK 4 Door
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`Unlimited;
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`d. EX2087, Tool No. 00944, in which is thermoformed the passenger’s
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`side floor tray for the 2013 – 2018 Toyota 4Runner / 2014 – 2017
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`Lexus GX460;
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`e. EX2088, Tool No. 00804, in which is thermoformed the passenger’s
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`side floor tray for the 2015 – 2018 Ford Escape; and
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`f. EX2089, Tool No. 00840, in which is thermoformed the passenger’s
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`side floor tray for the 2013 – 2017 Honda Accord.
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`47.
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`In my opinion, at least the six representative floor trays made by
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`WeatherTech listed above embody the claims of the ’834 Patent, or form material
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`parts thereof, for the reasons detailed in the attached claim charts.
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`48.
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`It should be understood that separate tools are almost always used to
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`separately thermoform driver’s side floor trays and passenger’s side floor trays.
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`For any particular vehicle, the driver’s side foot well almost never has the same
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`shape as the passenger’s side foot well, and thus floor trays are custom-molded for
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`each. The exception is that for certain trucks, a single floor tray will be
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`thermoformed that includes a driver’s side component, a passenger’s side
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`component, and an “over the hump” transmission tunnel component that connects
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`and is integrally molded with the driver’s and passenger’s components, but even
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`here the driver’s side foot well has a different shape than the passenger’s side foot
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`well.
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`49. Below I briefly describe the process by which all WeatherTech
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`FloorLiners are made. This process is itself covered by several WeatherTech
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`patents (i.e., patents owned by WeatherTech’s commonly controlled affiliate,
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`MacNeil IP LLC): US Patent Nos. 7,444,478, 8,899,655, 8,910,995 and 9,138,917.
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`I have reviewed the claims of these patents and to my understanding, WeatherTech
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`practices the processes claimed therein. These patents issued on application
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`specifications that were substantially similar to the specifications of the ’834 and
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`’186 Patents.
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`50.
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`First, WeatherTech makes digital measurements of the vehicle foot
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`well. In 2004, this was done by using a mechanical coordinate measuring machine
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`(CMM) known as a Faro Arm. ’834 Patent Col. 16 line 67 – Col. 17 line 7.
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`Today, WeatherTech digitally acquires the concave shape of the vehicle foot well
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`by the use of a handheld laser scanner.
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`51.
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`The CMM digital capture resulted in the acquisition of a large number
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`of points in a 3D virtual space. These points were stored in a data file. ’834 Patent
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`Col. 17 lines 6 – 22.
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`52.
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`The data file was then imported into a computer assisted design
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`(CAD) program. ’834 Patent Col. 17 line 23. The CAD program included a 3D
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`modeling program called Polyworks, sold by Innovmetric Software Inc. of
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`Canada. We continue to use a version of this software today. Using this software
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`and this data file, the designer creates a three-dimensional model of the vehicle
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`foot well. ’834 Patent Col. 17 lines 23 – 55.
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`53.
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`The designer determined the upper boundary of the floor tray. This
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`was established by using an upper sketch plane. ’834 Patent Col. 17 lines 56 –
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`Col. 18 line 4.
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`54.
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`The designer established a lower sketch plane and then drew side
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`panels between the lower and upper sketch planes. ’834 Patent Col. 17 line 59 –
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`Col. 18 line 11.
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`55.
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`The designer next modified the abrupt corners between the sidewalls
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`of the model and the floor by making them curved transitions. ’834 Patent Col. 18
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`lines 30 – 38. Most of these curved transitions emulated the curved transitions in
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`the vehicle foot well. For certain models and at certain places, the radii of the
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`curved transitions were (and are) increased, as where a deep and relatively vertical
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`surface meets the floor. This is done to make sure that the subsequent vacuum
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`molding process does not create a thin place in the molded part at the deep corners.
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`’834 Patent Col. 18 lines 54 – 64.
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`56.
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`In more recent practice, WeatherTech has used a handheld three-
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`dimensional laser scanner from Creaform. This scanner outputs actual surface data
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`rather than a set of points on that surface. These digital surface data are imported
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`directly into Polyworks as a model of the vehicle foot well shape. The model is
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`subsequently modified according to the steps described below.
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`57. Next, the designer modifies the floor of the foot well model by
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`importing into it a standardized reservoir/ baffle design. ’834 Patent Col. 19 lines
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`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
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`reservoir is preserved as much as possible, so that each WeatherTech FloorLiner
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`will have the same trade dress when presented to the public.
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`58.
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`The designer then “shells” the 3D model, which up to that point is a
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`solid. This creates an upper surface of the model by mathematically translating the
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`lower surface upward/inward by .120 in. - .125 in. ’834 Patent Col 19 lines 28 –
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`31.
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`59.
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`The “shelled” 3D model is converted to a .stl file, which can act as a
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`stereolithographic apparatus (SLA) instruction file. Using the SLA instruction file,
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`an SLA machine is instructed to create, by selectively curing a liquid
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`photopolymer with a laser, a solid plastic fitment part called an “SLA” by
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`WeatherTech personnel. ’834 Patent Col. 19 lines 36 – 41. This process is similar
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`to what is now called 3D printing.
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`60.
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`The SLA(s) are test-fitted into the foot wells of the vehicle. The
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`designer notes any necessary changes, for example to smooth out carpeting
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`wrinkles or to achieve closer tolerance. The 3D model is modified accordingly.
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`’834 Patent Col. 19 lines 41 – 44.
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`61.
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`I have read the Declaration of Paul E. Koch, Ph.D., submitted in
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`support of the Petition for Inter Partes Review, EX1003. Dr. Koch makes the
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`following statement: “Using a device called a coordinate measure machine
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`(CMM), three-dimensional data was gathered from the vehicle foot well using a
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`CMM machine. … A POSA would have downloaded these coordinates to a 3D
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`milling machine. There, through the use of Direct Machine Control (DMC), the
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`3D data gathered from a foot well was used to create either a male or a female
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`thermoform mold, for example, from an aluminum solid block.” EX1003, p. 127.
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`62. As of 2004, and even now, the simplistic procedure described by Dr.
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`Koch could not yield a mold ready to thermoform a floor tray. Dr. Koch omits
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`many important steps that we had to take in 2004 to turn points of data gathered by
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`a CMM machine into a machined mold:
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`a. In the CAD program, the designer established top and bottom sketch
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`planes between which the tray model was to be created. ’834 Patent
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`Col 17 lines 59 – 61, Fig. 7 step 703.
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`b. For each of the foot well sidewalls, the designer had to connect
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`respective sets of the data points together