Paper No. 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`REFLECTIX, INC.
`
`Petitioner
`
`v.
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`PROMETHEAN INSULATION TECHNOLOGY LLC
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`Patent Owner
`
`
`
`U.S. Patent 8,936,847
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`TITLE: METALLIZED POLYMERIC FILM REFLECTIVE
`INSULATION MATERIAL
`
`Issue Date January 20, 2015
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312
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`

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`Petitioner’s Exhibit List
`
`Description
`U.S. Patent No. 8,936,847 (“‘847 Patent”)
`Japanese version and English translation of Japanese publication
`2001-65784 (“Sugiyama”)
`U.S. Patent Pub. No. 2006/0040091 (“Bletsos”)
`U.S. Patent Pub. No.: US 2006/0029777 (“Yanai”)
`U.S. Patent No.: US 3,640,832 (“Kurz”)
`U.S. Patent No. 6,322,873 (“Orologio ’873”)
`Declaration of David Yarbrough (“Yarbrough Declaration”)
`Prosecution history for US 7,935,410 Patent
`Prosecution history for ‘847 Patent
`U.K. Patent Application No. GB 2376206 (“Waight”)
`
`Exhibit No.
`1001
`1002
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`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION .......................................................................................... 1 
`I. 
`II.  MANDATORY NOTICES ............................................................................ 1 
`A. 
`Real Party in Interest (37 C.F.R. § 42.8(b)(1)) .................................... 1 
`B. 
`Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................. 1 
`C. 
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) .......................... 2 
`D. 
`Service Information (37 C.F.R. § 42.8(b)(4)) ...................................... 2 
`III.  GROUNDS FOR STANDING ....................................................................... 3 
`IV.  STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED ............................................................................... 3 
`A. 
`Claims for Which Review is Requested (37 C.F.R. §
`42.104(b)(1)) ........................................................................................ 3 
`Statutory Grounds of Challenge (37 C.F.R. § 42.104(b)(2)) ............... 3 
`B. 
`REASONS FOR THE RELIEF REQUESTED UNDER 37 C.F.R. §§
`42.22(A)(2) AND 42.104(B)(4) ..................................................................... 5 
`A. 
`Background .......................................................................................... 5 
`B. 
`Relevant Prosecution History ............................................................... 7 
`C. 
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ................................. 11 
`D. 
`Summary of the Prior Art ................................................................... 13 
`E. 
`The Challenged Claims Are Invalid Under 35 U.S.C. § 103(a) ........ 17 
`VI.  CONCLUSION ............................................................................................. 59 
`
`V. 
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`In re Aller,
`42 CCPA 824, 220 F.2d 454, 105 USPQ 233 (CCPA 1955) ....................... 24, 43
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`Ex parte Obiaya,
`227 USPQ 58 (Bd. Pat. App. & Inter. 1985) ........................................................ 7
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`Promethean Insulation Technology LLC v. Energy Efficient Solutions
`LLC,
`Civil Action No. 2:13-cv-01127-JRG-RSP (E.D. TX) ......................................... 2
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`Promethean Insulation Technology LLC v. Energy Q LLC,
`Civil Action No. 2:13-cv-01126-JRG-RSP (E.D. TX) ......................................... 2
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`Promethean Insulation Technology LLC v. Innovative Insulation Inc.,
`Civil Action No. 2:13-cv-01122-JRG-RSP (E.D. TX) ......................................... 2
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`Promethean Insulation Technology LLC v. Pregis Corporation et al.,
`Civil Action No. 2:13-cv-01120-JRG-RSP (E.D. TX) ......................................... 2
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`Promethean Insulation Technology LLC v. Reflectix, Inc.
`Civil Action No. 2:15-cv-00028-JRG-RSP (E.D. TX) ......................................... 1
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`Promethean Insulation Technology LLC v. Saving Haven LLC,
`Civil Action No. 2:13-cv-01129-JRG-RSP (E.D. TX) ......................................... 2
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`Promethean Insulation Technology LLC v. Sealed Air Corporation et
`al.,
`Civil Action No. 2:13-cv-01113-JRG-RSP (E.D. TX) ......................................... 1
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`Promethean Insulation Technology LLC v. Soprema, Inc. (Canada),
`Civil Action No. 2:15-cv-00029 (E.D. TX) .......................................................... 1
`
`Promethean Insulation Technology LLC v. Soprema, Inc. (Canada) et
`al.,
`Civil Action No. 2:13-cv-00004-RSP (E.D. TX) ................................................. 2
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`Promethean Insulation Technology LLC v. TVM Building Products
`Inc.,
`Civil Action No. 2:13-cv-01124-JRG-RSP (E.D. TX) ......................................... 2
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`Rules and Statutes
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`35 U.S.C. § 102(b) ..................................................................................................... 5
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`35 U.S.C. §102(e) ...................................................................................................... 5
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`35 U.S.C. § 103(a) ................................................ 4, 5, 17, 33, 37, 38, 51, 54, 57, 58
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`35 U.S.C. § 312 .......................................................................................................... 1
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`Other Authorities
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`37 C.F.R. § 42.8(b)(1) ................................................................................................ 1
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`37 C.F.R. § 42.8(b)(2) ................................................................................................ 1
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`37 C.F.R. § 42.8(b)(3) ................................................................................................ 2
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`37 C.F.R. § 42.8(b)(4) ................................................................................................ 2
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`37 C.F.R. §§ 42.22(a)(2) and 42.104(b)(4) ................................................................ 5
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`37 C.F.R. § 42.100 ..................................................................................................... 1
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`37 C.F.R. § 42.100(b) .............................................................................................. 11
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`37 C.F.R. § 42.104(b)(1) ............................................................................................ 3
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`37 C.F.R. § 42.104(b)(2) ............................................................................................ 3
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`37 C.F.R. § 42.104(b)(3) .......................................................................................... 11
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`M.P.E.P. 2145(II) ....................................................................................................... 7
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`M.P.E.P. 2141,II,A,2,C ............................................................................................ 19
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`MPEP 2112.01 ......................................................................................................... 10
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. § 312 and 37 C.F.R. § 42.100 et seq., Reflectix, Inc.
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`(“Petitioner”) requests inter partes review of claims 1-7, 9, 11, 13, 15-20, 22-24, 26,
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`27, 29, 30, 32, 33, 35, 36, 38-40, 42, 43, 45, 46, 48, 49, 51, 52, 54-58, 60, 61, 63, 64,
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`66, 67 (the “Challenged Claims”) of U.S. Patent No. 8,936,847 (“the ‘847 Patent,”
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`Ex. 1001), which issued on January 20, 2015. The fees for this petition have been
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`paid by credit card. The Board is authorized to deduct any underpayment of fees
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`associated with this petition from Norton Rose Fulbright US LLP Deposit Account
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`No. 06-2380, under Order No. 11502572.
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`II. MANDATORY NOTICES
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`A. Real Party in Interest (37 C.F.R. § 42.8(b)(1))
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`The real parties-in-interest of Petitioner are Reflectix, Inc., Sealed Air
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`Corporation, and Sealed Air Corporation (US).
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`B. Related Matters (37 C.F.R. § 42.8(b)(2))
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`The ‘847 Patent (or patents related to the ‘847 Patent) is involved in the
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`following proceedings that may affect or be affected by a decision in this
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`proceeding: Promethean Insulation Technology LLC v. Reflectix, Inc. Civil Action
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`No. 2:15-cv-00028-JRG-RSP (E.D. TX); Promethean Insulation Technology LLC v.
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`Soprema, Inc. (Canada), Civil Action No. 2:15-cv-00029 (E.D. TX); Promethean
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`Insulation Technology LLC v. Sealed Air Corporation et al., Civil Action No. 2:13-
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`cv-01113-JRG-RSP (E.D. TX); Promethean Insulation Technology LLC v. Pregis
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`Corporation et al., Civil Action No. 2:13-cv-01120-JRG-RSP (E.D. TX);
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`Promethean Insulation Technology LLC v. Innovative Insulation Inc., Civil Action
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`No. 2:13-cv-01122-JRG-RSP (E.D. TX); Promethean Insulation Technology LLC
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`v. TVM Building Products Inc., Civil Action No. 2:13-cv-01124-JRG-RSP (E.D.
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`TX); Promethean Insulation Technology LLC v. Energy Q LLC, Civil Action No.
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`2:13-cv-01126-JRG-RSP (E.D. TX); Promethean Insulation Technology LLC v.
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`Energy Efficient Solutions LLC, Civil Action No. 2:13-cv-01127-JRG-RSP (E.D.
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`TX); Promethean Insulation Technology LLC v. Saving Haven LLC, Civil Action
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`No. 2:13-cv-01129-JRG-RSP (E.D. TX); Promethean Insulation Technology LLC v.
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`Soprema, Inc. (Canada) et al., Civil Action No. 2:13-cv-00004-RSP (E.D. TX).
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`Additionally, the following Inter Partes Review proceedings are currently
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`pending on related patents: IPR2015-00039; IPR2015-00042; IPR2015-00044;
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`IPR2015-00045; IPR2015-00047.
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`C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
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`Lead counsel: Nathan J. Rees (Reg. No. 63,820)
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`Back-up counsel: Wayne Livingstone (Reg. No. 60,988)
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`D.
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`Service Information (37 C.F.R. § 42.8(b)(4))
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`Email: nate.rees@nortonrosefulbright.com
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`Post: Nathan J. Rees, Norton Rose Fulbright US LLP, 2200 Ross Avenue,
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`Suite 3600, Dallas, TX 75201 – Phone: 214.855.7164
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`Fax: 214.855.8200
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`Petitioner consents to electronic service.
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`III. GROUNDS FOR STANDING
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`This petition has been filed within one year of the earliest date Petitioner was
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`served with a complaint in the Litigation (2:15-cv-00028-JRG-RSP). Petitioner
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`certifies that the ‘847 Patent is available for inter partes review, and that Petitioner is
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`not barred or estopped from requesting the present inter partes review.
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`IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
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`A. Claims for Which Review is Requested (37 C.F.R. § 42.104(b)(1))
`
`Petitioner requests review and the cancellation as invalid of claims 1-7, 9, 11,
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`13, 15-20, 22-24, 26, 27, 29, 30, 32, 33, 35, 36, 38-40, 42, 43, 45, 46, 48, 49, 51, 52,
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`54-58, 60, 61, 63, 64, 66, and 67 of the ‘847 Patent.
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`B.
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`Statutory Grounds of Challenge (37 C.F.R. § 42.104(b)(2))
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`The grounds of challenge using the primary references listed below are
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`fundamentally different. The modification of one of the primary references includes
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`the substitution of a well-known coating layer. The modification of another primary
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`reference includes the substitution of a well-known insulation layer. Each of these
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`provides very different grounds of challenge, both legally and technically. In view
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`of the estoppel provisions of Inter Partes Review proceedings, Petitioner respectfully
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`submits that a full and fair hearing would preferably include analysis utilizing
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`combinations in view of each of the two asserted primary references.
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`For the reasons presented below, Petitioner seeks the following relief:
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`invalidation of claims of the ‘847 Patent based on the following combinations.
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`Sugiyama as Primary Reference
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`Ground
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`‘847 Patent Claims
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`Basis for Rejection
`
`Ground 1 Claims 1-4, 6, 15-18, 36,
`40, 46, 52, 56, 57, 60,
`Ground 2 Claims 5, 7, 9, 11, 13, 16
`- 20, 22, 24, 26, 27, 29,
`30, 32, 33, 35, 38, 42, 43,
`45, 48, 49, 51, 54, 58, 61,
`63, 64, 66, and 67
`Ground 3 Claims 23, 39, and 55
`
`Kurz as Primary Reference
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`35 U.S.C. § 103(a) based on Sugiyama in
`view of Waight
`35 U.S.C. § 103(a) based on over
`Sugiyama in view of Waight and Bletsos
`
`35 U.S.C. § 103(a) based on Sugiyama in
`view of Waight and Yanai
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`Ground
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`‘847 Patent Claims
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`Basis for Rejection
`
`Ground 4 Claims 1-3, 5, 15-18, 36,
`40, 43, 49, 52, 56, 60, 63,
`66
`Ground 5 Claims 4, 6, 16, 17, 18,
`46, and 57
`Ground 6 Claims 7, 19, 20, 22, 24,
`26, 27, 29, 33, 35, 38, 42,
`45, 51, 54, 61, 64 and 67
`Ground 7 Claims 9, 11, 13, 30, 32,
`48, and 58
`Ground 8 Claims 39 and 55
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`35 U.S.C. § 103(a) based on Kurz
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`35 U.S.C. § 103(a) based on Kurz in view
`of Orologio ’873
`35 U.S.C. § 103(a) based on Kurz in view
`of Bletsos
`
`35 U.S.C. § 103(a) based on Kurz in view
`of ‘Orologio ’873 and Bletsos
`35 U.S.C. § 103(a) based on Kurz in view
`of Yanai
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`Ground
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`‘847 Patent Claims
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`Basis for Rejection
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`Ground 9 Claim 23
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`35 U.S.C. § 103(a) based on Kurz in view
`of Bletsos and Yanai
`The earliest possible priority date for the ‘847 Patent is August 22, 2006. The
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`provisional filing fails to disclose at least a lacquer coating, which is required by
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`each claim. Kurz, Sugiyama, Orologio ’873, and Waight were issued/published
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`more than one year before the earliest priority date of the ‘847 Patent, thereby
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`rendering this references prior art to the ‘847 Patent under 35 U.S.C. § 102(b).
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`Bletsos was published February 23, 2006 in a publication of an application filed
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`August 23, 2004, thereby rendering it prior art under 35 U.S.C. §102(e). Yanai was
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`published on February 9, 2006 in a publication of an application filed on July 28,
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`2005, thereby rendering it prior art under 35 U.S.C. §102(e).
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`V. REASONS FOR THE RELIEF REQUESTED UNDER 37 C.F.R. §§
`42.22(A)(2) AND 42.104(B)(4)
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`A. Background
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`1. The ‘847 Patent
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`The ‘847 Patent is directed to a reflective insulation product having a
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`metallized polymeric film laminated to an insulation material. Ex. 1001 at Abstract.
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`The specification describes a reflective insulation material that includes multiple
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`layers. Figure 17 is exemplary to the claims at issue and is illustrated below:
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`As illustrated, the reflective insulation product includes an aluminum
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`metallized polyester layer 12. Ex. 1001 at 9:36-45. Polyethylene top film 16 is
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`sealed to a bubbled polyethylene film 18 to create a bubble-pack assembly having a
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`plurality of closed cavities. Ex. 1001 at 6:1-5, 9:36-45. Layer 14 is an adhesive
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`layer for securing the bubble-pack assembly to the metallized layer 12. Id. Layer 22
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`is a polyethylene film. Ex. 1001 at 9:36-45. Additionally, the insulation material
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`includes a coating layer 150 that provides “suitable” anti-corrosion protection. Ex.
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`1001 at 19:36. As set forth below, the elements of the insulative material recited in
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`the claims of the ‘847 Patent were well known and used in reflective insulation
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`products at least one year before the earliest claimed priority date of the ‘847 Patent.
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`The main feature relied on for patentability in the ‘847 Patent is the use of a
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`metallized surface, despite the fact that reflective insulation products having
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`metallized surfaces were implemented decades prior to the alleged invention. The
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`‘847 Patent states that the use of a metallized film, as opposed to a foil surface,
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`provides for improved fire performance of an insulation product in the ASTM E84
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`test and is also sucessful when the test is administered “without wire mesh support.”
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`Ex. 1001 at 4:29-36. The ‘847 Patent asserts that this fact was not known at the time
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`of the invention. Id. However, whether a latent performance property (i.e. burn
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`characteristics of a metallized film) of a structure was known or not is irrelevant to
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`patentability. Put differently, the recognition by the ‘847 Patent of a latent property
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`of a known metallized film with respect to fire performance is not inventive. “Mere
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`recognition of latent properties in the prior art does not render nonobvious an
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`otherwise known invention.” M.P.E.P. 2145(II); see also Ex parte Obiaya, 227
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`USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (holding that “The fact that appellant has
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`recognized another advantage which would flow naturally from following the
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`suggestion of the prior art cannot be the basis for patentability when the differences
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`would otherwise be obvious.”).
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`B. Relevant Prosecution History
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`The ‘847 Patent was filed on November 8, 2012 and assigned U.S. Patent
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`Application No. 13/672,334 (hereinafter “the ’334 Application”). Because the
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`subject matter of the claims is closely tied to the parent patent, US 7,935,410 (the
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`’410 Patent), a review of the prosecution history of the ’410 Patent is instructive.
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`The prosecution history for the ’410 Patent is lengthy but has one underlying
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`primary theme. Specifically, in Patent Owner’s response dated January 26, 2009,
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`Patent Owner stated that the use of metallized polymer films are “well known per
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`se,” but “the essence of the present invention is the discovery of the use of a
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`metallized polymeric film reflective insulation material in lieu of a metal foil . . .
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`unexpectedly provides a thermally insulated product that meets Class A standard
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`requirements.” Ex. 1007 January 26, 2006 Response at 8. Accordingly, the
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`Applicant admits that all of the materials disclosed in the invention are known, but
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`then asserts that certain properties of a metallized surface are unknown and that
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`there is no teaching or motivation in the art to substitute the metal foil of Orologio
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`’873 with a metallized polymer of the prior art. Id. at 9.
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`The Applicant was incorrect at least because the prior art clearly teaches that
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`thinly metallized surfaces provide better (lower) thermal conductivity properties
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`than both foil and thickly metallized surfaces. See Ex. 1005 at 1:18-20, 52-58; Ex.
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`1007 at ¶54. Accordingly, a direct teaching existed that would have motivated one
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`of ordinary skill in the art to make the modification proposed by the Examiner in the
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`office action.
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`In subsequent responses, e.g., the response of April 22, 2010, Patent Owner
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`continued to argue the difference between a metal foil and a metallized surface,
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`stating that one of ordinary skill in the art would not substitute a metallized film for
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`a metal foil. Ex. 1008 April 22, 2010 Response at 6. The Patent Owner further
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`argued that Orologio ’873 does not teach a metallized surface and does not teach
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`that foil and metallized surfaces are known equivalents. However, to the contrary,
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`Orologio ’873 explicitly teaches metallized surfaces and interchangeably uses metal
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`foil and metallized films as substitutable equivalents in stating that a “layer of metal
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`or metallized film” may be utilized (see Ex. 1005 at 12:11-13, claim 1). The Patent
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`Owner also provided a declaration by the inventor that indicated that the lacquer
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`coating deposited on an insulation material has essentially no effect on the fire
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`performance. Ex. 1008.
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`The arguments made by the Patent Owner regarding the substitution of foil
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`and metallized aluminum would be irrelevant when faced with a combination that
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`utilizes a metallized surface as a primary reference. However, during prosecution of
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`the ‘847 Patent, the Patent Owner was finally faced with a rejection that utilized a
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`metallized material as a primary reference, and in response, the Patent Owner
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`continued to argue that a person of ordinary skill would not have substituted foil for
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`a metallized surface. Ex. 1009 Office Action dated March 26, 2014, Response dated
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`July 25, 2014 pages 13-14. Specifically, the Patent Owner argued that the cited
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`combination does not address the “unexpected change in flammability and smoke
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`generations properties” observed when utilizing a metallized surface in view of foil.
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`Id. Patent Owner also explicitly addressed the metallized “chips” of Lindsey, as
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`opposed to the metallized sheets which are more akin to the products at issue. Id.
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`Therefore, the application of Lindsey in prosecution fell short of a true analysis of a
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`product that is analogous to the claims.
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`The Patent Owner’s remaining arguments in the July 25 2014 response were
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`equally inapposite. First, the references were argued separately (e.g. arguing that
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`Lindsay does not teach a lacquer coating when the secondary reference was relied on
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`to meet this limitation). Ex 1009 Response dated July 25, 2014 at Page 17. Then
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`the Patent Owner argued that the Bletsos reference is not a reflective insulation
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`material despite explicit teachings in the reference to the contrary. Id. The Patent
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`Owner argued that one could not utilize the film coating of Lindsey with the wrap of
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`Bletsos, despite the fact that the rejection was utilizing the lacquer coating of Bletsos
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`with the metallized surface of Lindsey. Id at 18. Further, Patent Owner argued that
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`Bletsos does not meet the recited fire properties, despite the fact that the relevant
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`inquiry was whether Lindsey met these properties with the addition of the lacquer
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`coating of Bletsos. Id.
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`As described above, the only teaching of the ‘847 Patent to inform a person of
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`skill in the art of how to meet the claimed burning characteristics is the use of a
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`metallized layer with the other standard layers of a reflective insulation product.
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`Because of this, the examiner utilized a reference that taught metallization and relied
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`on inherency to meet these burning characteristics. The examiner did not utilize the
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`presumption analysis of M.P.E.P. 2112.01 (stating that where the claimed and prior
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`art products substantially identical in structure or composition a prima facie case of
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`obviousness has been established). In response to the Examiner’s inherency
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`argument, the Patent Owner argued that the Examiner did not show that the burning
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`characteristics were necessarily present in the asserted combination of references (a
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`very high burden). See id. at 18-21.
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`In view of the July 25, 2014 response, the ‘847 Patent was allowed and
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`issued. However, the Examiner never considered whether modifying a reflective
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`insulation product that has a metallized film (the alleged inventive feature and the
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`feature that provides the burning characteristics) to meet the claimed burning
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`characteristics would have been an obvious modification at the time of the invention.
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`As explained in detail below, with prior art that is more on point than used by the
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`Examiner, such a modification would have been obvious to one of ordinary skill in
`
`the art.
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`C. Claim Construction (37 C.F.R. § 42.104(b)(3))
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`In an inter partes review, a claim in an unexpired patent is given the “broadest
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`reasonable construction in light of the specification of the patent in which it
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`appears.” 37 C.F.R. § 42.100(b). The following summarizes how certain claim
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`phrases of the ‘847 Patent should be construed for purposes of Inter Partes Review:
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`1.
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`“lacquer coating”: The term “lacquer” is used generically in the ‘847
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`Patent and would be understood to refer broadly to any liquid-based material that
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`solidifies to provide a protective coating. Ex. 1007 at ¶24. Lacquer is regularly used
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`in the art as a generic coating term without incorporating any specific technical
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`definition. Id. As described in the ‘847 Patent, the lacquer coating is applied by
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`techniques such as “brushing, spraying, deposition and the like, as is well-known in
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`the art.” Ex. 1001 at 7:43-48.
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`2.
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`“exposed”: means that the “polymeric material” (e.g., bubble
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`assembly or scrim) is positioned on the side of the metallized film, and the opposite
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`reflecting metal side is outward facing with respect to the polymeric material..
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`“Exposed” is used in reference to any of the following components of a coated
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`metallized film: a “lacquer-coated surface” (claim 1), a “lacquer coating” (claim 19),
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`a “coated metallized surface” (claim 36), and a “metallized surface” (claims 56-57).
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`Ex 1007 at 19-20.
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`3.
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`“acrylic polymer or an acrylic copolymer”: An acrylate polymer or
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`copolymer formed based on the structure of acrylic acid. Ex 1007 at 25.
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`4.
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`“reflective insulation product”: A reflective insulation product is a
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`product “depending for its performance upon reduction of radiant heat transfer
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`across air spaces by use of one or more surfaces of high reflectance and low
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`emittance.” Ex. 1007 at 18.
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`5.
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`“scrim”: a scrim or scrim layer is a layer of woven material for
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`providing stability and reinforcement to, for example, a reflective insulation product.
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`Ex. 1007 at 27.
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`6.
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`“foam”: Foam is a plastic layer expanded chemically, mechanically or
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`thermally to form a light weight cellular structure. A reflective insulation product
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`that is “free” of foam is one that does not contain such lightweight plastic. Ex. 1007
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`at 28.
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`7.
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`“foil-free”: as used in the ‘847 Patent, a reflective insulation product
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`having a metalized surface is foil-free as metallization has been used in lieu of foil.
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`Ex. 1007 at 26.
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`D.
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`Summary of the Prior Art
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`1. Sugiyama
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`Sugiyama teaches a reflective insulation product having a bubble-pack
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`assembly of cap film 1 and back film 2 and a metallized polymeric film bonded to
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`the bubble-pack assembly in a position so the metallized surface is exposed. The
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`metallized film includes film 4 with an exposed aluminum vapor-deposited
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`(metallized) layer 3. Ex. 1006 at [0003]; Fig. 1; Ex. 1007 at ¶¶37, 38. An exposed
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`protective overcoat layer 5 is disposed on the metallized surface. Ex. 1006 at
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`[0003]; Fig. 1. The flexible reflective insulation product is taught to be flexible
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`enough to “wrap an article.” Ex. 1006 at [0004]. Further, the insulation product is
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`used to insulate the walls, ceilings, or floors of a building. Id.
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`Having established the state of the prior art with the Fig. 1 embodiment,
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`Sugiyama describes that even with the polyethylene protective overcoat layer (5),
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`the metallized layer (3) can still oxidize. Ex. 1006 at [0004]; Ex. 1007 at ¶39.
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`Accordingly, Sugiyama demonstrates that one of ordinary skill in the art would have
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`been motivated to better protect the exposed metallized layer shown in the prior art
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`embodiment of Fig. 1. Ex. 1007 at ¶¶39, 40.
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`2. Kurz
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`Kurz teaches a reflective insulation material for insulating “the inside or
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`outside of floors or walls of buildings.” Ex. 1003 at 1:5-10; Ex. 1007 at ¶47. Figure
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`1 of Kurz is shown below:
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`The insulation material of Kurz includes a flexible heat-insulating backing 1,
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`preferably “foamed plastics material” or thick non-woven fabric (i.e. scrim). Ex.
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`1003 at 1:4-7, 55-62, 2:20-31. Kurz teaches the use of a metallized polymeric film
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`having a metallized layer 3 (vapor deposited aluminum) on a carrier sheet 2 made
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`from various polymers (polyphthalic ester, polyethylene, polypropylene, etc.). Ex.
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`1003 at 1:43, 2:41, 3:9-10, Ex. 1007 at ¶53-54. An exposed anti-oxidation varnish
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`protective coating 4 is applied to the metallized layer 3. Ex. 1003 at 2:1-13, 40-45.
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`The coating 4 is clear (i.e. “permeable to radiant heat”). Ex. 1003 at 2:43. The
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`metallized polymeric film is secured or laminated to the heat-insulating backing 1.
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`Ex. 1003 at 2:3-4, 50.
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`Kurz teaches that foil layers and thickly deposited metallized layers provide
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`disadvantages for thermal conductivity and resilience of an insulative product. Ex.
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`1003 at 1:18-20, 53-58; Ex. 1007 at ¶54. Therefore, Kurz teaches the use of a thinly
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`deposited metallized layer that can be optimized to provide for reflectivity and
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`flexibility of the product. Ex. 1003 at 1:62-69; Ex. 1007 at ¶54. Kurz teaches using
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`aluminum in the metallized layer to achieve optimal reflectivity. Ex. 1003 at 1:71-
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`75; Ex. 1007 at ¶54.
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`To avoid oxidation and retain the reflectivity of the aluminum, Kurz teaches
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`that a protective coating is applied to the metal layer “immediately” after the metal
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`layer has been deposited. Ex. 1003 at 2:1-3; Ex. 1007 at ¶56.
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`One of ordinary skill in the art would understand that the varnish protective
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`coating 4 described in Kurz is a lacquer protective coating. Ex. 1007 at ¶59. Kurz
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`teaches a varnishing process such as spraying to apply the coating. Ex. 1003 at 2:13,
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`48-49; Ex. 1007 at ¶59. In the art, the terms “lacquer” and “varnish” are synonyms.
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`Ex. 1007 at ¶59. Kurz further teaches that the thickness of the protective coating is
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`between 1-5 microns. Ex. 1003 at 2:14-16. It is understood that the thickness of the
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`coating will determine to what extent the coating is transparent to thermal radiation.
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`Ex. 1007 at ¶59. In fact, Kurz explicitly teaches that coating 4 is “permeable to
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`radiant heat” and that the thickness of the coating may be varied to achieve the
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`strongest reflection by the metallized layer at desired wavelengths. Ex. 1003 at
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`1:44-49, 2:16-19, 43; Ex. 1007 at ¶59.
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`3. Waight
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`Waight is directed to an insulative cavity wall lining sheet 10. Waight
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`discloses that cavity wall lining sheet 10 includes a bubble sheet 11, 12 bonded to an
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`exposed metal foil 15. Ex. 1010 at Abstract; Fig. 2.
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`Waight teaches preventing corrosion of the aluminum surface 15. Ex. 1004 at
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`3:7-9. One method of preventing corrosion, according to Waight, is using “a thin
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`coating of lacquer which improves the foil reflectivity and thus improves the
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`insulation value of the construction described herein.” Ex. 1010 at 3:9-12 (emphasis
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`added); Ex. 1007 at ¶ 69.
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`4. Bletsos
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`Bletsos is directed to low-emissivity metallized sheets—i.e. reflective
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`insulation products. Ex. 1003 Title. Bletsos discloses various well-known types of
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`layers that are used in the present claims such as a scrim layer, and acrylic lacquer
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`coating. Ex. 1003 at ¶¶ 37, 47; ; Ex. 1007 at ¶ 71.
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`5. Orologio ‘873 and Yanai
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`The Orologio ’873 and Yanai references illustrate further features that were
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`commonly known in the art. For example, Orologio ’873 teaches that reflective
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`insulation materials were known to include bubble pack assemblies. Ex. at 1006 at
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`1:12-16. Yanai further teaches that reflective insulation materials were known to
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`use metallized polyester films. Ex. 1004 at ¶ 17.
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`4. Summary regarding the prior art references
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`In view of the above, the prior art relied on herein and the supporting expert
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`testimony makes clear that each element (including the allegedly inventive
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`metallized film) of the reflective insulation product recited in the challenged claims
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`was well known in the art at least one year before the earliest claimed priority date
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`of the ‘847 Patent. Modifications of the art to meet the claims would have been
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`obvious to one of ordinary skill in the art at the time of the alleged invention claimed
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`in the ‘847 Patent. Therefore, Petitioner submits that there is a reasonable likelihood
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`of success that Petitioner will prevail in the present an Inter Partes Review.
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`E.
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`The Challenged Claims Are Invalid Under 35 U.S.C. § 103(a)
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`Pursuant to Rule 42.104(b)(4)-(5), the following demonstrates where each
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`element of the challenged claims is found in the prior art.
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`1. Ground 1 – Claims 1-4, 6, 15-18, 36, 40, 46, 52, 56, 57, 60, and 66 are
`obvious under 35 U.S.C. § 103(a) over Sugiyama in view of Waight
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`a. Claim 1
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`[1.0] “A reflective insulation product”
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`Sugiyama teaches this limitation because it discloses a heat insulating sheet
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`laminated with an aluminum vapor-deposited film: “a configuration . . . with an
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`aluminum vapor-deposited film — as a heat-insulating sheet.” Ex. 1002 at ¶ 2; Ex.
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`1007 at ¶ 32.
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`[1.1] “a metallized thermoplastic film having a clear lacquer
`coating on a metallized surface”
`Sugiyama teaches aspects of this limitation because Sugiyama discloses, “a
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`plastic film (4) having an aluminum vapor-deposited layer (3) . . . An overcoat
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`layer (5) is frequently disposed on the surface of the aluminum vapor-deposited
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`layer (3) in order to protect it.” Ex. 1002 at ¶ 3 (emphasis added). Sugiyama further
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`teaches, “The plastic is generally polyethylene and more particularly a low-density
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`polyethylene.” Ex. 1002 at ¶ 4. Polyethylene is a thermoplastic. Ex. 1007 at