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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`YITA LLC,
`Petitioner
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`v.
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`MACNEIL IP LLC,
`Patent Owner
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`
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`Case IPR2020-01139
`U.S. Patent No. 8,382,186
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`PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2020-01139
`U.S. Patent No. 8,382,186
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`TABLE OF CONTENTS
`
`a)
`
`b)
`c)
`d)
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`2.
`
`3.
`
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`
`
`I.
`II.
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`B.
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`C.
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`B.
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`INTRODUCTION ........................................................................................ 1
`THE PRIOR-ART COMBINATION DISCLOSES EVERY CLAIM
`ELEMENT. ................................................................................................. 2
`A.
`Rabbe discloses the conformance limitations. .................................... 3
`1.
`Both Rabbe translations disclose the conformance limitations. 3
`2. MacNeil’s comparisons of Rabbe’s patent drawings to the Lada
`Niva are irrelevant. .................................................................. 7
`The prior art combination discloses a thermoformed floor tray with
`integrally formed panels..................................................................... 9
`III. MACNEIL’S NO-MOTIVATION-TO-COMBINE ARGUMENTS FAIL. .. 9
`A. MacNeil’s arguments use an improper bodily incorporation approach,
`ignore background knowledge, and misapply teaching away. ............ 9
`B. MacNeil’s technical assertions are inaccurate. ..................................12
`1.
`Rabbe is not limited to thermosets; Rabbe discloses materials
`useful in thermoforming..........................................................13
`Yung is not limited to compression molding. ..........................16
`Foam sheets were regularly thermoformed without losing
`their waterproof characteristic. ...........................................16
`Laminate products were regularly thermoformed. ..............18
`Yung’s embossing suggests thermoforming. ......................19
`Yang’s mention of compression molding confirms that Yung
`is not intended to be limited to compression molding. .......20
`Yung’s materials would have provided the appropriate amount
`of elasticity and abrasion resistance. .......................................21
`The Petition showed multiple motivations to combine, and MacNeil
`has not overcome any of them. ..........................................................22
`IV. A POSA WOULD HAVE HAD A REASONABLE EXPECTATION OF
`SUCCESS. ..................................................................................................23
`A.
`Portable coordinate measuring machines were readily available and
`commonly used in the automobile industry. ......................................23
`Computer-aided design software was readily available and commonly
`used for creating accurate molds from scan data. ..............................24
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`Case IPR2020-01139
`U.S. Patent No. 8,382,186
`V. MACNEIL’S SECONDARY CONSIDERATIONS EVIDENCE IS
`GROSSLY INSUFFICIENT. ......................................................................25
`A. MacNeil did not show a nexus. .........................................................25
`B. MacNeil falls short of establishing commercial success. ...................26
`C. MacNeil’s industry praise evidence is insufficient. ...........................27
`D. MacNeil’s own evidence belies its assertion of a long-felt need. .......27
`E. MacNeil’s licensing evidence is insufficient. ....................................27
`VI. CONCLUSION ...........................................................................................28
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`Case IPR2020-01139
`U.S. Patent No. 8,382,186
`PETITIONER’S UPDATED EXHIBIT LIST
`
`
`1002
`1003
`1004
`
`1005
`
`Exhibit No. Description
`U.S. Patent No. 8,382,186 to MacNeil et al., issued February 26, 2013
`1001
`(“’186 Patent”)
`File History of U.S. Patent No. 8,382,186 (“’186 Patent File History”)
`Declaration of Paul E. Koch, Ph.D.
`U.S. Patent No. 7,444,748 to MacNeil, issued November 4, 2008
`(“MacNeil”)
`French Patent Application Pre-Grant Publication No. 2547252 to
`Rabbe, published December 14, 1984, with attached certified English-
`language translation (“Rabbe”)
`U.S. Patent Application Pre–Grant Publication No. 2002/0045029 A1
`to Yung, published April 18, 2002 (“Yung”)
`Gruenwald, G., Thermoforming: A Plastics Processing Guide, CRC
`Press, 2nd Edition, 1998 (“Gruenwald”)
`Throne, J., Technology of Thermoforming, Hanser, 1996 (“Throne I”)
`Throne, J., Understanding Thermoforming, Hanser, 2nd Edition, 2008
`(“Throne II”)
`U.S. Patent No. 2,057,873 to Atwood, issued October 20, 1936
`(“Atwood”)
`U.S. Patent No. 2,657,948 to Sturtevant, issued November 3, 1953
`(“Sturtevant”)
`U.S. Patent No. 6,793,872 to Buss, issued September 21, 2004
`(“Buss”)
`U.S. Patent No. 6,361,099 to McIntosh, issued March 26, 2002
`(“McIntosh”)
`U.S. Patent No. 4,568,581 to Peoples, issued February 4, 1986
`(“Peoples”)
`U.S. Patent No. 5,298,319 to Donahue, issued March 29, 1994
`(“Donahue”)
`DOW HDPE DGDA-5004 NT 7 Data Sheet, published October 10,
`2003
`Black Armor Web Advertisement
`Husky Liner Advertisement, August 24, 2000
`- iii -
`
`1006
`
`1007
`
`1008
`1009
`
`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
`1018
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`

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`Case IPR2020-01139
`U.S. Patent No. 8,382,186
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`1020
`
`1021
`
`1022
`
`Exhibit No. Description
`U.S. Patent No. 4,420,180 to Dupont et al., issued December 13, 1983
`1019
`(“Dupont”)
`U.S. Patent No. 4,280,729 to Morawski, issued July 28, 1981
`(“Morawski”)
`European Patent Application Publication No. 0379630 to Sagona,
`published August 1, 1990 (“Sagona”)
`File History of U.S. Patent No. 8,267,459 (“’459 Prosecution
`History”)
`U.S. Patent No. 3,390,912 to Stata, issued July 2, 1968 (“Stata”)
`German Patent Application Publication No. 4000877 to Weitbrecht et
`al., published July 18, 1991
`U.S. Patent No. 6,027,782 to Sherman, issued February 22, 2000
`Japanese Patent Application No. H11-268570 to Suzuki, published
`October 5, 1999, with attached certified English-language translation
`(“Suzuki”)
`Word Comparison of the ’703 Application as filed to the ’899
`Application as filed
`U.S. Patent No. 8,833,834 to MacNeil et al., issued September 16,
`2014 (“’834 Patent”)
`Plastic Extrusion Tolerance Guide
`Merriam-Webster's Collegiate Dictionary, Eleventh Edition, 2003
`Oxford Compact English Dictionary, First Edition, 2000
`Curriculum Vitae of Paul E. Koch, Ph.D. (“Koch CV”)
`Declaration of Sylvia Hall-Ellis, Ph.D. (“Hall-Ellis Decl.”)
`U.S. Patent No. 8,910,995 to MacNeil et al. (“’995 Patent”)
`U.S. Patent No. 6,058,618 to Hemmelgarn et al. (“Hemmelgarn”)
`Webster’s Third New International Dictionary, 1961
`Transcript of Teleconference between Board and Parties, November
`13, 2020
`Communications between MacNeil and Yita regarding the proposed
`modifications to the protective order
`Boston Patent Law Association Newsletter, Vol. 41 Issue 3 (Summer
`2010)”
`
`1023
`1024
`
`1025
`1026
`
`1027
`
`1028
`
`1029
`1030
`1031
`1032
`1033
`1034
`1035
`1036
`1037
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`1038
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`1039
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`Exhibit No. Description
`Popp, Bruce D., “Using Patents to find the Terminology You Need,”
`1040
`The ATA Chronicle, May 2009.
`Declaration of Paul E. Koch, Ph.D. in support of Petitioner’s Reply to
`Patent Owner’s Response
`Declaration of Mark Strachan in support of Petitioner’s Reply to
`Patent Owner’s Response
`Curriculum vitae of Mark Strachan
`Declaration of Dan Perreault in support of Petitioner’s Reply to
`Patent Owner’s Response
`Curriculum vitae of Dan Perreault
`Transcript of the Deposition of Bruce D. Popp, Ph.D., taken June 28,
`2021
`Transcript of the Deposition of Ray Sherman, taken July 28, 2021
`Transcript of the Deposition of Ryan Granger, taken July 1, 2021
`(CONFIDENTIAL)
`Transcript of the Deposition of Tim A. Osswald, Ph.D., taken August
`5, 2021
`Transcript of the Deposition of Samuel Shen Chong, taken August 10,
`2021
`Transcript of Interview and Witness Statement of Janina
`Kaminskiene, taken July 2, 2021
`Transcript of Interview and Witness Statement of Vladimir Orlov,
`taken August 3, 2021
`U.S. Patent No. 4,721,641 to Bailey (“Bailey”)
`U.S. Patent No. 6,953,545 to Tyler (“Tyler”)
`U.S. Patent No. 5,034,258 to Grace (“Grace”)
`U.S. Patent Application Publication 2001/0028932 to Akaike et al.
`Handbook of Plastic Foams: Types, Properties, Manufacture and
`Applications, ed. Arthur H. Landrock, Noyes Publications, 1995
`Reinkemeyer, Heiz-Gerd, “New Solutions for the Trim of
`Automotive Vehicles,” Society of Automotive Engineers, Automotive
`Engineering Congress and Exposition, 1976.
`Comparison of Exhibit 2012 and Exhibit 1006
`
`1053
`1054
`1055
`1056
`1057
`
`1058
`
`1059
`
`1041
`
`1042
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`1043
`1044
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`1045
`1046
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`1047
`1048
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`1049
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`1050
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`1051
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`1052
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`
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`U.S. Patent No. 8,382,186
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`U.S. Patent No. 8,382,186
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`Exhibit No. Description
`FaroArm Titanium & Platinum Brochure, revised July 30, 2004
`1060
`“Weathertech Raceway Laguna Seca - Monterey County, CA”
`1061
`accessed August 12, 2021 at
`https://www.co.monterey.ca.us/government/government-
`links/weathertech-raceway
`Webster’s New World Dictionary and Thesaurus, Second Edition,
`2002
`U.S. Patent No. 6,817,649 to Stanesic
`U.S. Patent No. 5,648,031 to Sturtevant et al.
`European Patent No. 0288728 to Landler
`U.S. Patent No. 5,529,826 to Tailor et al.
`International Patent Publication No. WO 2004/087804 to Walther et
`al.
`U.S. Patent No. 6,849,667 to Haseyama et al.
`U.S. Patent No. 5,378,543 to Murata et al.
`U.S. Patent No. 5,725,712 to Spain et al.
`International Patent Application Publication No. WO 93/03910 to
`Kerman
`U.S. Patent No. 5,346,278 to Dehondt
`U.S. Patent No. 6,073,056 to Gawronski et al.
`U.S. Patent No. 3,944,798 to Eaton
`ROMER Measuring Arms Portable CMMs for the shop floor,
`Hexagon Metrology
`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.
`
`1080
`1081
`
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`1062
`
`1063
`1064
`1065
`1066
`1067
`
`1068
`1069
`1070
`1071
`
`1072
`1073
`1074
`1075
`
`1076
`1077
`1078
`
`1079
`
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`Case IPR2020-01139
`U.S. Patent No. 8,382,186
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`1085
`
`1086
`1087
`
`1088
`
`1089
`
`Exhibit No. Description
`U.S. Patent No. 6,377,865 to Edelsbrunner et al.
`1082
`Geomagic Studio product sheet, 2003
`1083
`“PolyWorks the Universal 3D Metrology Software Platform for
`1084
`Manufacturing,” InnovMetric, 2009
`“RapidForm XOR/Redesign Parametric CAD Models from 3D Scan
`Data,” Direct Dimensions, 2010
`U.S. Patent No. 4,575,330 to Hull
`Exhibit A presented at Deposition of Samuel Shen Chong, August 10,
`2021
`Exhibit A presented at Deposition of Tim A. Osswald, Ph.D., August
`5, 2021
`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.
`U.S. Patent No. 5,298,321 to Isoda
`Strachan Presentation
`
`1090
`
`1091
`
`1092
`1093
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`I.
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`Case IPR2020-01139
`U.S. Patent No. 8,382,186
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`INTRODUCTION
`MacNeil has strained to salvage the ’186 patent. But many of MacNeil’s
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`arguments are irrelevant—mere distractions from the true obviousness inquiry.
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`MacNeil ignores portions of references, treats patent drawings as though they were
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`production specifications, attacks references in isolation, focuses on bodily
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`incorporation, treats a POSA as an automaton, and disregards background
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`knowledge in the art.
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` MacNeil’s remaining arguments are plain wrong. As one example, MacNeil
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`alleges that polyethylene foam cannot be thermoformed. POR, 55. But
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`polyethylene foam was regularly thermoformed and used in automobile floor liners
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`dating back to the 1970s. EX1058.
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`MacNeil also alleges that a POSA would have no reasonable expectation of
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`success in scanning a footwell and creating an accurate mold for a floor tray. But
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`the tools identified in the ’186 patent for this purpose were commercially available
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`by 2004 and well-known for these uses.
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`For any dispositive issue, MacNeil’s witnesses fail to cite evidence to
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`support their stance, and Yita’s witnesses do. MacNeil’s primary witness, Dr.
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`Osswald, provides mostly conclusory testimony that, like his testimony in a
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`previous case, “does not persuasively rely on foundational factual underpinnings”
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`and is “of very little probative value.” Donghee America, Inc. v. Plastic Omnium
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`Case IPR2020-01139
`U.S. Patent No. 8,382,186
`Advanced Innovation and Research, IPR2017-01633, Paper 34, 20, 23 (P.T.A.B.
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`
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`Jan. 2, 2019). MacNeil’s other witnesses are infected with bias: a company
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`employee (Mr. Granger), EX2126, ¶11, a vendor for WeatherTech (Mr. Sherman)
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`who personally knows MacNeil’s founder, EX1047, 30:1-7, 32:4-35:15, a Baker
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`Botts employee (Mr. Orlov), EX1052, 8:6-22, and a witness who indicated that she
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`would be paid whatever MacNeil’s attorneys deem appropriate following her
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`testimony (Ms. Kaminskiene), EX1051, 99:14-100:2.
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`The Board should find all challenged claims unpatentable.
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`II. The prior-art combination discloses every claim element.
`MacNeil alleges that three claim elements are missing from the combination:
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`(1) panels “closely conforming” to portions of a footwell; (2) a thermoformed floor
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`tray; and (3) “integrally formed” side panels.1 POR, 12-47. But each of these
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`elements is present in the combination. Pet., 35-47; EX1041, ¶17.
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`1 MacNeil proposes certain claim constructions that are different from those
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`in Yita’s petition. Yita maintains that its constructions are correct, but even under
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`MacNeil’s constructions, the claims would have been obvious. EX1041, ¶¶13-16.
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`This is especially true because certain MacNeil constructions are broader than
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`Yita’s. Id.
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`U.S. Patent No. 8,382,186
`A. Rabbe discloses the conformance limitations.
`MacNeil obtained its own translation of Rabbe and compared a 2-D patent
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`
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`drawing from Rabbe with a 3-D scan of a Lada Niva footwell, concluding that
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`Rabbe does not show “close conformance.” POR, 19, 27-41. But even MacNeil’s
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`translation discloses the “closely conforming” limitations. EX1041, ¶¶18-53. And
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`MacNeil’s comparison of Rabbe’s patent drawings to the Lada Niva scans are
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`irrelevant to obviousness. Id., ¶¶54-60.
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`1.
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`Both Rabbe translations disclose the conformance
`limitations.
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`MacNeil attempts to obscure Rabbe’s plain disclosure of close conformance.
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`MacNeil focuses on a single sentence in Rabbe, asserting that Mr. Dawson
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`incorrectly translated “sides” perfectly conforming to the vehicle’s “contour,” and
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`that this sentence should have been translated as “rims” perfectly conforming to
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`the “relief” of the vehicle’s interior. POR, 19-27; EX1005, 1:1-6; EX2024, 11:1-5.
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`But neither Yita nor the Board relied solely on this disputed sentence to teach the
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`close-conformance limitations. Pet., 10-11, 28-29, 42; DI, 14, 16, 19. Even under
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`MacNeil’s translation, Rabbe discloses the “closely conforming” limitations.
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`EX2024, 10, 11:13-17, 12:1-3, 13:7-8, 13:9-11; EX1041, ¶¶19-26.
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`Other portions of the original Rabbe translation (relied on by both Yita and
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`the Board but ignored by MacNeil) show that Rabbe discloses the conformance
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`limitations. EX1041, ¶¶20-22. For example, Yita cited at least four other portions
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`of Rabbe that disclose close conformance between Rabbe’s side panels (called
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`
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`raised edges 2) and the footwell. Pet., 10-12 (citing EX1005, Abstract, 2:8-10,
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`1:16-20, 1:24-26), 28-29 (same), 42 (citing EX1005, Abstract, 1:24-26). The Board
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`also relied on these other teachings in discussing the conformance limitations. See
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`DI, 14 (adding emphasis to other aspects of EX1005, 1:1-26 beyond the disputed
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`sentence), 16 (citing EX1005, 2:7-15), 19 (recognizing Yita’s reliance on EX1005,
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`1:24-26). Yita’s obviousness challenge is not limited to the disputed sentence for
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`close conformance.
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`Other cited portions of Rabbe disclose that:
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`• Rabbe’s raised edges are “presse[d]...against the walls,” “conform to
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`the topography of the interior and do not change the aesthetics desired
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`by the manufacturer,” EX1005, Abstract;
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`• Rabbe’s “raised edges (2) of unequal heights conform[] to the interior
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`contour of the vehicle,” id., 2:7-9;
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`• Rabbe’s protective tray “conforms to the contour of the vehicle
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`interior,” id., 1:16-20; and
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`• the “thinness of the material used only encroaches on a few
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`
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`millimeters of the space designed by the vehicle manufacturer, and
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`thus does not change the desired aesthetic aspect,” id., 1:24-26.2
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`These teachings, even without the disputed sentence, disclose that Rabbe’s side
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`panels closely conform to the vehicle footwell. EX1041, ¶¶21-22. For example,
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`because Rabbe’s “raised edges” are “presse[d]...against the walls,” a POSA would
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`have understood Rabbe’s side panels have substantial contact with the vehicle
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`footwell. EX1005, Abstract; EX1041, ¶22. Similarly, because the floor tray “only
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`encroaches on a few millimeters of the space” in the footwell, the material
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`thickness and gap between the material and the footwell would have to be at most
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`a few millimeters. EX1005, 1:24-26; EX1041, ¶¶22-25. Thus, Rabbe expressly
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`teaches that its side panels closely conform to the footwell. EX1041, ¶22. And
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`MacNeil’s argument that the flanges somehow push the sides away from the
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`footwell walls fails in view of the same explicit disclosure in Rabbe. Id., ¶¶27-29.
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`Even MacNeil’s translation teaches the conformance limitations. Id., ¶26.
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`MacNeil’s translation states that the floor tray’s stiffness “flattens the raised edges
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`against the walls” of the vehicle, EX2024, 10, 11:16-17, 13:9-11, and that the
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`“raised edges conform to the relief of the passenger compartment,” id., 10, 11:13-
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`2 Emphasis added unless noted.
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`16, 12:1-3, 13:7-8. And it states, “[t]he thinness of the material used only infringes
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`
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`a few millimeters into the space designed by the vehicle manufacturer and
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`therefore does not change the aesthetic appearance sought,” meaning the floor tray
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`must conform to the footwell. EX2024, 11:20-22; EX1041, ¶26. Thus, any
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`mistranslation was immaterial. EX1041, ¶¶26, 40-47.
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`Relatedly, MacNeil argues that Rabbe is only concerned with its side panel
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`heights conforming to footwell heights. For support, MacNeil argues that Mr.
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`Dawson’s translation of the French word “reliefs” to “contour” should have been
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`“relief.” POR, 24-26. But relief and contour are synonyms, and relief’s meaning to
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`a POSA is not limited to the heights at the upper edges of the footwell. EX1062;
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`EX2049; EX1041, ¶¶30-33.
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`MacNeil also relies on Rabbe’s claim 1 for its position, POR, 26-27, but
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`MacNeil’s reasoning crumbles at claim 2. EX1041, ¶34. Claim 1 may focus on the
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`heights of the raised edges (sides) matching the relief, but claim 2 separately
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`claims “the raised edges [sides] conform to the relief of the passenger
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`compartment.” EX2024, 13:7-8. The conformance in claim 2 is different than
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`simply matching the relief height. EX1041, ¶34. Rabbe’s “raised edges 2” refer to
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`Rabbe’s side panels, not merely the top perimeter. EX1005, FIGs. 1-5; EX2043,
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`¶111; EX1041, ¶¶27, 35-39. Indeed, in every drawing in Rabbe, reference numeral
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`2 points to the side panel, not the top perimeter, making it highly unlikely to be a
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`mistake, as MacNeil insinuates. EX1005, FIGs. 1-5; EX1041, ¶37; EX1047,
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`
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`127:14-129:15; EX1049, 171:2-172:20, 174:1-4.
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`The Petition explained in detail that conforming to a footwell’s contours was
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`well-known. See Pet., 8-12; EX1003, ¶¶56-62; EX1017, 0001; EX1018, 0001;
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`EX1013, Abstract. Additional prior art confirms this. EX1041, ¶¶48-53; EX1053,
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`2:7-19, 2:36-3:3, 3:60-65, 4:34-46, 6:1-33; EX1054, Abstract, 1:18-19; EX1055,
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`4:43-47, 4:59-61, FIG. 4; EX1025, 1:49-52, 3:29-51. MacNeil ignores this context
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`when evaluating Rabbe, but a POSA would not have. EX1041, ¶¶48-53.
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`A POSA would have readily understood Rabbe’s disclosure of conforming
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`to the contour/relief of a vehicle to be referring to the side panels—not simply the
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`top perimeter or flange. Id., ¶53.
`
`2. MacNeil’s comparisons of Rabbe’s patent drawings to the
`Lada Niva are irrelevant.
`
`MacNeil compared Rabbe’s patent drawings to scans of a physical Lada
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`Niva’s footwell and concluded that the floor tray depicted in Rabbe’s drawings
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`would not closely conform. POR, 27-42. But it is well-settled that “arguments
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`based on drawings not explicitly made to scale...are unavailing.” Nystrom v. TREX
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`Co., Inc., 424 F.3d 1136, 1149 (Fed. Cir. 2005).
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`MacNeil relies on Rabbe’s drawings as disclosing the exact configuration
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`and dimensions of Rabbe’s floor trays. POR, 27-42. But Rabbe does not indicate
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`that its drawings are to scale or drawn with any level of precision. EX1005;
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`EX2024; EX1041, ¶¶54-55. And a POSA would not have viewed them as exact,
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`
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`because there is no indication they were intended to be. EX1041, ¶55; EX1042,
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`¶59. Indeed, MacNeil’s employee-declarant, Mr. Granger, who provided the
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`comparison, admitted that Rabbe’s drawings are “not to scale.” EX2126, ¶114;
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`EX1049, 192:5-11. And although Mr. Granger protested that Rabbe’s drawings
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`“would fit like shit,” EX1048, 192:11-15, he also admitted: “I don’t know how to
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`compare a — a drawing to a scan.” Id., 194:15-17, 191:20-21. Thus, MacNeil’s
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`irrelevant comparison does not undermine Rabbe’s numerous disclosures of close
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`conformance. EX1041, ¶56.
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`Moreover, in comparing Rabbe’s patent drawings and the vehicle scan,
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`MacNeil compares many aspects of the footwell and floor tray that are not even
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`claimed as conforming. Id., ¶¶57-60. Per MacNeil, the claims only require close
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`conformance for the central panel and two side panels—not the curved transition
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`connecting these panels3. EX1001, 19:38-20:5. MacNeil’s “analysis” of multiple
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`other surfaces is another distraction.
`
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`3 MacNeil’s declarant differentiated the curved transitions from the panels
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`for the substantially uniform thickness limitation. EX2041, ¶61. Under this
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`reasoning, the recited conformance for the side panels does not include the curved
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`transitions. EX1041, ¶57.
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`B.
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`U.S. Patent No. 8,382,186
`The prior art combination discloses a thermoformed floor tray
`with integrally formed panels.
`MacNeil argues that the references do not disclose a thermoformed floor tray
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`or integrally formed panels. POR, 13-19, 42-47. These arguments pertain to
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`motivation to combine—not missing elements. Id.; EX1041, ¶¶61-62. The Petition
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`relied on the combination of Rabbe, Yung, and Gruenwald as teaching
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`thermoformed floor trays. Pet., 35-37. And the Petition explained that all the
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`panels in Rabbe’s floor tray would be integrally formed when thermoformed. Id.,
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`41. MacNeil does not dispute that Rabbe discloses a floor tray or that Gruenwald
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`discloses thermoforming. POR, 13-19. Likewise, MacNeil does not dispute that
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`thermoforming Rabbe’s floor tray would result in integrally formed panels. Id., 42-
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`47. Indeed, MacNeil’s witnesses admitted that “custom-thermoformed floor trays
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`[were] on the market” before 2004, “all of the elements of [a thermoformed] part
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`are integral,” and integral side panels were known. EX1047, 47:14-17, 56:16-
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`57:12; EX1049, 56:6-11. Thus, the proposed combination discloses each claim
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`element. EX1041, ¶¶119-121; EX1042, ¶¶44-46.
`
`III. MacNeil’s no-motivation-to-combine arguments fail.
`A. MacNeil’s arguments use an improper bodily incorporation
`approach, ignore background knowledge, and misapply teaching
`away.
`MacNeil takes an incorrect and far-too-narrow approach to obviousness. For
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`example, MacNeil alleges that “Petitioner proposes ripping the flexible, foamed PE
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`middle layer out of Yung.” POR, 62. But Yita never proposed this bodily
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`
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`incorporation of Yung and Rabbe.
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`The Petition stated: “A POSA would have also been aware of numerous
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`other prior-art floor trays made of thermoplastic using the low-cost, versatile
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`thermoforming process. This would have motivated a POSA to manufacture
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`Rabbe’s floor tray using a thermoforming process because of the suitability of
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`thermoplastics and the thermoforming process to fulfill Rabbe’s purpose.” Pet., 61-
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`62 (citations omitted). Yita did not rely on “the mere disclosure of PE” in Yung or
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`propose “ripping” anything, but rather pointed to teachings in the background art
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`showing that thermoforming thermoplastic floor trays was well-known. Id.
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`In addition to the petition-cited art, other background art confirms that floor
`
`trays were “produced to closely correspond to the shape of a vehicle floorboard”
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`such that the “complementary shape of the contoured mat mates with the vehicle
`
`floorboard to hold the mat into place.” EX1054, 1:50-65 (also indicating that “the
`
`use of thermoforming to produce a multi-dimensional, contoured mat” was
`
`“effective for forming appropriately shaped mats at a relatively low cost”); see also
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`EX1053, 2:36-42, 3:60-65, 4:34-46; EX1055, 4:43-47, 4:59-61, FIG. 4; EX1025,
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`1:49-52, 3:29-51.
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`MacNeil has not disputed that thermoforming was well-known for vehicle
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`floor trays. Instead, MacNeil maintains an improper “blinkered focus on individual
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`documents,” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013), rather
`
`
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`than the “expansive and flexible approach” required by the Supreme Court, KSR
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`International Co. v. Teleflex Inc., 550 U.S. 398, 415, 418 (2007). MacNeil’s
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`arguments presuppose that the exact materials and configurations of Rabbe and
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`Yung’s embodiments need to be combined. These arguments are irrelevant; a
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`POSA is “a person of ordinary creativity, not an automaton.” Id. at 420−21.
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`MacNeil’s teaching away arguments similarly misapply the law. A reference
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`that “‘does not criticize, discredit, or otherwise discourage investigation into’ the
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`claimed invention does not teach away.” Meiresonne v. Google, Inc., 849 F.3d
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`1379, 1382 (Fed. Cir. 2017). Yet MacNeil says teaching away occurs whenever “a
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`prior art reference teaches a different method of addressing a problem addressed by
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`the claimed invention.” POR, 60. This is incorrect, and MacNeil’s cited case
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`(Spectralytics) is inapposite.
`
`Unlike Spectralytics’s facts, the prior art discloses floor trays that were both
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`thermoformed to custom fit and also included nibs “for gripping the interior
`
`surfaces of the vehicle,” both of which contributed to preventing the floor tray
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`“from sliding.” EX1054, Abstract, 1:50-2:20, 2:28-30, 5:52-6:6, FIG. 6; EX1041,
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`¶148. Yung’s teaching of foam particles does not teach away from thermoforming
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`a custom-fit floor tray. EX1041, ¶¶122-123, 146-149.
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`MacNeil also argues that Gruenwald “teaches away from thermoforming
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`
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`Rabbe’s floor tray as claimed.” POR, 62. But Gruenwald states that any discussed
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`limitations are “not to discourage” thermoforming, but to minimize them. EX1007,
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`0015. See also id., 0017; EX1042, ¶¶102-103; EX1041, ¶122-125.
`
`MacNeil also alleges that a heavy-gauge thermoformed product could not
`
`fold as desired by Rabbe. POR, 63-64. But Rabbe mentions that the floor tray can
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`be folded to “enable[] the protective tray to be released for removal from the
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`vehicle interior.” EX1005, 2:11-13; EX2024, 12:1-6. Bending the sides inward
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`slightly is all that would be needed to remove it. EX1041, ¶¶150-153. The tray
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`would not need to fold with a well-defined hinge as MacNeil posits. Id.; POR, 63-
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`64. Indeed, MacNeil’s own translator Dr. Popp admitted that “in a technical
`
`context ‘flex’ could be a good translation, a good alternative to ‘fold’ or ‘bend.’”
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`EX1046, 88:15-19. Furthermore, Rabbe’s teaching here shows that the floor tray
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`closely conforms to the vehicle contours. EX1041, ¶152. Otherwise, folding would
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`not be required to remove it. Id.
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`B. MacNeil’s technical assertions are inaccurate.
`MacNeil argues that: (1) Rabbe is limited to semi-rigid rubber and is not
`
`formed integrally, POR, 13-14, 42-47, 55; (2) Yung is limited to compression
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`molding and could not be thermoformed without eliminating waterproofing, id.,
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`14-18, 47, 54, 56-57; and (3) Yung’s middle layer would not provide elasticity or
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`
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`an abrasion-resistant surface, id., 57-60. MacNeil is wrong.
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`1.
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`Rabbe is not limited to thermosets; Rabbe discloses
`materials useful in thermoforming.
`
`MacNeil alleges that Rabbe’s tray is limited to a non-thermoformable semi-
`
`rigid rubber (not a thermoplastic). POR, 13-14, 55. But a POSA would have
`
`considered Rabbe’s teachings to include thermoplastic elastomers. EX1056, ¶2;
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`EX1041, ¶¶71-79, 139-140. And a POSA would have recognized that
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`thermoplastic materials would qualify as Rabbe’s other “material having the same
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`properties.” EX1005, 1:16-19; EX1041, ¶¶80-83, 136-138. Rabbe refers to two
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`main properties: (1) semi-rigid yet flexible; and (2) waterproof. EX1005, 1:13-26;
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`EX1041, ¶80. There are many thermoplastics with the same semi-rigid, flexible,
`
`and waterproof properties as semi-rigid rubber, including polyethylene and foamed
`
`polyethylene. EX1057, 228-231; EX1009, 0202; EX1041, ¶80; EX1042, ¶¶49-54.
`
`MacNeil’s argument that a POSA would have limited Rabbe to thermosets
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`ignores the state of the art. EX2041, ¶81. Indeed, MacNeil’s declarant’s own book
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`acknowledges “the materials and processing similarities between plastics and
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`rubber.” EX2072, 22. And the ’186 patent acknowledges that its thermoplastic
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`elastomer may be replaced with rubber. EX1001, 3:55-59. There is no reason that a
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`POSA would have viewed Rabbe as limited to thermosets. EX1041, ¶¶81-83.
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`Instead, Rabbe’s disclosure would have led a POSA to thermoformable
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`thermoplastic materials. Id., ¶¶71-76, 83, 122-128, 134-135; EX1009, 0202;
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`
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`EX1042, ¶¶49-57.
`
`MacNeil also alleges that Rabbe’s floor tray is assembled from multiple
`
`pieces, instead of integrally formed because Rabbe uses the word “assembly,”
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`referring to the floor tray, and because aspects of Rabbe’s trays allegedly preclude
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`thermoforming. POR, 42-45. MacNeil’s attempt to limit Rabbe’s floor tray to a
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`thermoset stitched or glued from separate pieces finds no support in Rabbe and
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`ignores that thermoforming floor trays was “within the basic knowledge of a
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`POSA.” EX1003, ¶124; EX1012, 1:14-18, 1:47-50; EX1013, Abstract, 1:54-59
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`(“vacuum formed” floor covering “with a configuration adapted to conform to the
`
`contour of a vehicle floor”); see also EX1053, 2:7-19, 2:36-3:3, 6:1-33; EX1054,
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`Abstract, 1:56-57; EX1041, ¶¶63-70; EX1042, ¶47-57; EX1047, 47:14-17 (Mr.
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`Sherman agreeing before 2004, there were custom-thermoformed floor trays).
`
`The mere word “assembly” in MacNeil’s Rabbe translation does not suggest
`
`multiple pieces. EX1041, ¶64. Indeed, Rabbe never even mentions forming
`
`separate pieces and gluing or stitching them together. EX1005, 1:1-2:16; EX1047,
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`182:14-18; EX1041, ¶¶64-65. As Dr. Koch explained, this was “not a feasible or
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`practical solution.” EX2039, 193:24-195:19; EX1041, ¶65. “If you can mold all
`
`your parts in one piece