· · · · UNITED STATES PATENT AND TRADEMARK OFFICE
`
`· · · · · · · · · · · ____________
`
`· · · · BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`1
`
`· · · · · · · · · · · ____________
`
`· · · · · · · · · · · · YITA, LLC
`· · · · · · · · · · · ·Petitioner,
`
`· · · · · · · · · · · · · ·v.
`
`· · · · · · · · · · MACNEIL, IP LLC,
`· · · · · · · · · · · Patent Owner,
`· · · · · · · · · · · ____________
`
`· · · · · · · · · ·Case IPR2020-01142
`· · · · · · · · · · Patent 8,833,834
`
`· · · · · · · ·ORAL VIDEOTAPED DEPOSITION
`
`· · · · · · · · · · · DAN PERREAULT
`
`· · · · · · · · · ·SEPTEMBER 15, 2021
`
`· · ORAL VIDEOTAPED DEPOSITION OF DAN PERREAULT, via
`
`Zoom, produced as a witness at the instance of the
`
`Patent Owner and duly sworn, was taken in the
`
`above-styled and numbered cause on September 15, 2021,
`
`from 9:59 a.m. to 1:27 p.m. EST, before Melinda Barre,
`
`Certified Shorthand Reporter in and for the State of
`
`Texas, reported by computerized stenotype machine, all
`
`parties appearing remotely via web videoconference,
`
`pursuant to the rules of procedure and the provisions
`
`stated on the record or attached hereto.
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 1
`
`
`
`· · · · · · · · · · · ____________
`
`· · · · BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`1
`
`· · · · · · · · · · · ____________
`
`· · · · · · · · · · · · YITA, LLC
`· · · · · · · · · · · ·Petitioner,
`
`· · · · · · · · · · · · · ·v.
`
`· · · · · · · · · · MACNEIL, IP LLC,
`· · · · · · · · · · · Patent Owner,
`· · · · · · · · · · · ____________
`
`· · · · · · · · · ·Case IPR2020-01142
`· · · · · · · · · · Patent 8,833,834
`
`· · · · · · · ·ORAL VIDEOTAPED DEPOSITION
`
`· · · · · · · · · · · DAN PERREAULT
`
`· · · · · · · · · ·SEPTEMBER 15, 2021
`
`· · ORAL VIDEOTAPED DEPOSITION OF DAN PERREAULT, via
`
`Zoom, produced as a witness at the instance of the
`
`Patent Owner and duly sworn, was taken in the
`
`above-styled and numbered cause on September 15, 2021,
`
`from 9:59 a.m. to 1:27 p.m. EST, before Melinda Barre,
`
`Certified Shorthand Reporter in and for the State of
`
`Texas, reported by computerized stenotype machine, all
`
`parties appearing remotely via web videoconference,
`
`pursuant to the rules of procedure and the provisions
`
`stated on the record or attached hereto.
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 1
`
`
`
`· · · · · · · · · · · ·APPEARANCES
`· · · · (ALL APPEARED VIA ZOOM VIDEO CONFERENCE.)
`
`2
`
`FOR PETITIONER:
`
`· · ·Mr. Jason A. Fitzsimmons
`· · ·STERNE KESSLER GOLDSTEIN & FOX
`· · ·1100 New York Avenue NW, Suite 600
`· · ·Washington, DC· 20005
`
`· · ·Telephone: 202.772.8701
`· · ·E-mail: jfitzsimmons@sternekessler.com
`
`FOR PATENT OWNER:
`
`· · ·Mr. David G. Wille
`· · ·BAKER BOTTS L.L.P.
`· · ·2001 Ross Avenue, Suite 1900
`· · ·Dallas, Texas· 75201-2980
`
`· · ·Telephone: 214.953.6595
`· · ·E-mail: david.wille@bakerbotts.com
`
`ALSO PRESENT:· Bryan Beltran, Document Technician
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 2
`
`
`
`3
`
`· · · · · · · · · · · · · INDEX
`
`· · · · · · · · · · · · · · · · · · · · · · · · ·PAGE
`
`Examination by Mr. Wille ..........................5
`Court Reporter's Certificate ....................125
`
`· · · · · · · · · · · · EXHIBITS
`
`EXHIBIT· · · · · · · DESCRIPTION· · · · · · ·REFERENCED
`
`Exhibit 1044· ·Declaration of Dan Perreault· · · · 8
`
`Exhibit 1045· ·Resume of Dan Perreault· · · · · · 10
`
`Exhibit 1001· ·U.S. Patent No. 8,382,186· · · · · 46
`
`Exhibit 1005· ·Certificate of Translation· · · · ·53
`
`Exhibit 1089· ·IMEdit Reference Guide· · · · · · ·74
`
`Exhibit 1035· ·U.S. Patent No. 6,058,618· · · · · 85
`
`Exhibit 2174· ·Article from Desktop· · · · · · · ·91
`· · · · · · · ·Engineering Entitled "Mesh with
`· · · · · · · ·the Best"
`
`Exhibit 1060· ·Brochure on FaroArm· · · · · · · · 98
`
`Exhibit 1078· ·Article Entitled "Competition· · ·101
`· · · · · · · ·Rising in Portable CMMs"
`
`Exhibit 2181· ·Wikipedia Body in White Article· ·103
`
`Exhibit 2182· ·Frost & Sullivan White Paper· · · 104
`
`Exhibit 1080· ·U.S. Patent 5,363,159· · · · · · ·116
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 3
`
`
`
`4
`· · · · · · · THE VIDEOGRAPHER:· We are on the record on
`
`September 15, 2021 at approximately 9:59 a.m. Eastern
`
`Time for the remote video deposition of Mr. Dan
`
`Perreault in the matter of Yita, LLC versus MacNeil IP,
`
`LLC.· My name is Bryan Beltran, and I'm the videographer
`
`and document tech.
`
`· · · · · · · Will counsel please introduce themselves
`
`for the record beginning with the party noticing this
`
`proceeding.
`
`· · · · · · · MR. WILLE:· This is David Wille with Baker
`
`Botts for the patent owner.
`
`· · · · · · · MR. FITZSIMMONS:· And this is Jason
`
`Fitzsimmons with Sterne, Kessler, Goldstein & Fox for
`
`the petitioner, Yita, LLC.
`
`· · · · · · · THE VIDEOGRAPHER:· Thank you.· Will the
`
`court reporter please swear in the witness.
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 4
`
`
`
`· · · · · · · · · · ·DAN PERREAULT,
`
`having been first duly sworn, testified as follows:
`
`5
`
`· · · · · · · · · · · ·EXAMINATION
`
`QUESTIONS BY MR. WILLE:
`
`· · Q.· ·Please state your name.
`
`· · A.· ·Dan Perreault.
`
`· · Q.· ·And, Mr. Perreault, you are here today to give
`
`expert testimony on behalf of Yita, LLC, correct?
`
`· · A.· ·Correct.
`
`· · Q.· ·Have you ever had your deposition taken before?
`
`· · A.· ·No.
`
`· · Q.· ·Do you understand the court reporter can only
`
`take down what one of us is saying at a time?
`
`· · A.· ·Yes.
`
`· · Q.· ·Okay.· So please let me finish my question
`
`before you start your answer, and I'll try to let you
`
`finish your answer before I begin my next question.· Can
`
`we agree to that?
`
`· · A.· ·Yes.
`
`· · Q.· ·Anything that would prevent you from giving
`
`full, complete and accurate testimony today?
`
`· · A.· ·No.
`
`· · Q.· ·Okay.· What is your hourly rate in this matter?
`
`· · A.· ·$225.
`
`· · Q.· ·And are you receiving any compensation besides
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 5
`
`
`
`6
`
`hourly billing?
`
`· · A.· ·No.
`
`· · Q.· ·Approximately how much have you billed in the
`
`case thus far?
`
`· · A.· ·I haven't invoiced anything yet, but I've got
`
`about 30 hours of work in.
`
`· · Q.· ·Okay.· And did you have any assistants help you
`
`with your declaration?
`
`· · A.· ·Just the attorneys.
`
`· · Q.· ·Okay.· What attorneys did you work with?
`
`· · A.· ·Jason Fitzsimmons, Steve Merrill and John
`
`Higgins.
`
`· · Q.· ·Have you ever worked with those attorneys
`
`before?
`
`· · A.· ·No.
`
`· · Q.· ·Have you ever worked with Yita before?
`
`· · A.· ·No.
`
`· · Q.· ·Who contacted you about this matter?
`
`· · A.· ·I believe I received an e-mail from Steve
`
`Merrill.
`
`· · Q.· ·And when did you receive that e-mail?
`
`· · A.· ·In June of this year.
`
`· · Q.· ·Okay.· So June of 2021?
`
`· · A.· ·Correct.
`
`· · Q.· ·Okay.· And what opinions were you asked to give
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 6
`
`
`
`7
`
`in this matter?
`
`· · · · · · · MR. FITZSIMMONS:· To the extent that that
`
`would reveal any privileged communications, I would
`
`instruct the witness not to answer.
`
`· · Q.· ·(By Mr. Wille)· Okay.· You can answer subject
`
`to your counsel's instruction.
`
`· · A.· ·Okay.· I was asked to give opinion regarding
`
`state-of-the-art technology for three-dimensional
`
`measurement in the time period of 2004.
`
`· · Q.· ·Have you ever served as an expert witness
`
`before?
`
`· · A.· ·No.
`
`· · Q.· ·Have you ever prepared a declaration before?
`
`· · A.· ·No.
`
`· · Q.· ·Okay.· Did you talk with any other experts in
`
`the field before forming your opinions?
`
`· · A.· ·No.
`
`· · Q.· ·Did you talk with anyone from Yita?
`
`· · A.· ·No.
`
`· · Q.· ·Did you talk with anyone from Ginrong?
`
`· · A.· ·No.
`
`· · Q.· ·Did you talk with anyone from an entity called
`
`Sheng Tian?
`
`· · A.· ·No.
`
`· · Q.· ·Did you talk with anyone who designs floor mats
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 7
`
`
`
`or floor trays for a living?
`
`· · A.· ·Not pertaining to this case, no.
`
`· · Q.· ·So you understand that Dr. Koch previously gave
`
`an opinion about the expectation of success in
`
`fabricating the floor tray of Rabbe, thermoform the
`
`8
`
`floor tray of Rabbe?
`
`· · A.· ·Yes.
`
`· · Q.· ·And you read Dr. Koch's opinion, right?
`
`· · A.· ·Yes.
`
`· · Q.· ·So what does your opinion add here?· In other
`
`words, how is your opinion different than Dr. Koch's?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, scope;
`
`objection, relevance.
`
`· · · · · · · You can answer.
`
`· · A.· ·My opinion has a bit more detail regarding the
`
`process of going from measured data to a final mold.
`
`· · Q.· ·(By Mr. Wille)· Okay.· Any other differences
`
`with Dr. Koch's opinion?
`
`· · A.· ·No.
`
`· · Q.· ·All right.· So do you have your declaration in
`
`front of you?
`
`· · A.· ·Yes.
`
`· · Q.· ·Okay.· And that's marked Exhibit 1044, correct?
`
`· · A.· ·Correct.
`
`· · Q.· ·All right.· And since you have a copy in front
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 8
`
`
`
`of you, I'm not going to ask for it to be brought up on
`
`9
`
`the screen.
`
`· · · · · · · MR. WILLE:· Mr. Fitzsimmons, as we've
`
`stipulated in other depositions, can we stipulate since
`
`the exhibit numbers are the same in both proceedings,
`
`that we can simply use an exhibit from one of the
`
`proceedings and it will be deemed to be the same exhibit
`
`in both proceedings?
`
`· · · · · · · MR. FITZSIMMONS:· Agreed, yes.
`
`· · · · · · · MR. WILLE:· Okay.· So stipulated.
`
`· · Q.· ·(By Mr. Wille)· Mr. Perreault, are you aware of
`
`any statements in your declaration that requires
`
`correction?
`
`· · A.· ·No.
`
`· · Q.· ·Okay.· And when you created your declaration,
`
`did you request any materials from the attorneys?
`
`· · A.· ·I didn't request, but it was provided to me.
`
`· · Q.· ·Okay.· Did you go out and find any materials on
`
`your own?
`
`· · A.· ·No.
`
`· · Q.· ·Okay.· Did you type your declaration?
`
`· · A.· ·Parts of it.
`
`· · Q.· ·Okay.· Who typed the parts that you didn't
`
`type?
`
`· · A.· ·I don't know.
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 9
`
`
`
`· · Q.· ·Okay.· Did you care -- was it somebody at the
`
`10
`
`law firm, to your knowledge?
`
`· · A.· ·Yes.
`
`· · Q.· ·Okay.· Did you carefully check each of the
`
`citations in your declaration to be sure they were
`
`accurate?
`
`· · A.· ·Yes.
`
`· · Q.· ·And anything you quoted, did you carefully
`
`check the quotations to make sure those were accurate?
`
`· · A.· ·Yes.
`
`· · Q.· ·Okay.· You provided a resumé, which is
`
`Exhibit 1045.· Do you recall that?
`
`· · A.· ·Yes.
`
`· · Q.· ·All right.· And do you have any patents on
`
`floor mats?
`
`· · A.· ·Not on floor mats, no.
`
`· · Q.· ·Okay.· Do you have any pending patent
`
`applications on floor mats?
`
`· · A.· ·No.
`
`· · Q.· ·Do you have any patents on floor trays?
`
`· · A.· ·No.
`
`· · Q.· ·Do you have any patents pending on floor trays?
`
`· · A.· ·No.
`
`· · Q.· ·And I think you indicated in your declaration
`
`you worked with a company called Lund International at
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 10
`
`
`
`one point in 2007 on the design of a floor tray.· Is
`
`11
`
`that correct?
`
`· · A.· ·That's correct.
`
`· · Q.· ·Is that the only experience you have with
`
`designing floor trays?
`
`· · A.· ·Specifically floor trays, yes.· But I've got a
`
`lot of related experience in the measurement of
`
`automotive parts.
`
`· · Q.· ·Okay.· Do you have any patents on making molds?
`
`· · A.· ·No.
`
`· · Q.· ·Any patents pending on making molds?
`
`· · A.· ·No.
`
`· · Q.· ·Do you have any patents on thermoforming?
`
`· · A.· ·No.
`
`· · Q.· ·Any patents pending on thermoforming?
`
`· · A.· ·No.
`
`· · Q.· ·Do you have any patents on compression molding?
`
`· · A.· ·No.
`
`· · Q.· ·Do you have any patents on -- patents pending
`
`on compression molding?
`
`· · A.· ·No.
`
`· · Q.· ·Do you have any patents that concern the making
`
`of items using rubber?
`
`· · A.· ·No.
`
`· · Q.· ·Do you have any patents that concern the making
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 11
`
`
`
`12
`
`of items using thermoset materials?
`
`· · A.· ·No.
`
`· · Q.· ·Do you have any patents that concern the
`
`three-dimensional modeling of a surface in software?
`
`· · A.· ·No.
`
`· · Q.· ·Do you have any patents concerning coordinate
`
`measure machines?
`
`· · A.· ·No.
`
`· · Q.· ·Have you written any papers on floor mats?
`
`· · A.· ·No.
`
`· · Q.· ·Have you written any papers on floor trays?
`
`· · A.· ·No.
`
`· · Q.· ·Have you written any papers on making molds for
`
`manufacturing plastics?
`
`· · A.· ·Not that I recall.
`
`· · Q.· ·Have you written any papers on thermoforming?
`
`· · A.· ·No.
`
`· · Q.· ·Have you written any papers on compression
`
`molding?
`
`· · A.· ·No.
`
`· · Q.· ·Have you written any papers on fabricating
`
`items from rubber or other thermoset materials?
`
`· · A.· ·No.
`
`· · Q.· ·Have you written any papers concerning
`
`three-dimensional modeling of a surface?
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 12
`
`
`
`13
`
`· · A.· ·Yes.
`
`· · Q.· ·What papers are those?
`
`· · A.· ·I have a -- I have a paper that's available on
`
`our website in regards to technology for 3D scanning and
`
`reverse-engineering.
`
`· · Q.· ·Okay.· And what website are you referring to?
`
`· · A.· ·That would be 3Dscanningservices.net.
`
`· · Q.· ·Okay.· And when did you write that paper?
`
`· · A.· ·I'm not sure of the exact date; but it's
`
`probably about two, three years ago.
`
`· · Q.· ·Okay.· Have you written any other papers
`
`concerning the three-dimensional modeling of a surface?
`
`· · A.· ·Not that I recall.
`
`· · Q.· ·Have you written any papers concerning
`
`coordinate measure machines?
`
`· · A.· ·Yes.· But I don't recall the specifics.
`
`· · Q.· ·Okay.· Do you recall why you wrote those
`
`papers?
`
`· · A.· ·In my position at FARO Technologies as an
`
`application engineer and director of application
`
`engineering, I wrote a lot of documentation and content
`
`pertaining to uses of those devices, a lot of which was
`
`in the automotive industry.
`
`· · Q.· ·Okay.· Please spell the word FARO for the court
`
`reporter.
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 13
`
`
`
`· · A.· ·F, as in Frank, A-R-O.
`
`· · Q.· ·If you can turn to your declaration, please,
`
`page 33.· Sorry.· Paragraph 33.· I apologize.
`
`14
`
`Paragraph 33.
`
`· · A.· ·Yep.· I'm here.
`
`· · Q.· ·And in paragraph 33 you indicate that you
`
`reviewed the definitions of a person of ordinary skill
`
`in the art for both the '186 and the '834 patents that
`
`were set forth in the institution decisions.· Is that
`
`right?
`
`· · A.· ·Yes.
`
`· · Q.· ·Okay.· So you reviewed what the board said a
`
`person of ordinary skill in the art was for both the
`
`'186 and the '834 patents, correct?
`
`· · A.· ·Yes.
`
`· · Q.· ·Okay.· Now, I can show you those if you'd like
`
`to refresh your memory of those to answer my questions.
`
`So if you want that, just please ask for it.· But you
`
`may be able to answer my questions without them.· So I'm
`
`just going to offer to give those to you if you want to
`
`reference them.
`
`· · A.· ·Sure, no.· I don't think I need to.
`
`· · Q.· ·Okay.· So in paragraph 3 you indicate that you
`
`have worked with persons of ordinary skill in the art in
`
`the art of thermoforming throughout your career,
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 14
`
`
`
`15
`
`correct?
`
`· · A.· ·Correct.
`
`· · Q.· ·Okay.· Do you consider yourself a person of
`
`ordinary skill in the art under either of the
`
`definitions adopted by the board in their institution
`
`decisions?
`
`· · A.· ·I would not consider myself to be a person of
`
`ordinary skill in thermoforming or in mold development.
`
`But on the flip side, in the area of capturing complex
`
`data and developing 3D CAD models and then developing
`
`molds from that, I would consider myself to be an
`
`expert.
`
`· · Q.· ·Okay.· So I guess let's pull up -- well, strike
`
`that.
`
`· · · · · · · You understand that the board's definition
`
`of persons of ordinary skill in the art required
`
`knowledge of thermoforming plastics molding, right?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, form.
`
`· · A.· ·Yes.
`
`· · Q.· ·(By Mr. Wille)· Sorry.· What was your answer?
`
`· · A.· ·My answer was yes.
`
`· · Q.· ·Okay.· Give your counsel just a second to
`
`object because otherwise you're answering at the same
`
`time he's objecting, and the court reporter can only
`
`take down one person at a time.
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 15
`
`
`
`16
`
`· · A.· ·Sure.
`
`· · Q.· ·Okay.· So you understood that part of the
`
`expertise required by a person of ordinary skill in the
`
`art in both institution decisions was a knowledge of
`
`thermoforming, right?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, form and
`
`objection, mischaracterizes the documents, the
`
`institution decisions.
`
`· · Q.· ·(By Mr. Wille)· You can answer.
`
`· · A.· ·Yes.
`
`· · Q.· ·Okay.· And you're saying you don't have the
`
`expertise, at least for that portion of the definition
`
`of ordinary skill in the art, the thermoforming portion?
`
`· · A.· ·I would not present myself as an expert in
`
`thermoforming, although I'm familiar with it.
`
`· · Q.· ·Okay.
`
`· · · · · · · MR. WILLE:· Well, I guess let's pull up
`
`the institution decision of IPR 1139.· And the
`
`technician, that's not labeled exactly as an exhibit;
`
`but it should be present in the folder for IPR 1139.
`
`· · · · · · · Okay.· So we have paper 17 from IPR 1139
`
`on the screen.· Let's go to page 8, please.
`
`· · Q.· ·(By Mr. Wille)· Do you see that on page 8
`
`there's the beginning of a discussion about skills a
`
`person of ordinary skill in the art would have?
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 16
`
`
`
`17
`
`· · A.· ·Yes.
`
`· · Q.· ·Okay.
`
`· · · · · · · MR. WILLE:· If we can go down to the next
`
`page, please.
`
`· · Q.· ·(By Mr. Wille)· Now, do you see there's a
`
`further discussion of a person of ordinary skill in the
`
`art on page 9?
`
`· · A.· ·Yes.
`
`· · Q.· ·Okay.
`
`· · · · · · · MR. WILLE:· If we can go to page 10,
`
`please.
`
`· · Q.· ·(By Mr. Wille)· Okay.· You see the discussion
`
`concludes there, right?
`
`· · A.· ·Yes.
`
`· · Q.· ·Okay.
`
`· · · · · · · MR. WILLE:· Can we go to the previous
`
`page.
`
`· · Q.· ·(By Mr. Wille)· Do you see the middle of the
`
`page the paragraph that begins "At this stage of the
`
`proceeding"?
`
`· · A.· ·Yes.
`
`· · Q.· ·Okay.· It says, "At this stage of the
`
`proceeding, we agree with patent owner's position that
`
`industry knowledge and experience in the thermoforming
`
`industry is important to understanding the claimed
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 17
`
`
`
`18
`
`thermoformed tray."
`
`· · · · · · · Do you see that?
`
`· · A.· ·Yes.
`
`· · Q.· ·They further indicate further down, "For
`
`purposes of this decision, we agree that experience in
`
`thermoforming is relevant to the level of ordinary
`
`skill.· However, we also consider that advanced
`
`education and experience in the related methods of
`
`forming plastics may suffice in the absence of having
`
`specific commercial experience with thermoforming."
`
`· · · · · · · You see that?
`
`· · A.· ·Yes.
`
`· · · · · · · MR. WILLE:· Let's go to the prior
`
`page then.· Sorry.· The prior page, page 8.
`
`· · Q.· ·(By Mr. Wille)· So do you see petitioner's
`
`definition there of a person of ordinary skill in the
`
`art?
`
`· · A.· ·Yeah.· Down towards the bottom of the page?
`
`· · Q.· ·Yes.
`
`· · A.· ·Yes.
`
`· · Q.· ·Petitioner's definition says this person "would
`
`have a minimum of three to five years of experience in
`
`plastics engineering, manufacturing plastic product
`
`design or related industry.· This is an approximation,
`
`and a higher level of training or practical experience
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 18
`
`
`
`might make up for less education and vice versa."
`
`19
`
`· · · · · · · Do you see that?
`
`· · A.· ·Yes.
`
`· · Q.· ·So having reread these portions of the
`
`institution decision, do you believe you have all of the
`
`skills of a person of ordinary skill in the art as set
`
`forth in the institution decision?
`
`· · A.· ·Yes.
`
`· · Q.· ·Okay.· Now, what do you consider yourself an
`
`expert in?
`
`· · A.· ·Three-dimensional measurement, 3D scanning,
`
`reverse-engineering, 3D printing, rapid prototyping.
`
`· · Q.· ·Okay.· And you consider yourself a -- but do
`
`you consider yourself an expert in thermoforming?
`
`· · A.· ·Although I don't consider myself an expert in
`
`thermoforming, I have worked with many customers over
`
`the years that are thermoformers.· I have
`
`reverse-engineered parts and designed thermoforming
`
`tools.
`
`· · Q.· ·Okay.· So can you tell me what the difference
`
`is between cross-link polyethylene foam and polyethylene
`
`foam?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, scope.
`
`· · Q.· ·(By Mr. Wille)· Sorry.· What was your answer?
`
`· · A.· ·No.· I'm not an expert in plastics.
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 19
`
`
`
`· · Q.· ·Okay.· Can you tell us how you would select a
`
`plastic to be used for the Rabbe floor tray?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, scope.
`
`· · A.· ·No.· I would not be selecting a plastic for a
`
`20
`
`floor tray.
`
`· · Q.· ·(By Mr. Wille)· Okay.· Can you tell us what the
`
`crystalline melting temperatures are for the materials
`
`used for the various layers of the Young floor mat?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, scope.
`
`· · A.· ·No.· I'm not aware of those specifications.
`
`· · Q.· ·(By Mr. Wille)· Okay.· Can you explain what it
`
`means for a polymer to have a crystalline melting
`
`temperature?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, scope.
`
`· · A.· ·No.· That's not in my field of expertise.
`
`· · Q.· ·(By Mr. Wille)· Do you understand the issue of
`
`cell collapse for thermoplastic foams?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, form and
`
`scope.
`
`· · A.· ·No, I do not.
`
`· · Q.· ·(By Mr. Wille)· Do you know what issues a
`
`person of ordinary skill in the art would encounter when
`
`trying to mold a laminate material made of different
`
`materials?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, scope.
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 20
`
`
`
`· · A.· ·No.· That's outside my area of expertise.
`
`· · Q.· ·(By Mr. Wille)· Can you explain the difference
`
`between a thermoset material and a thermoplastic
`
`21
`
`material?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, scope.
`
`· · A.· ·I'm familiar with thermosets and
`
`thermoplastics; but, again, I'm not an expert in those
`
`areas.
`
`· · Q.· ·(By Mr. Wille)· Okay.· Can you explain the
`
`difference between them?
`
`· · · · · · · MR. FITZSIMMONS:· Same objection.
`
`· · A.· ·Not concisely, no.
`
`· · Q.· ·(By Mr. Wille)· Do you have expertise in how to
`
`deal with undercuts in either compression molding or
`
`thermoforming a part?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, form and
`
`scope.
`
`· · A.· ·No.
`
`· · Q.· ·(By Mr. Wille)· Do you know the difference
`
`between pressure forming and vacuum forming?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, scope.
`
`· · A.· ·No.
`
`· · Q.· ·(By Mr. Wille)· Have you ever consulted
`
`Dr. Throne's treatise on thermoforming?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, relevance and
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 21
`
`
`
`22
`
`scope.
`
`· · A.· ·I don't recall.
`
`· · Q.· ·(By Mr. Wille)· Have you ever consulted
`
`Mr. Gruenwald's treatise on thermoforming?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, relevance and
`
`scope.
`
`· · A.· ·I've skimmed through that document.
`
`· · Q.· ·(By Mr. Wille)· Did you skim through that
`
`document in connection with this case?
`
`· · A.· ·Yes.
`
`· · Q.· ·Have you ever reviewed Dr. Gruenwald's treatise
`
`prior to this case?
`
`· · A.· ·No.
`
`· · Q.· ·You don't consider yourself an expert in patent
`
`law, correct?
`
`· · A.· ·Correct.
`
`· · Q.· ·So you relied on Yita's lawyers for the
`
`explanation of the law that's in your declaration.· Is
`
`that correct?
`
`· · A.· ·That's correct.
`
`· · Q.· ·In any of your work with thermoforming, have
`
`you ever worked with a tri-laminate material?
`
`· · A.· ·No.
`
`· · Q.· ·Do you consider yourself an expert on
`
`manufacturing items from rubber?
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 22
`
`
`
`23
`
`· · · · · · · MR. FITZSIMMONS:· Objection, scope.
`
`· · A.· ·No, I do not.
`
`· · Q.· ·(By Mr. Wille)· Do you consider yourself an
`
`expert on manufacturing items from other thermoset
`
`materials?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, scope.
`
`· · A.· ·No.
`
`· · Q.· ·(By Mr. Wille)· Do you consider yourself an
`
`expert on the design of floor mats?
`
`· · A.· ·No, I do not.
`
`· · Q.· ·Do you consider yourself an expert on the
`
`design of floor trays?
`
`· · A.· ·No, I do not.
`
`· · Q.· ·Do you consider yourself an expert in the
`
`making of molds for thermoforming?
`
`· · A.· ·I wouldn't consider myself an expert, but I do
`
`have some experience in designing molds for
`
`thermoforming.
`
`· · Q.· ·Okay.· Can you tell us what -- how you deal
`
`with deep draws in thermoforming?
`
`· · A.· ·No.· I don't have any experience in dealing
`
`with deep draws.
`
`· · Q.· ·Do you know what a deep draw is?
`
`· · A.· ·Yes.
`
`· · Q.· ·Okay.· What's a deep draw?
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 23
`
`
`
`24
`
`· · A.· ·A draw that would have a significant depth
`
`relative to the rest of the geometry of the part.
`
`· · Q.· ·Okay.· Like the figures of Rabbe, correct?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, scope;
`
`objection, mischaracterizes the reference.
`
`· · A.· ·I'm not sure.
`
`· · Q.· ·(By Mr. Wille)· Well, did you look at the
`
`drawings of Rabbe?
`
`· · A.· ·I did.
`
`· · Q.· ·Okay.· You know that that part has a deep draw
`
`just by looking at the drawings, correct?
`
`· · · · · · · MR. FITZSIMMONS:· Objection,
`
`mischaracterizes the reference.
`
`· · A.· ·No.· The illustrations that were available had
`
`no dimensions and not necessarily to scale.· So it's
`
`really difficult to make an opinion or form an opinion
`
`on that.
`
`· · Q.· ·(By Mr. Wille)· Okay.· If you just looked at
`
`the drawings, would you conclude they had a deep draw?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, calls for
`
`speculation.
`
`· · A.· ·If they were drawings to scale with the
`
`dimensions that I could analyze, then I may be able to
`
`make an educated guess.
`
`· · Q.· ·(By Mr. Wille)· Okay.· But you can't -- just
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 24
`
`
`
`looking at the drawings, you can't tell how deep the
`
`25
`
`draw is?
`
`· · A.· ·Well, one, there's no dimensions on the
`
`drawing; and then, two, again, not being an expert in
`
`thermoforming, I don't really know what the ratio would
`
`be to be considered a deep draw.
`
`· · Q.· ·Okay.· Do you consider yourself an expert on
`
`the history of floor trays?
`
`· · A.· ·No.
`
`· · · · · · · MR. FITZSIMMONS:· Objection, scope.
`
`· · Q.· ·(By Mr. Wille)· Do you consider yourself an
`
`expert on the history of floor mats?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, scope.
`
`· · A.· ·No.
`
`· · Q.· ·(By Mr. Wille)· Do you consider yourself an
`
`expert on the history of how molds are made for floor
`
`trays and floor mats?
`
`· · · · · · · MR. FITZSIMMONS:· Objection, form and
`
`scope.
`
`· · A.· ·No.
`
`· · Q.· ·(By Mr. Wille)· Have you ever designed a floor
`
`tray?
`
`· · A.· ·I have not designed a floor tray, but I have
`
`assisted my customers in obtaining data for a footwell
`
`so that my customer could then design their floor tray.
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 25
`
`
`
`· · Q.· ·Okay.· Have you ever designed a floor mat?
`
`26
`
`· · A.· ·No.
`
`· · Q.· ·Have you ever designed a mold for a floor tray?
`
`· · A.· ·No.
`
`· · Q.· ·Have you ever designed a mold for a floor mat?
`
`· · A.· ·No.
`
`· · Q.· ·You did consult with Lund International
`
`concerning their manufacture of floor trays, correct?
`
`· · A.· ·Lund International purchased a 3D scanning
`
`system from my company so that they could characterize
`
`the footwells.· And then I assisted them in creating the
`
`CAD data from the existing footwell so they could then
`
`design their floor mats.· That was the extent of my work
`
`with Lund.
`
`· · Q.· ·Have you worked with any other company on the
`
`design or manufacture of floor trays besides Lund?
`
`· · A.· ·No.
`
`· · Q.· ·Have you worked with any other company besides
`
`Lund concerning the manufacture or design of floor mats?
`
`· · A.· ·No.
`
`· · Q.· ·Do you consider yourself one of the foremost
`
`experts in the world with respect to 3D scanning?
`
`· · A.· ·Yes.
`
`· · Q.· ·Okay.· And with regard to the FaroArm, do you
`
`consider yourself one of the foremost experts in the
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 26
`
`
`
`world on the use of that device?
`
`· · A.· ·I would say not currently.· I left the company
`
`in 2002.· But at the time period in the early 2000s I
`
`would have considered myself an expert on that.
`
`· · Q.· ·Okay.· And you indicated your experience with
`
`27
`
`Lund was in 2007.· Is that right?
`
`· · A.· ·That is correct.
`
`· · Q.· ·If you left FARO in 2002, how did you come to
`
`work with Lund in 2007?
`
`· · A.· ·They had purchased a device from my company,
`
`which is a Z-Corp handheld 3D scanner, in 2007 with
`
`Geomagic software.· So even though it was a different
`
`scanning technology competitive to FARO, the Geomagic
`
`software was available for this application prior to
`
`2004.
`
`· · Q.· ·Okay.· The scanner that Lund used, what kind of
`
`scanner was that?
`
`· · A.· ·It's in my declaration.· If you give me a
`
`moment, I'll find that.
`
`· · · · · · · I'm having a little trouble finding the
`
`exact passage; but I believe it was a Z-Scanner, Z-700.
`
`· · Q.· ·Paragraph 17.· Check paragraph 17 of your
`
`declaration.
`
`· · A.· ·Thank you.
`
`· · · · · · · Yeah.· So it was a Z-Corp Z-Scanner 700,
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 27
`
`
`
`which is a rebranded Creaform scanner, or was.
`
`· · Q.· ·Okay.· So is that a laser scanner or a scanner
`
`28
`
`more like the FaroArm?
`
`· · A.· ·Well, your question kind of has two parts.· So
`
`a Z-Scanner was a laser scanner; however, a FaroArm also
`
`had laser scanner attachments certainly by 2004.
`
`· · Q.· ·Okay.· Sorry.· You broke up there a little bit.
`
`· · · · · · · Were you saying that the FaroArm had laser
`
`scanner attachments that could be used by 2004?
`
`· · A.· ·Yes.
`
`· · Q.· ·Okay.· Do you consider yourself an expert in
`
`automotive aftermarket parts?
`
`· · A.· ·In what regard?
`
`· · Q.· ·The market, the history of them particularly
`
`relating to floor trays.
`
`· · A.· ·I wouldn't say I'm an expert in aftermarket
`
`automotive parts, but I have worked -- many of my
`
`customers over the years have developed aftermarket
`
`automotive parts requiring me and the different people
`
`that I work with to obtain data on existing vehicles in
`
`order to develop aftermarket parts.
`
`· · Q.· ·Okay.· What companies besides WeatherTech and
`
`Lund International have used a scanning device to design
`
`a custom-made floor tray?
`
`· · A.· ·I'm not aware of any.
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 28
`
`
`
`29
`· · Q.· ·Have you ever attended the Specialty Equipment
`
`Manufacturers Association trade show in Las Vegas?
`
`· · A.· ·I have not.
`
`· · Q.· ·Were you permitted to go look for your own
`
`prior art references in connection with your
`
`declaration?
`
`· · A.· ·I was not prohibited.· I received no
`
`instruction on that.
`
`· · Q.· ·Okay.· Did you do any search for any
`
`information on your own?
`
`· · A.· ·Not really.· I relied primarily on my own
`
`personal experience.
`
`· · Q.· ·Okay.· So you didn't go to the internet and try
`
`to search for any information relevant to your
`
`declaration.· Is that right?
`
`· · A.· ·I didn't feel that I needed to after I had
`
`received the documents that I received from the lawyers.
`
`· · Q.· ·Okay.· Approximately how many publications have
`
`you authored or coauthored?
`
`· · A.· ·Can you define a publication?
`
`· · Q.· ·Well, any type of paper that is published
`
`either in a journal or on the internet, something that
`
`you presented at an industry conference.
`
`· · A.· ·Probably on the order of a couple of dozen over
`
`the years.
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 29
`
`
`
`30
`
`· · Q.· ·Okay.· So say 25 roughly?
`
`· · A.· ·Sure.
`
`· · Q.· ·Okay.· So of the roughly 25 publications you've
`
`authored, how many of those focus on thermoforming?
`
`· · A.· ·I don't remember.
`
`· · Q.· ·Do you recall if any of them focus on
`
`thermoforming?
`
`· · A.· ·Specifically, no.
`
`· · Q.· ·And do you recall if any of your publications
`
`mention floor trays or floor mats?
`
`· · A.· ·I don't think so.
`
`· · Q.· ·Okay.· And do you think any of your
`
`publications mention compression molding?
`
`· · A.· ·No.
`
`· · Q.· ·Okay.· And do you think any of your
`
`publications mention using a FaroArm to make
`
`measurements for designing a mold?
`
`· · A.· ·Probably.
`
`· · Q.· ·Do you know which publications those would be?
`
`· · A.· ·No, I don't.· Again, I haven't personally used
`
`that equipment in, you know, well over ten years.
`
`· · Q.· ·Okay.· So when is the last time you used a
`
`FaroArm?
`
`· · A.· ·Probably in that time frame of 2003/2004.
`
`· · Q.· ·And what was the FaroArm used for when you used
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR2020-01139, Page 30
`
`
`
`31
`
`it in the 2003/2004 time frame?
`
`· · A.· ·I had one instance where I was working with an
`
`Air Force base for a reverse-engineering application,
`
`and I had another for an aerospace company where it was
`
`a three-dimensional inspection.
`
`· · Q.· ·Okay.· Did you consult any of your own
`
`publications in forming your opinions in this case?
`
`· · A.· ·No.
`
`· · Q.· ·Okay.· You are listed as an inventor on some
`
`patents, correct?
`
`· · A.· ·Correct.
`
`· · Q.· ·Did you consult any of the patents you're
`
`listed as an inventor on in forming your opinions in
`
`this case?
`
`· · A.· ·No, because they really weren't relevant to
`
`this application.
`
`· · Q.· ·Okay.· In creating your declaration, did you do
`
`any research into how floor trays and floor mats were
`
`made prior to the MacNeil patents?
`
`· · A.· ·No.
`
`· · Q.· ·In connection with your work for Lund
`
`International, did you do any research into how floor
`
`trays and floor mats were made prior to the MacNeil
`
`patents?
`
`· · A.· ·No.· In regards to my work with Lund, basically
`
`MacNeil Exhibit 2185
`Yita v. MacNeil IP, IPR
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