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`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
`U.S. Patent No. 8,382,186
`____________________
`
`
`
`
`PETITIONER’S UPDATED EXHIBIT LIST
`
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`IPR2020-01139
`U.S. Patent No. 8,382,186
`Petitioner files this Updated Exhibit List to accompany the filing of Exhibit
`
`1100, Petitioner’s Demonstratives for Oral Argument in the above-captioned case
`
`and a related case, IPR2020-01142, addressing U.S. Patent Number 8,833,834.
`
`
`
`PETITIONER’S UPDATED EXHIBIT LIST
`
`Exhibit No. Description
`1001
`U.S. Patent No. 8,382,186 to MacNeil et al., issued February 26, 2013
`(“’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”)
`
`1002
`1003
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`- 1 -
`
`
`
`IPR2020-01139
`U.S. Patent No. 8,382,186
`
`1016
`
`1017
`1018
`1019
`
`1020
`
`1021
`
`1022
`
`Exhibit No. Description
`1015
`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
`U.S. Patent No. 4,420,180 to Dupont et al., issued December 13, 1983
`(“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”)
`
`1029
`1030
`1031
`1032
`1033
`1034
`1035
`
`1023
`1024
`
`1025
`1026
`
`1027
`
`1028
`
`- 2 -
`
`
`
`IPR2020-01139
`U.S. Patent No. 8,382,186
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`1044
`
`Exhibit No. Description
`1036
`Webster’s Third New International Dictionary, 1961
`1037
`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)”
`Popp, Bruce D., “Using Patents to find the Terminology You Need,”
`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”)
`
`1053
`1054
`1055
`
`1045
`1046
`
`1047
`1048
`
`1049
`
`1050
`
`1051
`
`1052
`
`- 3 -
`
`
`
`IPR2020-01139
`U.S. Patent No. 8,382,186
`
`1058
`
`1059
`1060
`1061
`
`1062
`
`Exhibit No. Description
`1056
`U.S. Patent Application Publication 2001/0028932 to Akaike et al.
`1057
`Handbook of Plastic Foams: Types, Properties, Manufacture and
`Applications, ed. Arthur H. Landrock, Noyes Publications, 1995
`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
`FaroArm Titanium & Platinum Brochure, revised July 30, 2004
`“Weathertech Raceway Laguna Seca - Monterey County, CA”
`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
`
`1063
`1064
`1065
`1066
`1067
`
`1068
`1069
`1070
`1071
`
`1072
`1073
`1074
`1075
`
`1076
`1077
`
`- 4 -
`
`
`
`IPR2020-01139
`U.S. Patent No. 8,382,186
`
`1079
`
`1080
`1081
`1082
`1083
`1084
`
`Exhibit No. Description
`1078
`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
`“PolyWorks the Universal 3D Metrology Software Platform for
`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
`Declaration of Stephen A. Merrill (Served —Not Filed)
`Transcript of the Deposition of Bruce D. Popp, Ph.D. with Errata
`Sheet, taken June 28, 2021 (Served —Not Filed)
`Transcript of the Deposition of Ryan Granger with Errata Sheet, taken
`July 1, 2021 (CONFIDENTIAL) (Served —Not Filed)
`
`1085
`
`1086
`1087
`
`1088
`
`1089
`
`1090
`
`1091
`
`1092
`1093
`1094
`1095
`
`1096
`
`- 5 -
`
`
`
`IPR2020-01139
`U.S. Patent No. 8,382,186
`
`Exhibit No. Description
`1097
`Transcript of the Deposition of Ray Sherman with Errata Sheet, taken
`July 28, 2021 (Served —Not Filed)
`Transcript of the Deposition of Tim A. Osswald, Ph.D. with Errata
`Sheet, taken August 5, 2021 (Served —Not Filed)
`Transcript of the Deposition of Samuel Shen Chong with Errata
`Sheet, taken August 10, 2021 (Served —Not Filed)
`Petitioner’s Demonstratives for Oral Argument in IPR2020-01139
`and IPR2020-01142
`
`1098
`
`1099
`
`1100
`
`
`
`Date: October 8, 2021
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason A. Fitzsimmons/
`
`Jason A. Fitzsimmons (Reg. No. 65,367)
`Counsel for Petitioner
`
`
`
`- 6 -
`
`
`
`IPR2020-01139
`U.S. Patent No. 8,382,186
`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that on October 8, 2021, true and correct
`
`copies of the above-captioned PETITIONER’S UPDATED EXHIBIT LIST and
`
`EXHIBIT 1100 were served electronically via e-mail in their entireties on the
`
`following counsel for Patent Owner:
`
`David G. Wille (Lead Counsel)
`Chad C. Walters (Back-up Counsel)
`Clarke W. Stavinoha (Back-up Counsel)
`BAKER BOTTS L.L.P.
`david.wille@bakerbotts.com
`chad.walters@bakerbotts.com
`clarke.stavinoha@bakerbotts.com
`
`Jefferson Perkins (Back-up Counsel)
`PERKINS IP LAW GROUP LLC
`jperkins@perkinsip.com
`
`
`Respectfully submitted,
`
`
`
`Date: October 8, 2021
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`17441257_1.docx
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason A. Fitzsimmons/
`
`Jason A. Fitzsimmons (Reg. No. 65,367)
`Counsel for Petitioner
`
`
`
`
`
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