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 DAN PERREAULT 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
`
`EX1044
`Yita v. MacNeil
`IPR2020-01139
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`TABLE OF CONTENTS
`
`I.
`II.
`III.
`
`Introduction ................................................................................................. 1
`Qualifications and Experience ..................................................................... 3
`Legal Principles ........................................................................................... 8
`A.
`Obviousness ....................................................................................... 8
`B. Motivation to Combine .....................................................................11
`
`IV.
`V.
`
`Level of Ordinary Skill in the Art ...............................................................13
`A POSA would have had the tools and the skills to obtain accurate
`three-dimensional position data of a vehicle foot well and to convert
`three-dimensional position data to a mold to create a thermoformed
`floor tray as of 2004. ...................................................................................14
`A.
`Portable coordinate measuring machines were readily available
`and commonly used in the automobile industry as of 2004. ..............16
`Computer-aided design software was readily available and
`commonly used to convert scan data to make an accurate mold
`as of 2004. ........................................................................................24
`VI. A POSA would have had an expectation of success in combining
`Rabbe, Yung, and Gruenwald to achieve the conformance limitations. .......33
`VII. All the steps of MacNeil’s mold making method were common
`techniques used in prototyping automobile accessories. ..............................36
`A.
`Obtaining accurate three-dimensional positional data of
`complex surfaces, including a vehicle foot well surface, was
`well within the level of ordinary skill in the art as of 2004. ...............38
`Converting three-dimensional positional data into a CAD model
`for producing a custom fit mold surface was well within the
`level of ordinary skill in the art as of 2004. .......................................39
`
`B.
`
`B.
`
`i
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`VIII. A POSA in 2004 would have been able to easily scan the Lada Niva
`foot wells with a portable coordinate measuring machine and use the
`data to create an accurate mold for a thermoformed floor tray. ...................44
`IX. Conclusion ..................................................................................................52
`
`ii
`
`

`

`Case No.
`
`IPR2020-01139
`
`IPR2020-01139
`IPR2020-01139
`IPR2020-01142
`
`IPR2020-01142
`IPR2020-01142
`IPR2020-01139
`
`IPR2020-01142
`
`IPR2020-01139
`IPR2020-01142
`IPR2020-
`01139, -01142
`
`IPR2020-
`01139, -01142
`
`IPR2020-
`01139, -01142
`
`IPR2020-01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`
`Exhibit/Pa
`per No.
`3
`17
`29
`3
`17
`28
`1001
`
`1001
`1003
`1003
`
`1005
`
`1006
`
`1007
`
`1011
`
`1045
`
`1047
`
`1049
`
`1060
`
`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`LIST OF MATERIALS CONSIDERED
`
`
`Description
`
`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
`Patent Owner’s Response (Redacted)
`U.S. Patent No. 8,382,186 to MacNeil et al., issued
`February 26, 2013 (“’186 Patent”)
`U.S. Patent No. 8,833,834 to MacNeil et al., issued
`September 16, 2014 (“’834 Patent”)
`Declaration of Paul E. Koch, Ph.D.
`Declaration of Paul E. Koch, Ph.D.
`French Patent Application Pre-Grant Publication
`No. 2547252 to Rabbe, published December 14,
`1984, with attached certified English-language
`translation (“Rabbe”)
`U.S. Patent Application Pre–Grant Publication No.
`2002/0045029 A1 to Yung, published April 18,
`2002 (“Yung”)
`Gruenwald, G., Thermoforming: A Plastics
`Processing Guide, CRC Press, 2nd Edition, 1998
`(“Gruenwald”)
`U.S. Patent No. 2,657,948 to Sturtevant, issued
`November 3, 1953 (“Sturtevant”)
`Curriculum vitae of Dan Perreault
`Transcript of the Deposition of Ray Sherman, taken
`July 28, 2021
`Transcript of the Deposition of Tim A. Osswald,
`Ph.D., taken August 5, 2021
`FaroArm Titanium & Platinum Brochure, revised
`July 30, 2004
`
`iii
`
`

`

`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
`
`Exhibit/Pa
`per No.
`1073
`
`1074
`
`1076
`
`1077
`
`1078
`
`1079
`
`1080
`
`1081
`
`1082
`
`1083
`
`1086
`
`1089
`
`1090
`
`1091
`
`2041
`
`2042
`
`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`Description
`
`U.S. Patent No. 6,073,056 to Gawronski et al.
`
`U.S. Patent No. 3,944,798 to Eaton
`
`U.S. Patent No. 5,528,505 to Granger et al.
`
`U.S. Patent No. 5,402,582 to Raab
`Adams, Larry, “Competition Rising in Portable
`CMMs,” Quality Magazine, 2003
`“Coordinate Measuring Machine has portable
`design,” Romer, Inc., 2004, accessed on July 23,
`2021 at
`https://news.thomasnet.com/fullstory/coordinate-
`measuring-machine-has-portable-design-455365
`U.S. Patent No. 5,363,159 to Melvin
`International Patent Publication No. WO 99/25536
`to Flint et al.
`U.S. Patent No. 6,377,865 to Edelsbrunner et al.
`
`Geomagic Studio product sheet, 2003
`
`U.S. Patent No. 4,575,330 to Hull
`IMEdit™ Polygon-editing Software Reference
`Guide Version 8.0 for Windows, InnovMetric
`Software Inc., July 2003.
`IMMerge™ Polygon-editing Software Reference
`Guide Version 8.0 for Windows, InnovMetric
`Software Inc., July 2003.
`Polyworks/Modeler™ V8.0 Beginner’s Guide,
`InnovMetric Software Inc., August 2003.
`Declaration of Tim A. Osswald, Ph.D.
`
`Declaration of Ryan Granger (Redacted)
`
`iv
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`Description
`
`Declaration of Ray Sherman
`
`Exhibit/Pa
`per No.
`2043
`
`2126
`
`Corrected Declaration of Ryan Granger (Redacted)
`
`Case No.
`
`IPR2020-
`01139, -01142
`IPR2020-
`01139, -01142
`
`v
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`
`I, Dan Perreault, 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. 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, Petition, 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-
`
`01142, EX1005) in view of Yung (IPR2020-01142, EX1006) and Gruenwald
`
`1
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`(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
`
`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, Institution Decision, 2; IPR2020-01142, Institution Decision, 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”)
`
`
`1 I understand that both proceedings cite to common materials, including Rabbe,
`
`Yung, Gruenwald, and Sturtevant, and that these common materials have the same
`
`exhibit numbers in both proceedings. See IPR2020-001139, Petition, iv-v;
`
`IPR2020-01142, Petition, vi-vii. Accordingly, in the remainder of my Declaration,
`
`I will refer to each of these materials by its exhibit number without specifying the
`
`proceeding number.
`
`2
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`along with declarations from Dr. Osswald (EX2041), Mr. Granger (EX2042)2, and
`
`Mr. Sherman (EX2043) in support of the POR.
`
`6.
`
`I have been asked to provide my technical review, analysis, insights, and
`
`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 obtaining three-dimensional position data and
`
`creating CAD files from existing parts for manufacturing products.
`
`7. My work on this case is being billed at a rate of $225 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 1045. While not intended to be exhaustive, my CV provides a
`
`substantially complete list of my education, relevant experience, academic and
`
`
`2 I understand that a corrected declaration was submitted for Mr. Granger as
`
`EX2126. In the remainder of my declaration, I cite to EX2126.
`
`3
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`employment history, publications, professional activities, and speaking
`
`engagements.
`
`9.
`
`I am an expert in many aspects of metrology and engineering design,
`
`including three-dimensional scanning, computer-aided design modeling, three-
`
`dimensional printing, and prototyping. I have been an expert since before the
`
`earliest claimed priority date of the ’186 and ’834 patents, October 29, 2004.
`
`10. I received a Bachelor of Science in Aeronautical Engineering from the
`
`Embry-Riddle Aeronautical University in 1989. My studies concentrated on
`
`engineering design, aerodynamics, aircraft structures, computer-aided design, and
`
`finite element analysis.
`
`11. I am the founder and currently the President at NeoMetrix Technologies,
`
`Inc., and I have been providing engineering services in the field of prototyping and
`
`metrology for over 25 years, including 11 years by the year 2004. NeoMetrix
`
`provides a wide array of engineering services for rapid product development,
`
`including three-dimensional scanning, computer-aided inspection, on-site
`
`inspection, and professional training. As the founder of NeoMetrix, I built the
`
`organization from the ground up, going from a solo operation to leading a
`
`reputable engineering team that has been providing engineering solutions for a host
`
`of world class companies, such as Disney, Lockheed Martin, Northrop Grumman,
`
`and Johnson & Johnson.
`
`4
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`12. In addition to serving as the President at NeoMetrix Technologies, Inc.
`
`(2003-present), my industry experience includes Sales Director at Direct
`
`Dimensions (2002-2003), Director in Applications Engineering at FARO
`
`Technologies (1997-2002), and Applications Engineer at FARO Technologies
`
`(1993-1997).
`
`13. I began my career in the metrology and engineering design industry by
`
`serving as an applications engineer for FARO Technologies, where I worked
`
`hands-on with various portable coordinate measuring machines. I specifically
`
`developed expertise in using the renowned FaroArm®—a portable, multi-jointed
`
`arm with a three-dimensional scanner/probe—for industrial applications. From
`
`1993 to 1997, I traveled to various manufacturing sites throughout the United
`
`States, Latin America, and Europe to assist in developing applications to solve real
`
`manufacturing-related metrology issues, particularly in the automotive and
`
`aerospace industries. I also worked closely with FARO software engineers to adapt
`
`a medical measurement tool for industrial application.
`
`14. By 1997, I was promoted to Director of Application Engineering at
`
`FARO. In this role, I recruited, hired, trained and led a team of highly skilled
`
`applications engineers to promote the FaroArm® as the new standard in
`
`manufacturing metrology. I developed and deployed comprehensive training
`
`5
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`curriculum for data collection, computer-aided design part inspection, and sheet
`
`metal measurement.
`
`15. Before founding NeoMetrix Technologies, I also served as the Sales
`
`Director at Direct Dimensions, where I led sales of the portable coordinate
`
`measurement machines (e.g., FaroArm®), laser scanners (e.g., Perceptron &
`
`Minolta 3D Laser Scanners), and point cloud processing software (e.g.,
`
`Geomagic™ and Polyworks™ software).
`
`16. I am a co-inventor of two U.S. Patents relating to methods of using
`
`coordinate measuring machines: (1) U.S. Patent No. 6,820,346, titled “Method,
`
`System, and Storage Medium for Providing an Executable Program to A
`
`Coordinate Measurement System,” filed August 26, 2003; and (2) U.S. Patent No.
`
`6,879,933, titled “Method and System for Assisting a User Taking Measurements
`
`Using a Coordinate Measurement Machine,” filed November 15, 2002.
`
`17. I also have specific design experience with scanning vehicle foot wells
`
`in order to produce thermoformed vehicle floor trays through my work with Lund
`
`International. In 2007, I was involved in the sale of a Z-Corp Z-Scanner 700
`
`(rebranded Creaform HandyScan) and Geomagic Studio to Lund International for
`
`the purpose of scanning vehicle foot wells in order to develop form-fitting floor
`
`trays. I assisted Lund technicians in the development of a workflow to go from raw
`
`3D scanned data to a CAD surface model of the foot well for use in the design of
`
`6
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`the floor tray. I then trained Lund operators in the procedure. Although this
`
`development and training took place after October 2004, the same tools and skills
`
`to collect and convert raw 3D scanned data to a CAD surface model of the foot
`
`well to design a floor tray was available to a POSA prior to October 2004.
`
`18. I am very familiar with, and have practical commercial experience with,
`
`three-dimensional scanning, three-dimensional modeling, and rapid prototyping as
`
`of the earliest claimed priority date of the ’186 and ’834 patents.
`
`19. In preparing this Declaration, I have reviewed the ’186 and ’834 patents,
`
`and I have considered each of the documents cited herein, in light of general
`
`knowledge in the art before October 29, 2004. In formulating my opinions, I have
`
`relied upon my more than 25 years’ of experience, education, and knowledge in the
`
`relevant art. In formulating my opinions, I have also considered the viewpoint of a
`
`person of ordinary skill in the art (“POSA”) before October 29, 2004.
`
`20. I am being compensated for the services I am providing for Petitioner at
`
`my standard consulting rate of $225 per hour. My compensation is not contingent
`
`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
`
`other proceedings.
`
`7
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`
`III. Legal Principles
`A. Obviousness
`21. It is my understanding that obviousness is a basis for unpatentability. I
`
`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
`
`obviousness analysis should consider the scope and content of the prior art, the
`
`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
`
`include, for example, commercial success, praise of the invention, a long-felt need,
`
`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
`
`or suggest all limitations of the claimed invention. In an obviousness analysis,
`
`inferences and creative steps that a POSA would employ can be taken into account.
`
`I understand that a prior art reference is available for obviousness evaluation not
`
`only for what the reference discloses but also for what the reference suggests.
`
`22. I also understand that design incentives and other market forces can
`
`prompt adoptions and variations of a work even if that work is in another field of
`
`endeavor. If a POSA can implement a predictable variation, the variation is
`
`8
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`obvious and not patentable. Similarly, an improvement to one device is obvious to
`
`apply to improve similar devices unless the technique requires more than ordinary
`
`skill.
`
`23. I understand that where the only difference between the prior art and the
`
`claims was a recitation of relative dimensions of the claimed device and a device
`
`having the claimed relative dimensions would not perform differently than the
`
`prior art device, the claimed device is not patentably distinct from the prior art
`
`device. Nor does scaling a known article distinguish the new article over the prior
`
`art.
`
`24. I understand that the size, shape, or configuration of a claimed structure
`
`may be a matter of design choice that a POSA would have found obvious absent
`
`persuasive evidence that a particular size, shape, or configuration of the claimed
`
`subject matter was significant or produced unexpected functionality or results.
`
`25. 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
`
`analysis is on technical feasibility, not economic feasibility.
`
`26. I also understand that a patent claim is unpatentable as obvious if the
`
`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.
`
`9
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`27. I understand that whether there are any relevant differences between the
`
`prior art and the claimed invention is to be analyzed from the view of a person of
`
`ordinary skill in the art at the time of the invention. I understand that a person of
`
`ordinary skill in the art is a hypothetical person who is presumed to be aware of all
`
`of the pertinent art at the time of the invention. I understand that the person of
`
`ordinary skill is not an automaton and may be able to fit together the teachings of
`
`multiple references employing ordinary creativity and common sense. And I
`
`understand that a POSA has the ability to use familiar items with obvious uses in
`
`another context or beyond their primary purposes.
`
`28. I understand that I do not need to look for a precise teaching in the prior
`
`art directed to the subject matter of the claimed invention. I understand that I may
`
`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.
`
`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
`
`would make it more likely that the claim was obvious. On the other hand, I
`
`understand that if the combination of known elements yielded unexpected or
`
`unpredictable results, or if the prior art teaches away from combining the known
`
`elements, then this evidence would make it more likely that the claim that
`
`10
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`successfully combined those elements was not obvious. I understand that hindsight
`
`must not be used when comparing the prior art to the invention for obviousness.
`
`B. Motivation to Combine
`29. I understand that obviousness may be shown by demonstrating that it
`
`would have been obvious to modify what is taught in a single piece of prior art to
`
`create the patented invention. I understand that obviousness may also be shown by
`
`demonstrating that it would have been obvious to combine the teachings of more
`
`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
`
`ordinary skill in the art to combine the applied references. I also understand that
`
`this suggestion or motivation may come from sources such as explicit statements in
`
`the prior art, or from the knowledge of a person having ordinary skill in the art.
`
`Alternatively, I understand that any need or problem known in the field at the time
`
`and addressed by the patent may provide a reason for combining elements of the
`
`prior art. I also understand that when there is a design need or market pressure, and
`
`there are a finite number of predictable solutions, a person of ordinary skill may be
`
`motivated to apply both their skill and common sense in trying to combine the
`
`known options in order to solve the problem.
`
`30. 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
`
`11
`
`

`

`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`having ordinary skill in the art, I understand that the following are examples of
`
`approaches and rationales that may be considered:
`
`• Combining prior art elements according to known methods to yield
`
`predictable results.
`
`• Simple substitution of one known element for another to obtain predictable
`
`results.
`
`• Use of a known technique to improve similar devices, methods, or products
`
`in the same way.
`
`• Applying a known technique to a known device, method, or product ready
`
`for improvement to yield predictable results.
`
`• Applying a technique or approach that would have been “obvious to try”
`
`(e.g., choosing from a finite number of identified, predictable solutions,
`
`with a reasonable expectation of success).
`
`• Known work in one field of endeavor may prompt variations of it for use
`
`in either the same field or a different one based on design incentives or
`
`other market forces if the variations would have been predictable to a
`
`person having ordinary skill in the art.
`
`• Some teaching, suggestion, or motivation in the prior art that would have
`
`led one of ordinary skill to modify the prior art reference or to combine
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`Declaration of Dan Perreault
`prior art reference teachings to arrive at the claimed invention with a
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`reasonable expectation of success.
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`IV. Level of Ordinary Skill in the Art
`31. I understand that the patent must be read and understood through the
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`eyes of a POSA at the time of the priority date of the claims. To determine the
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`appropriate level of a person having ordinary skill in the art, I understand that the
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`following factors may be considered: (a) the types of problems encountered by
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`those working in the field and prior art solutions thereto; (b) the sophistication of
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`the technology in question, and the rapidity with which innovations occur in the
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`field; (c) the educational level of active workers in the field; and (d) the
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`educational level of the inventor(s).
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`32. In light of the disclosed technology in the ’186 patent, in my opinion a
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`POSA would typically have a bachelor’s degree in engineering: plastics,
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`mechanical, or a closely related field, or equivalent formal training, education, or
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`practical experience in a field relating to plastic product design, material science,
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`or manufacturing. This person would also have a minimum of three to five years of
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`experience in plastics engineering, manufacturing, plastic product design, or a
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`related industry. This description is an approximation and a higher level of training
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`or practical experience might make up for less education, and vice-versa. In my
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`Declaration of Dan Perreault
`opinion, this same level of education, experience, and/or skill would have also
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`applied to a POSA for the ’834 patent.
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`33. I have reviewed the definition for a POSA for the ’186 and ’834 patents
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`proposed by the Patent Owner, (IPR2020-01139, Patent Owner’s Response
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`(“POR”), 7; IPR2020-01142, POR, 7-8,) and the definition for a POSA applied by
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`the Board in the Institution Decisions (“DI”) for the ’186 and ’834 patents,
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`(IPR2020-01139, DI, 8-10; IPR2020-01142, DI, 9-10). Whether my definition for
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`a POSA or Patent Owner’s is applied, my analysis and opinions provided herein
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`would remain the same. I note that Patent Owner’s declarant, Dr. Osswald, stated
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`that a POSA would have understood that coordinate measurement systems were
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`used to measure geometries, used CAD software to create a digital model of a
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`thermoforming mold, and used that CAD model to create the mold for
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`thermoforming a part. EX1049, 95:6-96:5. Having worked with POSAs in the art
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`of thermoforming throughout my career, I have also found POSAs to have these
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`skills.
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`V. A POSA would have had the tools and the skills to obtain accurate
`three-dimensional position data of a vehicle foot well and to convert three-
`dimensional position data to a mold to create a thermoformed floor tray as of
`2004.
`34. It is my understanding that MacNeil alleges that the techniques for
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`thermoforming a vehicle floor tray from a single sheet of thermoplastic material to
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`closely conform to a vehicle foot well were not within the knowledge or skill set of
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`Declaration of Dan Perreault
`a POSA prior to October 2004. IPR2020-01139, POR, 48-53; IPR2020-01142,
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`POR, 49-55; EX2126, ¶¶49-68; EX2043, ¶¶133-156. Specifically, MacNeil’s
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`declarant, Mr. Sherman, contends that there were two technical barriers to meeting
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`the conformance standards: (1) no known techniques to obtain accurate three-
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`dimensional position data for a vehicle foot well, and (2) no known techniques to
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`use three-dimensional position data to create a mold for thermoforming the floor
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`tray. EX2043, ¶135.
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`35. Mr. Sherman’s assertions are incorrect and fail to take into account the
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`state of the technology as of October 2004. First, portable coordinate measuring
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`machines (CMM) were commercially available and commonly used as of 2004 for
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`obtaining accurate three-dimensional data of parts that typically could not be
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`measured by stationary coordinate measuring machines. Second, scan data
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`processing software programs were commercially available and commonly used as
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`of 2004 to convert the scanned data to a CAD (computer aided design) file, which
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`would be used to design new parts that precisely fit the mating component which
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`was originally scanned. The CAD design of the new part would be transferred to a
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`CAM (computer aided manufacturing) software program that is ultimately used to
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`develop the G-code used in the controller of a milling machine—a practice that
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`was common as of 2004 for prototyping tools and products, such as a mold for an
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`automotive accessory. Thus, a POSA would have had the tools and the skills to
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`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`obtain accurate three-dimensional position data of a vehicle foot well and to
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`convert that three-dimensional position data to make a mold for thermoforming a
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`vehicle floor tray as of 2004, as further explained below.
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`A. Portable coordinate measuring machines were readily available and
`commonly used in the automobile industry as of 2004.
`36. Well before the time of the alleged invention—October 2004—various
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`methods and systems were commercially available for obtaining three-dimensional
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`data of an article of manufacture. EX1073, 1:13-15. Indeed, the origin of the
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`portable CMM traces back to at least the early 1970s when ROMER Inc. co-
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`founder Homer Eaton patented the Vector1 tube measuring arm—an articulated
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`arm with a working head for measuring a vehicle exhaust pipe. EX1074, Abstract.
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`By the 1990s, portable CMM technology developed with the advancement of
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`computers and measuring devices such that spatial data of even the most complex,
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`confined surfaces could be acquired digitally. See e.g., EX1078, 0001-2. These
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`instruments captured the dimensional characteristics of an object for use in both
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`reverse engineering and computer aided inspection. A POSA would have
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`understood that “reverse engineering” in this type of work means the creation of
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`CAD data from an existing object.
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`37. Some examples of measuring devices employed in portable CMMs as of
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`2004 included contact sensors and non-contact sensors. EX1060; EX1073, 1:15-
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`17. Contact measurements were generally measured using a hard probe (e.g.,
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`IPR2020-01139 & IPR2020-01142
`Declaration of Dan Perreault
`optical probe). EX1060, 3; EX1076, 1:12-21. Non-contact sensors included laser
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`scanners and camera-based Moire fringe interferometry systems. EX1073, 1:13-28.
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`Laser scanning is an optical measurement technique that steers laser beams with a
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`laser rangefinder to take distance measurements in three dimensions (e.g., X, Y,
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`and Z axes). The laser scanner traverses a scan path over the surface of the article,
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`and at selectable distances along the path, point values are taken, resulting in the
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`generation of scan data in a digitized format. EX1073, 1:18-28. Moire fringe
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`interferometry is another optical measurement technique that uses coherent light to
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`produce a high-contrast, two-beam optical interference pattern. EX1073, 1:29-34,
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`4:10-14. The measuring device generates three-dimensional characteristics of the
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`target article based on the interference pattern. When operating the portable CMM,
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`the probe or scanning device movement is typically tracked relative to a reference
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`coordinate system resulting in a collection of data points and information that may
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`be used to develop an accurate electronic representation of the object. This
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`development in portable CMMs enabled manufacturers in the 1990s and early
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`2000s to obtain accurate three-dimensional data of complex surfaces, particularly
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`surfaces of automobile parts. See EX1079, 1.
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`38. Along with the development of measuring devices, the emergence of the
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`articulated arm technology in the 1980s and 1990s allowed CMMs to become
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`mobile. See e.g., EX1077, Abstract; EX1076, Abstract. Mobilizing three-
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`IPR2020-01139 & IPR2020-01142
`Declaration o