`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Solenis LLC,
`
`Petitioner
`
`v.
`
`Nalco Company,
`
`Patent Owner
`
`
`
`PETITIONER’S EXHIBIT LIST
`
`Case No. IPR2016-01281
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Exhibit No.
`
`PETITIONER’S EXHIBIT LIST
`
`
`Description
`
`1001
`1002
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`1008
`
`1009
`1010
`1011
`1012
`1013
`
`1014
`1015
`
`1016
`
`1017
`1018
`
`1019
`1020
`
`U.S. Patent No. 8,465,623 to Zhao (“the ’623 Patent)
`Declaration of Dr. David Dyer
`Tsuen-Hsuin, “Raw Materials for Old Papermaking in China,”
`93:4 J. of Am. Oriental Soc. 510 (1973)
`Excerpts from G. Spence, “Wet- and Dry-Strength additives—
`Application, Retention, and Performance,” 8 (TAPPI Press,
`1999)
`Hubbe, “Acidic and Alkaline Sizings for Printing, Writing, and
`Drawing Papers,” The Book and Paper Group Annual, Vol. 23,
`pp. 139-151 (2004)
`Excerpts from Charles F. Cross & Edward J. Bevan, A Text-
`Book of Paper-Making 130 (1888)
`U.S. Patent No. 5,126,014 to Chung
`General Paper Machine Wet End. Retention of Fines and Fillers
`During Papermaking, Jerome M. Gess 2d. ed. 1998
`4 Papermaking Chemistry (Raimo Alen 2d ed. (2007))
`U.S. Patent No. 2,992,964 to Werner
`U.S. Patent No. 5,017,268 to Clitherow
`WO 06/100996 to Kimura and Certified English Translation
`A. Dunham, R. Jakubowski, S. Govoni, P. Pruszynski, “Filler
`Retention—Recent Challenges and Possible Solutions,” 1999
`TAPPI Papermakers Conference Proceedings
`U.S. Patent No. 5,653,795 to Brown
`File History of U.S. Patent Application No. 13/272,714, which
`issued as the '623 patent
`“GCC vs. PCC as the Primary Filler for Coated and Uncoated
`Woodfree Paper,” M. Laufmann, M. Forsblom, M. Strutz, S.
`Yeakey, 1998 TAPPI Papermakers Conference Proceedings
`(“Laufmann”).
`File History of U.S. Patent Application No. 13/919,167
`Excerpts from W. Scott, “Principles of Wet End Chemistry,”
`TAPPI Press 1996.
`TAPPI Procedure T 205, § 7.2.3
`U.S. Patent No. 4,732,748 to Stewart
`
`Patent 8,465,623
`
`1
`
`IPR2016-01281
`
`
`
`Exhibit No.
`
`Description
`
`1021
`
`1022
`1023
`1024
`1025
`1026
`1027
`
`Lotfi I., Ebrahimi A., and Hajian M., Int. J. Env. Health Eng.
`2014
`U.S. Patent No. 8,454,798 to Ban
`U.S. Patent Application No. 14/537,055
`U.S. Patent No. 6,592,718 to Wong Shing
`Curriculum Vitae of David A. Dyer
`Complaint in District Court Litigation
`Nalco 2011 PaperCon Presentation Regarding High-Filler
`Technology
`Nalco Case Studies
`1028
`Save Fiber and Maintain Properties
`1029
`1030 (Not Filed) WO 06/100996 to Kimura and Notarized English Translation
`1031 (Not Filed) Supplemental Declaration of David A. Dyer
`1032
`Settlement Agreement between the Parties
`
`
`Date: August 24, 2017
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Michael P. Chu
`Michael P. Chu
`Kevin P. Shortsle
`McDermott Will & Emery LLP
`227 West Monroe Street, Suite 4700
`Chicago, Illinois 60606
`Phone: 312.372.2000
`Fax: 312.984.7700
`mchu@mwe.com
`kshortsle@mwe.com
`
`Attorneys for Petitioner Solenis LLC
`
`Patent 8,465,623
`
`2
`
`IPR2016-01281
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of Petitioner’s Exhibit List was
`served via email on August 24, 2017 upon:
`
`Anthony R. Zeuli
`tzeuli@merchantgould.com
`MERCHANT & GOULD
`3200 IDS Center
`80 South Eighth Street
`Minneapolis, MN 55402
`
`DM_US 84295094-1.098680.0012
`
`Patent 8,465,623
`
`
`
`
`
`
`/s/ Michael P. Chu
`Michael P. Chu
`
`
`
`
`IPR2016-01281
`
`
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