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
`____________________
`
`DECLARATION OF MARK STRACHAN IN SUPPORT OF
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`EX1042
`Yita v. MacNeil
`IPR2020-01139
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
`
`TABLE OF CONTENTS
`Introduction ................................................................................................. 1
`I.
`Qualifications and Experience ..................................................................... 3
`II.
`III. Legal Principles ..........................................................................................12
`A. Obviousness ......................................................................................12
`B. Motivation to Combine .....................................................................16
`IV. Level of Ordinary Skill in the Art ...............................................................18
`
`V.
`
`The Rabbe-Yung-Gruenwald combination discloses a thermoformed
`floor tray with integrally formed panels that closely conform to a
`vehicle foot well contour. ............................................................................19
`A. A POSA would have understood that Rabbe’s floor tray is
`conducive to thermoforming. ............................................................20
`1.
`Rabbe’s floor tray is not limited to thermosets. .......................21
`2.
`Rabbe’s floor tray design would have suggested
`thermoforming a single sheet of thermoplastic polymeric
`material. ..................................................................................26
`Rabbe’s drawings do not suggest sharp corners. .....................30
`Rabbe’s floor tray would actually have a shallow draw,
`although a POSA would have known how to thermoform
`a deeper draw. .........................................................................33
`
`3.
`4.
`
`B.
`
`5.
`
`Rabbe’s undercuts and walls of unequal heights would
`not have deterred a POSA from thermoforming. .....................36
`A POSA reading Yung would have been led to thermoforming
`to produce the vehicle floor mat. .......................................................40
`1.
`The materials of Yung’s tri-layer floor mat would have
`led a POSA to thermoforming, not compression molding. ......41
`
`i
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
`
`Thermoforming fabric and foam materials was well
`known and well within the level of ordinary skill in the
`art. ..........................................................................................46
`Thermoforming Yung’s tri-layer structure was well
`within the level of ordinary skill in the art...............................54
`Thermoforming Yung’s embossments was well within
`the level of ordinary skill in the art. ........................................61
`
`2.
`
`3.
`
`4.
`
`C.
`
`A POSA would have understood that Gruenwald’s well known
`thermoforming techniques were applicable to thermoforming
`Rabbe’s floor tray. ............................................................................63
`VI. Conclusion ..................................................................................................65
`
`
`ii
`
`

`

`Case No.
`
`IPR2020-
`01139
`IPR2020-
`01139
`IPR2020-
`01139
`IPR2020-
`01142
`IPR2020-
`01142
`IPR2020-
`01142
`IPR2020-
`01139
`IPR2020-
`01142
`IPR2020-
`01139, -01142
`
`IPR2020-
`01139, -01142
`
`IPR2020-
`01139, -01142
`
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`
`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
`
`LIST OF MATERIALS CONSIDERED
`
`
`Description
`
`Exhibit
`No.
`3
`
`17
`
`29
`
`3
`
`17
`
`Petition for Inter Partes Review of U.S. Patent No.
`8,382,186
`Decision Granting Inter Partes Review
`
`Patent Owner’s Response (Redacted)
`Petition for Inter Partes Review of U.S. Patent No.
`8,833,834
`Decision Granting Inter Partes Review
`
`1006
`
`1005
`
`Patent Owner’s Response (Redacted)
`28
`1001 U.S. Patent No. 8,382,186 to MacNeil et al., issued
`February 26, 2013 (“’186 Patent”)
`1001 U.S. Patent No. 8,833,834 to MacNeil et al., issued
`September 16, 2014 (“’834 Patent”)
`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
`1007
`(“Gruenwald”)
`1008 Throne, J., Technology of Thermoforming, Hanser,
`1996 (“Throne I”)
`1009 Throne, J., Understanding Thermoforming, Hanser,
`2nd Edition, 2008 (“Throne II”)
`1012 U.S. Patent No. 6,793,872 to Buss, issued September
`21, 2004 (“Buss”)
`1013 U.S. Patent No. 6,361,099 to McIntosh, issued March
`26, 2002 (“McIntosh”)
`
`iii
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
`
`
`Exhibit
`Description
`No.
`1016 DOW HDPE DGDA-5004 NT 7 Data Sheet,
`published October 10, 2003
`1017 Black Armor Web Advertisement
`
`1018 Husky Liner Advertisement, August 24, 2000
`1019 U.S. Patent No. 4,420,180 to Dupont et al., issued
`December 13, 1983 (“Dupont”)
`1043 Curriculum vitae of Mark Strachan
`
`1047 Transcript of the Deposition of Ray Sherman, taken
`July 28, 2021
`1049 Transcript of the Deposition of Tim A. Osswald,
`Ph.D., taken August 5, 2021
`1054 U.S. Patent No. 6,953,545 to Tyler (“Tyler”)
`
`1056 U.S. Patent Application Publication 2001/0028932 to
`Akaike et al.
`1057 Handbook of Plastic Foams: Types, Properties,
`Manufacture and Applications, ed. Arthur H.
`Landrock, Noyes Publications, 1995
`1058 Reinkemeyer, Heiz-Gerd, “New Solutions for the
`Trim of Automotive Vehicles,” Society of
`Automotive Engineers, Automotive Engineering
`Congress and Exposition, 1976.
`1063 U.S. Patent No. 6,817,649 to Stanesic
`
`1064 U.S. Patent No. 5,648,031 to Sturtevant et al.
`
`1065 European Patent No. 0288728 to Landler
`
`1066 U.S. Patent No. 5,529,826 to Tailor et al.
`
`1067
`
`International Patent Publication No. WO
`2004/087804 to Walther et al.
`1068 U.S. Patent No. 6,849,667 to Haseyama et al.
`
`Case No.
`
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`
`IPR2020-
`01139, -01142
`
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`
`iv
`
`

`

`Case No.
`
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`
`
`
`
`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
`
`
`Description
`
`Exhibit
`No.
`1069 U.S. Patent No. 5,378,543 to Murata et al.
`
`1070 U.S. Patent No. 5,725,712 to Spain et al.
`
`1071
`
`International Patent Application Publication No. WO
`93/03910 to Kerman
`1072 U.S. Patent No. 5,346,278 to Dehondt
`
`1092 U.S. Patent No. 5,298,321 to Isoda
`
`1093
`
`Strachan Presentation
`
`2011
`
`Strong, A. Brent, Plastics Materials and Processing,
`Prentice-Hall, Inc., 2nd Edition, 2000
`2024 Declaration of Bruce D. Popp, Ph.D.
`
`2041 Declaration of Tim A. Osswald, Ph.D.
`
`2043 Declaration of Ray Sherman
`
`2072 Osswald, Tim A. and Georg Menges, Materials
`Science of Polymers for Engineers (2nd ed., 2003)
`2126 Corrected Declaration of Ryan Granger (Redacted)
`
`
`
`v
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
`
`I, Mark Strachan, do hereby declare as follows:
`
`I.
`
`Introduction
`I have been retained as an expert by counsel for Yita LLC (“Yita” or
`1.
`
`“Petitioner”) in connection with Yita’s Petitioner’s Reply to Patent Owner’s
`
`Response in the proceedings IPR2020-01139 and IPR2020-01142.
`
`2.
`
`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. 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. IPR2020-01142, EX1001. I understand that both the ’186 patent
`
`and the ’834 patent are currently assigned to MacNeil IP LLC (“MacNeil” or
`
`“Patent Owner”).
`
`3.
`
`I understand that in IPR2020-01139, Yita challenged claims 1-7 of the
`
`’186 Patent as being unpatentable under 35 U.S.C. § 103 as being obvious over
`
`Rabbe (IPR2020-01139, EX1005) in view of Yung (IPR2020-01139, EX1006) and
`
`Gruenwald (IPR2020-01139, EX1007). IPR2020-01139, Pet., 27.
`
`4.
`
`I understand that in IPR2020-01142, Yita challenged claims 1-15 of the
`
`’834 patent as being unpatentable based on the following grounds: (1) Claims 1, 4,
`
`5, 8, 9, and 12-15 under 35 U.S.C. § 103 as being obvious over Rabbe (IPR2020-
`
`
`
`- 1 -
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
`
`01142, EX1005) in view of Yung (IPR2020-01142, EX1006) and Gruenwald
`
`(IPR2020-01142, EX1007); and (2) Claims 2, 3, 6, 7, 10, and 11 under 35 U.S.C. §
`
`103 as being obvious over Rabbe (IPR2020-01142, EX1005) in view of Yung
`
`(IPR2020-01142, EX1006), Gruenwald (IPR2020-01142, EX1005), and Sturtevant
`
`(IPR2020-01142, EX1011).1 IPR2020-01142, Pet., 23.
`
`5.
`
`I understand that the Board instituted review of all challenged claims in
`
`both proceedings based on the grounds of unpatentability presented in the Petitions
`
`and supported by the Declarations of expert witness, Dr. Koch. See IPR2020-
`
`01139, DI, 2; IPR2020-01142, DI, 2. I also understand that in both proceedings,
`
`Patent Owner submitted a Patent Owner Response (Paper 29 in IPR2020-01139
`
`and Paper 28 in IPR2020-01142) (“POR”) along with declarations from Dr.
`
`Osswald (EX2041), Mr. Granger (EX2126), and Mr. Sherman (EX2043) in
`
`support of the POR.
`
`
`1 I understand that both proceedings cite to common documents, including Rabbe,
`
`Yung, Gruenwald, and Sturtevant, and that these common documents have the
`
`same exhibit numbers in both proceedings. See IPR2020-001139, Pet., v; IPR2020-
`
`01142, Pet., vi. Accordingly, in the remainder of my Declaration, I will refer to
`
`each of these documents by its exhibit number without specifying the proceeding
`
`number.
`
`
`
`- 2 -
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
`
`I have been asked to provide my technical review, analysis, insights, and
`
`6.
`
`opinions in IPR2020-01139 and IPR2020-01142. In forming my opinions, I have
`
`relied on information and evidence identified in this declaration, including the ’186
`
`patent, the ’834 patent, certain prior-art references (including Rabbe, Yung,
`
`Gruenwald, and Sturtevant), and other references cited herein. I also rely on my
`
`vast experience and expertise in plastics processing (including thermoforming) and
`
`plastic products manufacturing.
`
`7. My work on this case is being billed at a rate of $695 per hour, with
`
`reimbursement for actual expenses. My compensation is not contingent upon the
`
`outcome of this inter partes review (“IPR”).
`
`II. Qualifications and Experience
`8. A copy of my curriculum vitae (“CV”) is submitted with this declaration
`
`as Exhibit 1043. While not intended to be exhaustive, my CV provides a
`
`substantially complete list of my education, relevant experience, academic and
`
`employment history, publications, professional activities, and speaking
`
`engagements.
`
`9.
`
`I am an expert in many aspects of plastics thermoforming and extrusion,
`
`including plastic product and tool design, thin-gauge thermoforming, heavy-gauge
`
`thermoforming, and related thermoforming machinery. I have been an expert since
`
`
`
`- 3 -
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
`
`well before the earliest claimed priority date of the ’186 and ’834 patents—
`
`October 29, 2004.
`
`10. I received a Bachelor of Science in Electronics Engineering from the
`
`Cape Peninsula University of Technology (South Africa) in 1986. I apprenticed at
`
`Metal Box South Africa, a company specializing in thermoforming and injection
`
`molded products.
`
`11. I am currently the Director at Global Thermoforming Training
`
`International—a business offering consulting and training services in the field of
`
`thin- and thick-gauge thermoforming. I have been providing engineering and
`
`training services in the field of thermoforming and extrusion for over 30 years,
`
`including 17 years by the year 2004. As the Director at Global Thermoforming
`
`Training, I provide in-house and hands-on training for all aspects of the
`
`thermoforming process, including plant setup, product design, and development. I
`
`also conduct plant and machinery audits at thermoforming manufacturing facilities,
`
`including Computer Design Inc., (Arizona, Puerto Rico, and Pennsylvania),
`
`Nelipak (Netherlands and USA plants), MTS Medical (Florida), Alloyd Brands
`
`(Puerto Rico, North Carolina, and Chicago Plants), and Mullinix Packages (Sabert)
`
`(Ft. Wayne, IN).
`
`12. At Global Thermoforming Training International, my training services
`
`include courses starting with the Fundamentals to Advanced Thin- and Thick-
`
`
`
`- 4 -
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
`
`Gauge Thermoforming techniques. I provide interactive training courses to
`
`thermoforming, extrusion, and resin manufacturing companies worldwide. These
`
`interactive courses cover the fundamentals of thermoforming, such as raw
`
`materials, thermoforming machinery configurations, thin-gauge packaging to large
`
`cut sheet component part and tool designs. I also cover specialized and advanced
`
`topics on thin- and thick-gauge thermoforming, advanced trimming techniques,
`
`and part assembly.
`
`13. In addition to serving as the Director at Global Thermoforming Training
`
`International (2018-present), I have held engineering and production management
`
`positions at various plastics packaging manufacturing firms, including Senior
`
`Technology Director at First Quality Packing Solutions (2013-2018), President at
`
`uVu Technologies, LLC (2011-2012), General Manager at Mullinix Packages, Inc.
`
`(2009-2010), President at Global Thermoforming Technologies, Inc. (2005-2009),
`
`Vice President of Engineering at Zade Pack (2003-2005), Thermoforming and
`
`Extrusion Training Author at Paulson Training Programs, Inc. (2001-2002),
`
`Machinery Division Sales Manager at Commodore Machine Company USA
`
`(2000-2002), and Engineer Manager at Outline Plastic Technologies, South Africa
`
`(1999-2000), where I designed and built the prototype rowing / sailing dinghy for
`
`Walker Bay Boats Canada.
`
`
`
`- 5 -
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
`
`14. I served as Product Specialist and Project Manager at Sencorp Systems
`
`(1997-1999), Plastics Division Engineer Manager at Matrix Industries UK (1994-
`
`1996), Engineering Manager at Inde Plastik in Aachen, Germany (1991-1994),
`
`Plastics Divisions Manager at Delpak Packaging (1989-1990), Founder and Owner
`
`at PacMark Plastic Industries (1987-1989), Technical Manager at MediLaser
`
`(1987), and Apprentice Electronics Technician at Metal Box South Africa (1983-
`
`1986).
`
`15. In 1987, I began my career in thermoforming plastic products by
`
`starting my own plastics thick-gauge custom forming and thin-gauge packaging
`
`manufacturing business—PacMark Plastic Industries CC—in Cape Town, South
`
`Africa. PacMark Plastics provided thick-gauge thermoformed components for
`
`military, marine, and point-of-sale items, as well as thin-gauge thermoforming for
`
`the food service industry. I also designed and developed precision thermoformed
`
`plastic ammunition-related components for the South African Defense Force. At
`
`PacMark Plastics, I utilized numerous mold-making methods using wood, epoxy,
`
`and other inexpensive materials for large gas station illuminated signs (BP and
`
`Shell). I also designed and built aluminum tools for refrigerator liners as well as
`
`medical and food packaging components. PacMark Plastics became a prominent
`
`thick-gauge and plastics blister packaging business, manufacturing plastic cups for
`
`
`
`- 6 -
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
`
`air catering businesses such as South African Airways, British Airways, Lufthansa,
`
`and American Airlines.
`
`16. By the 1990s, I served as an Engineering Manager at various plastics
`
`packaging manufacturing firms in Europe. From 1991 to 1994, I was an
`
`Engineering Manager at Inde Plastik, located at Chelmsford, United Kingdom and
`
`Aachen, Germany. As Engineering Manager, I commissioned new thermoforming
`
`factories, where I installed factory service systems (e.g., electric, water, centralized
`
`vacuum and compressed air systems), reconditioned thermoforming machinery,
`
`and manufactured cake domes, sandwich wedges, and other confectionary
`
`packaging products using orientated polystyrene. I also managed the production of
`
`food packaging products made out of PVC, HIPS, and OPS.
`
`17. From 1994 to 1996, I was Plastics Division Engineer Manager at Matrix
`
`Industries located at Wales, United Kingdom. As Plastics Division Engineer
`
`Manager, I oversaw the production of high quality plastic trays for the horticultural
`
`industry and upgraded thermoforming machinery. I gained experience in co-
`
`extrusion of plastic sheet for thermoforming, matched metal- and plug-assisted
`
`mold designs, and material handling systems for co-extrusion and injection
`
`molding processes. While at Matrix Industries, I started leading coursework over
`
`injection molding and thermoforming processes for engineers and technicians.
`
`During this time, I was also contracted to Rigo Machinery based in Vigevano,
`
`
`
`- 7 -
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
`
`Italy, manufacturers of high-speed large bed, thick-gauge machinery, specializing
`
`in vacuum-formed hot tubs and refrigerator liners.
`
`18. From 1997 to 1999, I served both as a Project Manager and a Product
`
`Specialist at Sencorp Systems in Hyannis, Massachusetts. As the Product
`
`Specialist at Sencorp, I was responsible for special projects for many customers
`
`worldwide and gained extensive experience with the heating, forming, and
`
`trimming of most plastic materials, including PVC, PET, APET, PETG, REPT, PP,
`
`HIPS, K-Resin, CPET, OPS, and Foamed Core sheet. As Project Manager, I
`
`assisted the design and development of a highly specialized thermoformer
`
`(HP1000) contact heating machine for the conversion of emerging polyethylene
`
`and polypropylene materials. I also setup machinery, commissioned machinery,
`
`and implemented the in-house training for customers worldwide.
`
`19. After leaving Sencorp in 1999, I worked as a Thermoforming and
`
`Extrusion Product Specialist with numerous thermoforming and extrusion
`
`machinery OEMS, such as Commodore Machine Company and Berlyn Extruders.
`
`At Commodore Machine Company, we developed machinery for the extrusion of
`
`single and multilayer foamed sheets for the thermoforming machinery. We
`
`developed processes for both open and closed cell sheets for thermoforming. At
`
`Commodore, we also developed machinery and tooling for the Match Metal foam
`
`sheet forming industry.
`
`
`
`- 8 -
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
`
`20. From 2003 to 2005, I served as Vice President of Engineering at Zade
`
`Pack in Miami Lakes, Florida. As Vice President of Engineering, I designed the
`
`layout of production areas to ensure efficient production flow pattern. I managed
`
`installation of various equipment, including sheet extrusion line, cup
`
`thermoforming machinery, sleeve wrapping machinery, compressed air, electrical,
`
`and cooling water systems. I also coordinated with customers to ensure the
`
`successful launch of new products and managed the daily production of sheets and
`
`cups.
`
`21. From 2005 to 2009, I served as President at Global Thermoforming
`
`Technologies, Inc. in Fort Lauderdale, Florida. As President, I conducted hands-on
`
`thermoforming training for clients worldwide. I assisted numerous companies with
`
`product designs, product launches, and special projections. Some of my successful
`
`thin-gauge product designs and launches included Nestle Dibs, Rich Products
`
`whipped topping, Kroger Foods cottage cheese, Horizon Organic yogurt, Kozy
`
`Shack rice pudding, Neco Foods soup cups, Braun Ear Temperature Probe, Bayer’s
`
`medical devices, KAZ’s medical devices, and packaging for Costco, Walmart, and
`
`Amazon. I also commissioned and installed extrusion and thermoforming facilities,
`
`and trained thermoforming and extrusion operators for several large
`
`thermoforming companies, such as Mullinix Packages and Tegrant Alloyd Brands.
`
`I further consulted clients on various topics, including manufacturing plant setup,
`
`
`
`- 9 -
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
`
`machinery surveying, training program development, and new product- and
`
`production-efficiency evaluation in both the thin- and thick-gauge sectors.
`
`22. From 2009 to 2010, I served as General Manager at Mullinix Packages
`
`Inc. in Miami Lakes, Florida. As General Manager, I successfully turned around a
`
`recently acquired, unprofitable plastics food packaging facility by improving
`
`production efficiencies and increasing product sales. Here, I developed new eco-
`
`friendly, thin-walled thermoformed products wrapped in removable paper sleeves
`
`for food products.
`
`23. From 2011 to 2012, I served as President at uVu Technologies LLC in
`
`Boca Raton, Florida. As President, I implemented thermoformed product solutions
`
`through the entire product development lifecycle including 3D design and printer
`
`prototyping, prototype tooling, final tooling design, and implementation. I
`
`managed various technology divisions, including thermoforming process
`
`monitoring systems, thermoforming product development laboratory, and software
`
`development.
`
`24. From 2013 to 2018, I served as Senior Technology Director at First
`
`Quality Packaging Solutions LLC in Riviera Beach, Florida. As Senior
`
`Technology Director, I was responsible for new plant setup and ongoing
`
`production development. I developed state-of-the-art productions for high-volume,
`
`inline-extruded thermoforming equipment.
`
`
`
`- 10 -
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
`
`25. I am a co-inventor of a U.S. Patent relating to thermoformed products:
`
`U.S. Patent No. 8,479,948, titled “Closure lid with identifying means,” filed April
`
`26, 2012. I am a named inventor on sixteen (16) U.S. Patents: US10196181B2,
`
`US10772865B2, US8479948B2, US9624011B2, US10196181B2,
`
`US10773865B2, US9868571B2, USD766086S1, USD766087S1, USD770279S1,
`
`USD778115S1, USD778154S1, USD778155S1, USD778722S1, USD781703S1,
`
`USD782303S1.
`
`26. I have authored or co-authored numerous journal articles for the
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`Thermoforming Quarterly Magazine Whitepapers.
`
`27. I have been a member of the Society of Plastics Engineers,
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`Thermoforming Division for 24 years, where I served as Chairman of the Board
`
`from 2013 to 2016. I also received numerous Thermoforming Division Awards for
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`Parts Design Competitions and the Society of Plastics Engineers Appreciation
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`Award.
`
`28. In preparing this Declaration, I have reviewed the ’186 and ’834 patents,
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`and I have considered each of the documents cited herein, in light of general
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`knowledge in the art (i.e., field) before October 29, 2004. In formulating my
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`opinions, I have relied upon my more than 30 years of experience, education, and
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`knowledge in the relevant art. In formulating my opinions, I have also considered
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`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
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`the viewpoint of a person of ordinary skill in the art (“POSA”) before October 29,
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`2004.
`
`29. I am being compensated for the services I am providing for Petitioner at
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`my standard consulting rate of $695 per hour. My compensation is not contingent
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`upon my performance, the outcome of this inter partes review or any other
`
`proceedings, or any issues involved in or related to this inter partes review or any
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`other proceedings.
`
`III. Legal Principles
`A. Obviousness
`30. It is my understanding that obviousness is a basis for unpatentability. I
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`understand that a patent claim is unpatentable if the differences between the
`
`claimed subject matter and the prior art are such that the claimed subject matter as
`
`a whole would have been obvious before the effective filing date of the claimed
`
`invention to a person having ordinary skill in the relevant art. I understand that an
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`obviousness analysis should consider the scope and content of the prior art, the
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`level of ordinary skill in the art, the differences between the claimed subject matter
`
`and the prior art, and any secondary considerations of nonobviousness which
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`include, for example, commercial success, praise of the invention, a long-felt need,
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`or failure of others. I understand that obviousness can be based on a single prior-art
`
`reference or a combination of references that either expressly or inherently disclose
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`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
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`or suggest all limitations of the claimed invention. In an obviousness analysis,
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`inferences and creative steps that a POSA would employ can be taken into account.
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`I understand that a prior-art reference is available for obviousness evaluation not
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`only for what the reference discloses but also for what the reference suggests.
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`31. I also understand that design incentives and other market forces can
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`prompt adoptions and variations of a work even if that work is in another field of
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`endeavor. If a POSA can implement a predictable variation, the variation is
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`obvious and not patentable. Similarly, an improvement to one device is obvious to
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`apply to improve similar devices unless the technique requires more than ordinary
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`skill.
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`32. I understand that where the only difference between the prior art and the
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`claims was a recitation of relative dimensions of the claimed device and a device
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`having the claimed relative dimensions would not perform differently than the
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`prior-art device, the claimed device is not patentably distinct from the prior-art
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`device. Nor does scaling a known article distinguish the new article over the prior
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`art.
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`33. I understand that the size, shape, or configuration of a claimed structure
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`may be a matter of design choice that a POSA would have found obvious absent
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`persuasive evidence that a particular size, shape, or configuration of the claimed
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`subject matter was significant or produced unexpected functionality or results.
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`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
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`34. I understand that it may be obvious to try a solution even if that solution
`
`was significantly more expensive. I understand that the focus of the obviousness
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`analysis is on technical feasibility, not economic feasibility.
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`35. I also understand that a patent claim is unpatentable as obvious if the
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`differences between the invention and the prior art are such that the subject matter
`
`as a whole would have been obvious at the time of the invention to a POSA to
`
`which the subject matter pertains.
`
`36. I understand that whether there are any relevant differences between the
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`prior art and the claimed invention is to be analyzed from the view of a person of
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`ordinary skill in the art at the time of the invention. I understand that a person of
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`ordinary skill in the art is a hypothetical person who is presumed to be aware of all
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`of the pertinent art at the time of the invention. I understand that the person of
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`ordinary skill is not an automaton and may be able to fit together the teachings of
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`multiple references employing ordinary creativity and common sense. And I
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`understand that a POSA has the ability to use familiar items with obvious uses in
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`another context or beyond their primary purposes.
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`37. I understand that I do not need to look for a precise teaching in the prior
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`art directed to the subject matter of the claimed invention. I understand that I may
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`take into account the inferences and creative steps that a person of ordinary skill in
`
`the art would have employed in reviewing the prior art at the time of the invention.
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`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
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`For example, I understand that if the claimed invention combined elements known
`
`in the prior art and the combination yielded results that were predictable to a
`
`person of ordinary skill in the art at the time of the invention, then this evidence
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`would make it more likely that the claim was obvious. On the other hand, I
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`understand that if the combination of known elements yielded unexpected or
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`unpredictable results, or if the prior art teaches away from combining the known
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`elements, then this evidence would make it more likely that the claim that
`
`successfully combined those elements was not obvious. I understand that hindsight
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`must not be used when comparing the prior art to the invention for obviousness.
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`38. I further understand that whether a prior-art reference teaches away
`
`from the claimed invention is a factor to be considered in determining obviousness.
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`I also understand that it is improper to combine references that teach away from
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`their combination. I understand that, though a reference may be said to teach away
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`when a person of ordinary skill, upon reading the reference, would be discouraged
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`from following the path set out in the reference, the mere disclosure of alternative
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`designs does not teach away. I understand that in order for a reference to teach
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`away, the reference must criticize, discredit, or otherwise discourage the solution
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`claimed.
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`

`
`B. Motivation to Combine
`39. I understand that obviousness may be shown by demonstrating that it
`
`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
`
`would have been obvious to modify what is taught in a single piece of prior art to
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`create the patented invention. I understand that obviousness may also be shown by
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`demonstrating that it would have been obvious to combine the teachings of more
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`than one piece of prior art. I understand that a claimed invention may be obvious if
`
`some teaching, suggestion, or motivation exists that would have led a person of
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`ordinary skill in the art to combine the applied references. I also understand that
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`this suggestion or motivation may come from sources such as explicit statements in
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`the prior art, or from the knowledge of a person having ordinary skill in the art.
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`Alternatively, I understand that any need or problem known in the field at the time
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`and addressed by the patent may provide a reason for combining elements of the
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`prior art. I also understand that when there is a design need or market pressure, and
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`there are a finite number of predictable solutions, a person of ordinary skill may be
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`motivated to apply both their skill and common sense in trying to combine the
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`known options in order to solve the problem.
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`40. In determining whether a piece of prior art would have been combined
`
`with other prior art or with other information within the knowledge of a person
`
`having ordinary skill in the art, I understand that the following are examples of
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`approaches and rationales that may be considered:
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`IPR2020-01139 & IPR2020-01142
`Declaration of Mark Strachan
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`• Combining prior art elements according to known methods to yield
`
`predictable results;
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`• Simple substitution of one known element for another to obtain predictable
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`results;
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`• Use of a known technique to improve similar devices, methods, or products
`
`in the same way;
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`• Applying a known technique to a known device, method, or product ready
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`for improvement to yield predictable results;
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`• Applying a technique or approach that would have been “obvious to try”
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`(e.g.