UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`YITA LLC
`Petitioner
`
`v.
`
`MACNEIL IP LLC
`Patent Owner
`
`_____________________
`
`Case No. IPR2020-01140
`Patent No. 8,833,834
`_____________________
`
`DECLARATION OF PAUL E. KOCH, PH.D. IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 8,833,834
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`EX1003
`Yita v. MacNeil
`IPR2020-01140
`
`

`

`
`
`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
`TABLE OF CONTENTS
`
`I.
`Introduction ...................................................................................................... 1
`Qualifications and Experience ......................................................................... 1
`II.
`III. Legal Principles ............................................................................................... 4
`A. Obviousness ........................................................................................... 4
`B. Motivation to Combine ......................................................................... 7
`C.
`Claiming Priority ................................................................................... 9
`IV. Level of Ordinary Skill in the Art .................................................................10
`V.
`State of the Art ...............................................................................................11
`A.
`Thermoforming Generally ...................................................................11
`B.
`Various methods to control or limit thinning during thermoforming .17
`C. Many prior art floor mats were thermoformed ...................................24
`D.
`Prior art floor mats were made to closely conform to vehicle sidewalls
` .............................................................................................................31
`Prior art floor mats had a reservoir .....................................................37
`The Use of Hollow Baffles to Elevate the Vehicle Occupant’s Feet
`above the Water Collected in the Reservoir Was not New .................41
`VI. Overview of the ’834 Patent ..........................................................................46
`A.
`The ’834 Patent Background ...............................................................46
`B.
`The ’834 Patent Specification and Drawings ......................................48
`C.
`’834 Patent Challenged Claims ...........................................................52
`D.
`Summary of the ’834 Patent’s Prosecution History ............................58
`VII. Claim Construction ........................................................................................64
`A.
`Legal Standard .....................................................................................64
`
`E.
`F.
`
`i
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`1.
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`3.
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`4.
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`2.
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`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
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`“thickness ... being substantially uniform throughout the tray”
` ...................................................................................................64
`VIII. The ’834 patent is not entitled to a priority date earlier than the ’186 patent’s
`filing date. ......................................................................................................66
`IX. Summary of Grounds .....................................................................................77
`X. Ground 1: Claims 1-15 would have been obvious over MacNeil .................77
`A. Overview of MacNeil ..........................................................................79
`B.
`Independent claim 1 ............................................................................83
`1.
`Preamble: A system including a vehicle and a floor tray for
`consumer installation into a predetermined foot well of the
`vehicle .....................................................................................104
`Element 1.a: a vehicle foot well having a floor, a substantially
`longitudinally disposed first foot well wall upstanding from the
`floor, a substantially transversely disposed second foot well
`wall upstanding from the floor and joined to the first foot well
`wall, a substantially longitudinally disposed third foot well wall
`upstanding from the floor and joined to the second foot well
`wall ..........................................................................................105
`Element 1.b: a vehicle floor tray molded from a sheet of
`polymeric material of substantially uniform thickness ...........109
`Element 1.c: a central panel of the tray substantially conforming
`to the floor of the vehicle foot well .........................................110
`Element 1.d: a substantially longitudinally disposed first tray
`wall joined to the central panel by a curved transition and
`standing up from the central panel to substantially conform to
`the first foot well wall .............................................................114
`Element 1.e: a substantially transversely disposed second tray
`wall joined to the central panel and to the first tray wall by
`respective curved transitions and standing up from the central
`panel, the second tray wall substantially conforming to the
`second foot well wall ..............................................................122
`
`5.
`
`6.
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`ii
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`7.
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`8.
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`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
`
`Element 1.f: a substantially longitudinally disposed third tray
`wall joined to the central panel and to the second tray wall by
`respective curved transitions and standing up from the central
`panel ........................................................................................130
`Element 1.g: the central panel and first, second and third tray
`walls each having an outer surface facing the vehicle foot well
`and an inner surface opposed to the outer surface, a thickness of
`the central panel and of the, first, second and third tray walls
`measured between the outer surface and the inner surface
`thereof being substantially uniform throughout the tray ........138
`Element 1.h: at least 90 percent of that one-third of the outer
`surfaces of the first, second and third tray walls which are
`closest to the respective top margins of the first, second or third
`tray walls being within one-eighth of an inch of the respective
`foot well walls .........................................................................142
`10. A POSA would have been motivated to achieve the claimed
`uniform thickness. ...................................................................143
`11. A POSA would have had a reasonable expectation of success.
` .................................................................................................145
`Independent claim 5 ..........................................................................147
`Independent claim 9 ..........................................................................154
`Dependent claims 2, 6, and 10 ..........................................................160
`1.
`Element 2.a, 6.a, 10.a: wherein the vehicle foot well has a
`substantially horizontally and longitudinally disposed sill plate
`located in an outboard direction from the foot well floor [or
`located outboard from the foot well floor] ..............................167
`Element 2.b, 6.b, 10.b: the tray having a sill plate panel joined
`to the central panel to extend horizontally therefrom in an
`outboard direction ...................................................................169
`Element 2.c, 6.c, 10.c: the sill plate having a top surface and the
`sill plate panel having a bottom surface, the sill plate panel
`
`3.
`
`9.
`
`2.
`
`C.
`D.
`E.
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`iii
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`

`

`F.
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`2.
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`3.
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`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
`
`bottom surface substantially conforming to the top surface of
`the sill plate .............................................................................171
`Dependent claims 3, 7, and 11 ..........................................................174
`1.
`Element 3.a, 7a, 11a: wherein the vehicle foot well has a sill
`curve joined to the third wall and the sill plate, the sill curve
`curving in a forward direction from a substantially horizontal to
`an upstanding disposition ........................................................179
`Element 3.b, 7.b, 11.b: the tray having a sill curve panel joined
`to the third tray wall and to the sill plate panel by respective
`curved transitions ....................................................................182
`Element 3.c, 7.c, 11.c: an outer surface of the sill curve panel
`substantially conforming to the sill curve of the vehicle foot
`well ..........................................................................................183
`G. Dependent claims 4, 8, and 12 ..........................................................185
`H.
`Independent claim 13 ........................................................................192
`1.
`Preamble: A vehicle floor tray for installation by a consumer in
`a vehicle foot well, the vehicle floor tray formed from a sheet of
`polymeric material of substantially uniform thickness ...........203
`Element 13.a: a substantially horizontal central panel ...........203
`Element 13.b: a first tray wall joined to the central panel by a
`curved transition, the first tray wall standing up from the central
`panel and being substantially longitudinally disposed ...........204
`Element 13.c: a second tray wall joined to the central panel and
`to the first tray wall by respective curved transitions, the second
`tray wall standing up from the central panel and being
`substantially transversely disposed .........................................204
`Element 13.d: a third tray wall joined to the central panel and to
`the second tray wall by respective curved transitions, the third
`tray wall standing up from the central panel and being
`substantially longitudinally disposed ......................................204
`
`2.
`3.
`
`4.
`
`5.
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`iv
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`

`

`6.
`
`8.
`
`9.
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`7.
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`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
`
`Element 13.e: the central panel having a general portion with an
`upward facing general surface and a reservoir portion with an
`upwardly facing general surface, the general surface of the
`reservoir portion disposed vertically below the general surface
`of the general portion ..............................................................205
`Element 13.f: a plurality of elongate, spaced-apart, hollow
`baffles formed within the reservoir portion to stand up from the
`general surface of the reservoir portion ..................................207
`Element 13.g: each of the general portion of the central panel,
`the reservoir portion of the central panel, the baffles and the
`first, second and third tray walls having an outer surface
`adapted to face a respective surface of a vehicle foot well and
`an inner surface opposed to the outer surface, a thickness
`measured between the respective inner and outer surfaces of the
`first tray wall, second tray wall, third tray wall, general portion
`of the central panel, reservoir portion of the central panel and
`the baffles being substantially uniform throughout the tray ...210
`A POSA would have been motivated to achieve the claimed
`uniform thickness, with a reasonable expectation of success. 211
`Dependent claim 14 ...........................................................................212
`I.
`Dependent claim 15 ...........................................................................215
`J.
`XI. Objective Indicia of Non-Obviousness .......................................................218
`XII. Conclusion ...................................................................................................219
`
`
`
`
`
`v
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`

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`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
`
`LIST OF MATERIALS CONSIDERED
`
`
`Description
`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”)
`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
`U.S. Patent No. 4,420,180 to Dupont et al., issued December 13,
`1983 (“Dupont”)
`
`Exhibit No.
`1001
`
`1002
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`1017
`1018
`1019
`
`vi
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`

`

`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
`
`
`Description
`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. 8,382,186 to MacNeil et al., issued February 26,
`2013 (“’186 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”)
`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
`
`Exhibit No.
`1020
`
`1021
`
`1022
`1023
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`1029
`1030
`1031
`1032
`1034
`1035
`1036
`
`
`
`
`
`vii
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`

`

`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
`
`I, Paul E. Koch, Ph.D., do hereby declare as follows:
`
`I.
`
`Introduction
`I have been engaged by Yita LLC (“Yita” or “Petitioner”) to investigate
`1.
`
`and opine on certain issues relating to U.S. Patent No. 8,833,834 (EX1001, “the
`
`’834 patent”), in connection with Yita’s Petition for Inter Partes Review. My
`
`opinions on these issues are presented below.
`
`2.
`
`I understand that the owner of the ’834 patent is MacNeil IP LLC
`
`(“Patent Owner”). In this declaration, I will first discuss the technology
`
`background related to the ’834 patent and then provide my analyses and opinions
`
`on claims 1-15 of the ’834 patent.
`
`3.
`
`In forming my opinions, I have relied on information and evidence
`
`identified in this declaration, including the ’834 patent, its prosecution history
`
`(including the prosecution history, sometimes called the “file wrapper,” of the
`
`relevant parent applications), prior art references in the Grounds analyzed herein,
`
`and other references cited herein. I also rely on my vast experience and expertise in
`
`the relevant field.
`
`II. Qualifications and Experience
`4. A copy of my curriculum vitae (“CV”) is submitted with this declaration
`
`as Exhibit 1032. While not intended to be exhaustive, my CV provides a
`
`substantially complete list of my education, relevant experience, academic and
`
`1
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`

`

`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
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`employment history, publications, professional activities, and speaking
`
`engagements.
`
`5.
`
`I am an expert in many aspects of plastic and polymer materials, plastic
`
`part design, tool design, and plastics processing and have been an expert since
`
`before the earliest alleged priority date of the ’834 patent, October 29, 2004.
`
`6.
`
`I received a Doctorate in Plastics Engineering from the University of
`
`Massachusetts – Lowell in 1996 and a Bachelor of Science in Chemical
`
`Engineering, from the University of Detroit in 1972.
`
`7.
`
`I am currently a Professor Emeritus at Penn State University (since
`
`2014) and have been a tenured professor there since 1992. While at Penn State, I
`
`established the Plastics Engineering Technology program at Penn State Behrend in
`
`Erie, Pennsylvania and I have taught all aspects of plastic and polymer materials,
`
`plastic part design, tool design, and plastics processing.
`
`8. My industry experience includes serving as Principal Researcher at
`
`Plastics Services Network (1995-Present), Program Manager at Avery
`
`International, Fasson Division (1987-1988), Manager of Engineering at Associated
`
`Enterprises/3M (1985-1987), Group Leader at Standard Oil Company/Energy
`
`Conversion Devices (1981-1984), and Senior Engineer at Standard Oil Company,
`
`Research Center (1972- 1981).
`
`2
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`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
`
`I have authored or co-authored over 40 journal articles, conference
`
`9.
`
`papers, workshop publications, technical reports, and book chapters on topics
`
`relating to the plastics industry.
`
`10. I have participated in, and been an active member of, professional
`
`conferences, including the following: Annual Technical Conference (ANTEC) and
`
`Annual Thermoforming Conferences and Certification Committees. Dates and
`
`other conferences attended can be found on the attached CV.
`
`11. I have been a member of several professional organizations, including
`
`the following: Society of Plastic Engineers (SPE), Plastics Engineers Certification
`
`Committee, American Institute Chemical Engineers (AIChE), and Accreditation
`
`Board for Engineering and Technology (ABET) Committee.
`
`12. I am an inventor/co-inventor of six U.S. Patents relating to plastics
`
`technology. Patent numbers can be found in the attached CV.
`
`13. I am very familiar with and have practical commercial experience with
`
`the design and manufacture of plastic and elastomer products as of the earliest
`
`alleged priority date of the ’834 patent.
`
`14. In preparing this Declaration, I have reviewed the ’834 patent and its file
`
`history (EX1002), and I have considered each of the documents cited herein, in
`
`light of general knowledge in the art (i.e., field) before October 29, 2004. In
`
`formulating my opinions, I have relied upon my more than 45 years’ experience,
`
`3
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`

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`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
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`education, and knowledge in the relevant art. In formulating my opinions, I have
`
`also considered the viewpoint of a person of ordinary skill in the art (“POSA”)
`
`before the relevant date, which I discuss below.
`
`15. I am being compensated for the services I am providing for Petitioner at
`
`my standard consulting rate of $375 per hour. My compensation is not contingent
`
`upon my performance, the outcome of this inter partes review or any other
`
`proceedings, or any issues involved in or related to this inter partes review or any
`
`other proceedings.
`
`III. Legal Principles
`A. Obviousness
`16. It is my understanding that obviousness is a basis for unpatentability. I
`
`understand that a patent claim is unpatentable if the differences between the
`
`claimed subject matter and the prior art are such that the claimed subject matter as
`
`a whole would have been obvious before the effective filing date of the claimed
`
`invention to a person having ordinary skill in the relevant art. I understand that an
`
`obviousness analysis should consider the scope and content of the prior art, the
`
`level of ordinary skill in the art, the differences between the claimed subject matter
`
`and the prior art, and any secondary considerations of nonobviousness, which
`
`include, for example, commercial success, praise of the invention, a long-felt need,
`
`or failure of others. I understand that obviousness can be based on a single prior art
`
`4
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`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
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`reference or a combination of references that either expressly or inherently disclose
`
`or suggest all limitations of the claimed invention. In an obviousness analysis,
`
`inferences and creative steps that a person of ordinary skill in the art (“POSA”)
`
`would employ can be taken into account. I understand that a prior art reference is
`
`available for obviousness evaluation not only for what the reference discloses but
`
`also for what the reference suggests.
`
`17. I also understand that design incentives and other market forces can
`
`prompt adoptions and variations of a work even if that work is in another field of
`
`endeavor. If a POSA can implement a predictable variation, the variation is
`
`obvious and not patentable. Similarly, an improvement to one device is obvious to
`
`apply to improve similar devices unless the technique requires more than ordinary
`
`skill.
`
`18. I understand that where the only difference between the prior art and the
`
`claims was a recitation of relative dimensions of the claimed device and a device
`
`having the claimed relative dimensions would not perform differently than the
`
`prior art device, the claimed device is not patentably distinct from the prior art
`
`device. Nor does scaling a known article distinguish the new article over the prior
`
`art.
`
`19. I understand that the size, shape, or configuration of a claimed structure
`
`may be a matter of design choice that a POSA would have found obvious absent
`
`5
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`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
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`persuasive evidence that a particular size, shape, or configuration of the claimed
`
`subject matter was significant or produced unexpected functionality or results.
`
`20. I understand that it may be obvious to try a solution even if that solution
`
`was significantly more expensive. The focus of the obviousness analysis is on
`
`technical feasibility, not economic feasibility.
`
`21. I am also informed and understand that a patent claim is unpatentable as
`
`obvious if the differences between the invention and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time of the invention to a
`
`POSA to which the subject matter pertains.
`
`22. I understand that whether there are any relevant differences between the
`
`prior art and the claimed invention is to be analyzed from the view of a person of
`
`ordinary skill in the art at the time of the invention. A person of ordinary skill in
`
`the art is a hypothetical person who is presumed to be aware of all of the pertinent
`
`art at the time of the invention. The person of ordinary skill is not an automaton
`
`and may be able to fit together the teachings of multiple references employing
`
`ordinary creativity and the common sense. And a POSA has the ability to use
`
`familiar items with obvious uses in another context or beyond their primary
`
`purposes.
`
`23. I understand that I do not need to look for a precise teaching in the prior
`
`art directed to the subject matter of the claimed invention. I understand that I may
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`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
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`take into account the inferences and creative steps that a person of ordinary skill in
`
`the art would have employed in reviewing the prior art at the time of the invention.
`
`For example, if the claimed invention combined elements known in the prior art
`
`and the combination yielded results that were predictable to a person of ordinary
`
`skill in the art at the time of the invention, then this evidence would make it more
`
`likely that the claim was obvious. On the other hand, if the combination of known
`
`elements yielded unexpected or unpredictable results, or if the prior art teaches
`
`away from combining the known elements, then this evidence would make it more
`
`likely that the claim that successfully combined those elements was not obvious. I
`
`understand that hindsight must not be used when comparing the prior art to the
`
`invention for obviousness.
`
`B. Motivation to Combine
`24. I understand that obviousness may be shown by demonstrating that it
`
`would have been obvious to modify what is taught in a single piece of prior art to
`
`create the patented invention. Obviousness may also be shown by demonstrating
`
`that it would have been obvious to combine the teachings of more than one item of
`
`prior art. I understand that a claimed invention may be obvious if some teaching,
`
`suggestion, or motivation exists that would have led a person of ordinary skill in
`
`the art to combine the applied references. I also understand that this suggestion or
`
`motivation may come from sources such as explicit statements in the prior art, or
`
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`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
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`from the knowledge of a person having ordinary skill in the art. Alternatively, any
`
`need or problem known in the field at the time and addressed by the patent may
`
`provide a reason for combining elements of the prior art. I also understand that
`
`when there is a design need or market pressure, and there are a finite number of
`
`predictable solutions, a person of ordinary skill may be motivated to apply both his
`
`skill and common sense in trying to combine the known options in order to solve
`
`the problem.
`
`25. In determining whether a piece of prior art would have been combined
`
`with other prior art or with other information within the knowledge of a person
`
`having ordinary skill in the art, the following are examples of approaches and
`
`rationales that may be considered:
`
`• Combining prior art elements according to known methods to yield
`
`predictable results.
`
`• Simple substitution of one known element for another to obtain
`
`predictable results.
`
`• Use of a known technique to improve similar devices, methods, or
`
`products in the same way.
`
`• Applying a known technique to a known device, method, or product
`
`ready for improvement to yield predictable results.
`
`8
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`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
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`• Applying a technique or approach that would have been “obvious to try”
`
`(choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success).
`
`• Known work in one field of endeavor may prompt variations of it for use
`
`in either the same field or a different one based on design incentives or
`
`other market forces if the variations would have been predictable to a
`
`person having ordinary skill in the art.
`
`• Some teaching, suggestion, or motivation in the prior art that would have
`
`led one of ordinary skill to modify the prior art reference or to combine
`
`prior art reference teachings to arrive at the claimed invention with a
`
`reasonable expectation of success.
`
`C. Claiming Priority
`26. I understand that in order for a claim to be entitled to the priority date of
`
`a previously filed application, the claim must have written description support in
`
`that previously filed application and the written description needs to have been
`
`carried over into the application the claim appears in and any intervening
`
`applications.
`
`27. I understand that a previously filed application provides written
`
`description support for a claim if the previously filed application demonstrates to a
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`POSA that the inventor had possession of the invention as of the date of the
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`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
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`previously filed application. Possession of the claimed invention is shown by
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`describing the claimed invention with all of its limitations using such descriptive
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`means as words, structures, figures, diagrams, and formulas that fully set forth the
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`claimed invention. I also understand that written description support must be
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`explicit or inherent in the previously filed application. The support cannot merely
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`obviously flow from the previously filed application.
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`IV. Level of Ordinary Skill in the Art
`28. I understand that the patent must be read and understood through the
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`eyes of a POSA at the time of the priority date of the claims. To determine the
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`appropriate level of a person having ordinary skill in the art, the following factors
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`may be considered: (a) the types of problems encountered by those working in the
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`field and prior art solutions thereto; (b) the sophistication of the technology in
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`question, and the rapidity with which innovations occur in the field; (c) the
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`educational level of active workers in the field; and (d) the educational level of the
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`inventor(s).
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`29. In light of the disclosed technology in the ’834 patent, a POSA would
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`typically have a bachelor’s degree in engineering: plastics, mechanical, or a closely
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`related field, or equivalent formal training, education, or practical experience in a
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`field relating to plastic product design, material science, or manufacturing. This
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`person would also have a minimum of three to five years of experience in plastics
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`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
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`engineering, manufacturing, plastic product design, or a related industry. This
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`description is an approximation and a higher level of training or practical
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`experience might make up for less education, and vice-versa.
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`30. In my opinion, the level of skill of a POSA would be the same in either
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`2012 or 2004 although, of course, the prior art a POSA would have knowledge of
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`would be different. The significance of these dates is discussed below.
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`V.
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`State of the Art
`31. Removable, rubberized or plastic floor mats have been an important part
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`of automotive interiors for more than 50 years. EX1010; EX1011. Generations of
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`drivers have recognized the need for such articles in order to protect or restore the
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`interior of a vehicle at or around the feet of the driver in an area known as the foot
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`well. These mats have been constructed from a variety of rubberized and plastic
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`materials and manufacturing methods, including, thermoforming.
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`A. Thermoforming Generally
`32. Thermoforming came into existence approximately 100 years ago when
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`early plastic materials were extruded into flat sheets. EX1008, 0019 (“More than a
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`century ago, celluloid or camphor-solvated cellulose nitrate, was the only
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`malleable semi-synthetic plastic. It was cut or rolled into sheet and made pliable
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`with steam. When soft, it was squeezed into shape in matched dies or rolled into
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`tubes and inflated against metal walls to produce parts. It was also draped over
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`Inter Partes Review of USPN 8,833,834
`Declaration of Paul E. Koch, Ph.D.
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`wooden forms.”). The term “thermoforming” is used generally in the plastics
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`industry to describe techniques for producing useful plastic articles from a flat
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`sheet of plastic using heat as a softener. EX1008, 0019. “In its simplest concept,
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`thermoforming is simply the manual draping of a temporarily softened sheet over a
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`simple mold shape.” EX1008, 0019.
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`33. One of the attractive aspects of thermoforming is the versatility and
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`relative low cost of the molds. EX1008, 0028. These molds can be made from
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`wood, plaster, or metal. EX1008, 0029.
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`In contrast to most plastic molding processes, relatively low
`temperatures and pressures are normally employed in thermoforming.
`For this reason prototype tooling becomes often sufficient to produce
`the few parts that are needed. Depending on many variables, the
`material for making such molds can be selected from wood, plaster,
`casting resins, glass fiber-reinforced plastics, white me