`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`CASCADES CANADA ULC
`and
`TARZANA ENTERPRISES, LLC
`Petitioner,
`
`v.
`
`ESSITY HYGIENE AND HEALTH AB,
`Patent Owner.
`____________
`
`Case IPR2017-01921
`Patent 9,320,372
`____________
`
`
`
`
`
`
`
`
`
`
`DECLARATION OF T. KIM PARNELL, PhD, PE
`UNDER 37 C.F.R. § 168 IN SUPPORT OF
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`ESSITY EXHIBIT 2005
`Cascades v. Essity, IPR2017-01921
`
`

`

`TABLE OF CONTENTS
`
`
`
` BACKGROUND AND QUALIFICATIONS ........................................................................1 I.
`
`II.
`
` MATERIALS CONSIDERED ..............................................................................................5
`
`
`
` LEVEL OF ORDINARY SKILL IN THE ART ................................................................8 III.
`
`
`
` LEGAL STANDARDS .........................................................................................................8 IV.
`
`V.
`
` SUMMARY OF CONCLUSIONS .....................................................................................15
`
`
`
` SUMMARY OF THE ‘372 PATENT ...............................................................................18 VI.
`
`A. Background of the Relevant Technology ...................................................................18
`
`B. Disclosure of the ‘372 Patent .....................................................................................19
`
`VII.
`
` CLAIM CONSTRUCTION ...............................................................................................22
`
`VIII.
`
` HOCHTRITT AND/OR GROSRIEZ DO NOT RENDER THE CLAIMS
`UNPATENTABLE ...........................................................................................................23
`
`A. Summary of the Cited References .............................................................................25
`
`1. Hochtritt ..........................................................................................................25
`
`2. Grosriez ..........................................................................................................28
`
`B. Hochtritt Does Not Anticipate Claims 1-3, 6, or 10-18 .............................................32
`
`1. Hochtritt Fails to Disclose an Offset First Fold .............................................33
`
`2. Hochtritt Fails to Disclose that Two Panels of a Greater Length than the
`Other Two Panels ......................................................................................36
`
`3. Hochtritt Fails to Disclose that the Panels of One Sheet Overlap the
`Panels of an Adjacent Sheet by an Approximately Equal Extent ...............37
`
`4. The Remaining Dependent Claims are Not Anticipated .................................38
`
`C. Grosriez Does Not Anticipate Claims 1-3, 8, 9, 12, or 13 .........................................39
`
`1. Grosriez Fails to Disclose an Interfolded Stack of Sheets, where Each
`Sheet Includes an Offset First Fold and Interfolding Fold ........................39
`
`2. Grosriez Fails to Disclose that the Panels of One Sheet Overlap the
`Panels of an Adjacent Sheet by an Approximately Equal Extent ...............42
`
` ii
`
`

`

`3. Grosriez Fails to Disclose Offset Portions Positioned Either Interiorly or
`Exteriorly ...................................................................................................43
`
`4. The Remaining Dependent Claims are Not Anticipated .................................46
`
`D. Hochtritt Does Not Render Claims 1-3 or 6-20 Obvious ...........................................46
`
`1. Modifying Hochtritt to Include an Offset First Fold Involves More than
`Choosing One of “Two Known Options” ..................................................47
`
`2. Modifying Hochtritt to Include an Offset First Fold is More than a
`“Simple Substitution” ................................................................................48
`
`3. Hochtritt Provided a Complete Solution for Achieving the Desired
`Softness, Drape, and Shape .......................................................................49
`
`4. The Alleged Motivations for Modifying Hochtritt Lack Any Basis in Fact ....51
`
`5. The Remaining Dependent Claims are Not Obvious ......................................52
`
`E. The Combination of Hochtritt and Grosriez Does Not Render Claims 1-20
`Obvious ..................................................................................................................53
`
`1. The Proposed Combination of Hochtritt and Grosriez Would Have Been
`Viewed by a PHOSITA as Problematic .....................................................54
`
`2. The Petition Fails to Identify How the Proposed Combination Arrives at
`Dependent Claims 2, 3, 8, or 9 of the ‘372 Patent .....................................56
`
`3. The Features of Claims 4 and 5 are Not Mere “Design Choices” .................56
`
`4. The Prior Art Teaches Away from the Proposed Combination, Namely
`the Features of Claims 4 and 5 ..................................................................57
`
`5. The Remaining Dependent Claims are Not Obvious ......................................59
`
`
`
` CONCLUSION ...................................................................................................................60 IX.
`
`
`
` iii
`
`

`

`
`
`I, T. Kim Parnell, declare under penalty of perjury that the following is true
`
`and correct. All statements made herein of my own knowledge are true and all
`
`statements made on information and belief are believed to be true. I understand
`
`that perjury and/or a willful false statement and the like are punishable by fine or
`
`imprisonment, or both (18 U.S.C. § 1001) and may jeopardize the validity of the
`
`application or any patent issuing thereon.
`
`I.
`
` BACKGROUND AND QUALIFICATIONS
`
`1.
`
`I have been retained as an expert witness on behalf of Essity Hygiene
`
`and Health AB, formerly SCA Hygiene Products AB (collectively with its
`
`affiliated companies, “Essity”) in connection with the Petition for inter partes
`
`review of U.S. Patent No. 9,320,372 (“the ‘372 patent”) filed by Cascades Canada
`
`ULC and Tarzana Enterprises, LLC (collectively, “Petitioner”). I was also retained
`
`as an expert witness on behalf of Patent Owner in connection with the Petition for
`
`inter partes review of U.S. Patent No. 8,597,761 (“the ‘761 patent”) filed by
`
`Petitioner. The ‘372 patent is a continuation application of the ‘761 patent and
`
`therefore includes the same disclosure. The claims of the ‘372 patent and the
`
`claims of the ‘761 patent are very similar. My opinions contained herein are thus
`
`very similar to those that I provided for the ‘761 patent.
`
`2.
`
`Essity filed a Preliminary Response on November 17, 2017.
`
`Following that submission, the Board instituted inter partes review of claims 1-3,
`
` 1
`
`

`

`6, and 10-18 of the ‘372 patent as allegedly anticipated by U.S. Patent Publication
`
`No. 2005/0058807 to Hochtritt (“Hochtritt”). The Board also instituted review of
`
`claims 1-3, 8, 9, 12, and 13 as allegedly anticipated by U.S. Patent No. 6,602,575
`
`to Lefevre du Grosriez (“Grosriez”). The Board further instituted review of claims
`
`1-3 and 6-20 as allegedly obvious over Hochtritt. Finally, the Board instituted
`
`review of claims 1-20 as allegedly obvious over the combination of Hochtritt and
`
`Grosriez.
`
`3.
`
`Among other things, I have been asked to provide my opinion as to
`
`whether the Petition for inter partes review demonstrates, by a preponderance of
`
`the evidence, that claims 1-20 of the ‘372 patent are anticipated by or obvious over
`
`Hochtritt and/or Grosriez. It is my understanding that this Declaration will be used
`
`to respond to the Petition and its supporting materials.
`
`4.
`
`I am being compensated for my time in connection with this
`
`Declaration at my standard consulting rate of $400 per hour. My compensation
`
`does not depend on the outcome of this inter partes review.
`
`5.
`
`I am over eighteen years of age and I am competent to testify as to the
`
`matters set forth herein if I am called upon to do so. My current Curriculum Vitae
`
`(CV) is attached hereto as Exhibit 2009 and provides a detailed record of my
`
`academic background, professional qualifications, including a list of publications,
`
`and professional activities. Relevant highlights are summarized below.
`
` 2
`
`

`

`6.
`
`In 1978 I received a BES in Engineering Science & Mechanics (with
`
`Highest Honors) from the Georgia Institute of Technology. In 1979 I received a
`
`MSME in Mechanical Engineering from Stanford University. In 1984 I received a
`
`Ph.D. in Mechanical Engineering from Stanford University.
`
`7.
`
`I am a licensed professional Mechanical Engineer (PE license
`
`M25550) in the State of California. I have over 30 years of experience as a
`
`professional engineering consultant, including 1986-1999 as a Senior Managing
`
`Engineer at Exponent (a large engineering and scientific consulting firm, publically
`
`traded as EXPO) and 2000 to Present as Principal of Parnell Engineering &
`
`Consulting (PEC). My practice encompasses patents, design, failure analysis, and
`
`reliability for a variety of industrial, medical, and consumer products.
`
`8.
`
`I have consulted and worked in the manufacturing and process field. I
`
`have consulted on projects involving pulp and paper products and associated
`
`equipment. This work includes packaging and equipment for producing packaging
`
`with issues such as cutting, folding, assembling, and stacking. In addition, I
`
`received an in-depth inspection tour of the Essity Paper Plant in Cherokee,
`
`Alabama on March 28, 2018. This tour was conducted by Mr. Paul Carlson of
`
`Essity and included a review of all equipment and processes used at the plant in
`
`producing folded paper products. Essity Counsel Mr. David Mancino also joined
`
` 3
`
`

`

`on this tour. This inspection was very useful in terms of a close focus and review
`
`of all steps in the paper converting processes.
`
`9.
`
`I have university experience and was a full-time member of the
`
`Mechanical Engineering faculty at Santa Clara University from 2010-2012 and
`
`taught courses covering a range of topics including Mechanical Design, Finite
`
`Element Analysis (FEA), Mechanism Dynamics, Manufacturing, Material Science,
`
`and Composite Materials. During this time, I served as the Faculty Advisor for
`
`several Design Projects such as the first entry by Santa Clara University in the
`
`SAE Formula-Hybrid competition. In this case, the student team built a full-
`
`electric vehicle per SAE specifications and took it to New Hampshire for
`
`evaluation and judging in the international competition.
`
`10.
`
`I also taught graduate courses in Mechanical Engineering at Stanford
`
`University from 1995-1996. I have delivered numerous invited presentations,
`
`short-courses, and seminars on a range of technical topics to professional
`
`organizations. Some topics include Mechanical Design for Reliability (MDfR)
`
`courses tailored to specific types of products and industries, and Medical Device
`
`Technology. I also taught several courses involving the application of simulation
`
`and analysis tools and how to better utilize simulation in the design cycle to reduce
`
`time and improve product reliability.
`
` 4
`
`

`

`11.
`
`I am a Fellow of the American Society of Mechanical Engineers
`
`(ASME) and a Member of SAE (Society of Automotive Engineers), ASM (ASM
`
`International), the ASM Electronic Device Failure Analysis Society (EDFAS), and
`
`the ASM Shape Memory & Superelastic Technology (SMST) Society. I am also a
`
`Senior Member of the Institute of Electrical and Electronic Engineers (IEEE) and a
`
`member of several IEEE Societies
`
`including Components, Manufacturing
`
`Technology (CPMT), Sensors Council, and presently Vice-Chair of the Vehicular
`
`Technology Society (VTS). I was elected as Chair of the IEEE Santa Clara Valley
`
`Section in 2011 (the SCV Section is the largest IEEE Section in the world with
`
`over 12,000 members in Silicon Valley). I was elected as Chair of the IEEE
`
`Consultants’ Network of Silicon Valley (IEEE-CNSV) in 2008-2009 and remain as
`
`a Member of the Board of Directors for this organization.
`
`
`
` MATERIALS CONSIDERED II.
`
`12.
`
`In preparing this Declaration and in the process of developing my
`
`opinions below relating to the Petition for inter partes review, I considered the
`
`Petition and each of the references and unpatentability grounds presented therein. I
`
`have considered the exhibits submitted with the Petition, including the Declaration
`
`of Mate Mrvica. I have also relied upon my education, experience, and knowledge
`
`of engineering practices and principles in the paper products industry, as well as
`
`my understanding of the applicable legal principals described below. I have
`
` 5
`
`

`

`reviewed the Board’s Institution Decision that was entered on February 5, 2018
`
`(Paper 9). My opinions are based on consideration of the following materials:
`
`Paper 4
`Paper 5
`Paper 6
`Paper 7
`
`
`Paper 2
`Paper 3
`Paper 1
`
`
`Petitioner Cascades Canada ULC’s Power of Attorney
`Petitioner Tarzana Enterprises, LLC’s Power of Attorney
`Petition for Inter Partes Review of U.S. Patent No. 9,320,372
`(“Petition”)
`Notice of Accord Filing Date
`Patent Owner’s Mandatory Notices
`Patent Owner’s Power of Attorney
`Patent Owner’s Preliminary Response to Petition
`IPR2017-01921 (“Preliminary Response”)
`Trial Instituted Document IPR2017-01921
`Paper 9
`U.S. Patent No. 8,597,761 (“the ‘761 patent”)
`Exhibit 1001
`Exhibit 1002 Mrvica Declaration (“Mrvica Decl.”)
`Exhibit 1003 Mrvica CV
`Exhibit 1004
`2011 Hochtritt Litigation, Expert Report of Carlson
`Exhibit 1005
`SCA v Tarzana - SCA proposed construction
`Exhibit 1006
`SCA v Tarzana - Tarzana Proposed Construction
`Exhibit 1007 Webster Dictionary Definition
`Exhibit 1008
`Oxford Dictionary Definition
`Exhibit 1009
`Random House Dictionary Definition
`Exhibit 1010
`U.S. Patent No. 1,666,553 (“Christman”)
`Exhibit 1011
`U.S. Patent No. 1,427,420 (“Sargent”)
`Exhibit 1012
`U.S. Patent No. 1,632,446 (“Krueger”)
`Exhibit 1013
`EP Patent No. 0286538 (“Pigneul”)
`Exhibit 1014
`EP Patent No. 0302382 (“Lloyd”)
`Exhibit 1015
`U.S. Patent Publication No. 2005/0058807 (“Hochtritt”)
`
` 6
`
`

`

`Exhibit 1016
`Exhibit 1017
`Exhibit 1018
`Exhibit 1019
`Exhibit 1020
`Exhibit 1021
`Exhibit 1022
`Exhibit 1023
`Exhibit 1024
`Exhibit 1025
`Exhibit 1026
`Exhibit 1027
`Exhibit 1028
`Exhibit 1029
`Exhibit 1030
`Exhibit 1032
`Exhibit 1033
`Exhibit 1034
`Exhibit 1035
`Exhibit 1036
`Exhibit 1037
`
`
`U.S. Patent No. 5,736,224 (“Dodge”)
`BPAI Decision on Appeal
`U.S. Patent No. 7,611,765 (“Hochtritt ‘765”)
`U.S. Patent No. 7,939,159 (“Hochtritt ‘159”)
`2011 Hochtritt Litigation ECF No 44 Carlson Declaration
`U.S. Patent No. 6,602,575 (“Grosriez”)
`Response to Office Action 159 Patent
`English translation of Pigneul
`SCA v Tarzana Complaint
`Return of Service for SCA v Tarzana Complaint
`SCA v Cascades Complaint
`Return of Service for SCA v Cascades Complaint
`U.S. Patent No. 9,320,372 (“Formon”)
`Office Action 761 Patent
`Amendment and RCE 761 Patent
`Order on Summary Judgment 2011 Hochtritt Litigation
`Response to Office Action 761 Patent
`Office Action 372 Patent
`Office Action 372 Patent
`Response to Office Action 372 Patent
`Response to Office Action 372 Patent
`
`13.
`
`I considered each of the documents cited herein in light of general
`
`knowledge in the art. In formulating my opinions, I relied on my experience in the
`
`relevant art, and I also considered the viewpoint of a person of ordinary skill in the
`
`art.
`
` 7
`
`

`

`III.
`
` LEVEL OF ORDINARY SKILL IN THE ART
`
`14. The Petition and Mr. Mrvica posit that a person having ordinary skill
`
`in the art (“PHOSITA”) of the ‘372 patent would have “some post high school
`
`education in engineering or industrial manufacturing, and at least two to three
`
`years of experience in the design and/or manufacture of folded napkin products, or
`
`alternatively, no formal education but at least five years of experience in the design
`
`and/or manufacture of folded napkin products.” Pet. at 29; Ex. 1002, Mrvica Decl.
`
`at ¶ 35.1 For purposes of my Declaration, I will accept their proposed level of
`
`ordinary skill. Notwithstanding, it is my opinion that such a PHOSITA would not
`
`view the ‘372 patent as anticipated by or obvious over Hochtritt and/or Grosriez.
`
`
`
` LEGAL STANDARDS IV.
`
`15.
`
`I am not an attorney, and I am not providing any expert opinions on
`
`the law. However, I have taken the applicable standards of patent law and rules, as
`
`they have been explained to me, into account in my opinions given below. My
`
`understanding of these laws and rules are summarized as follows.
`
`16.
`
`I understand that the claims – and the terms used in the claims – of the
`
`patent at issue are supposed to receive their broadest reasonable construction in
`
`
`1 My citations to Mr. Mrvica’s declaration (Ex. 1002) refer to the paragraph
`numbers assigned by Petitioner because the document includes two different sets
`of page numbers at the bottom of each page.
`
` 8
`
`

`

`light of the specification of the patent in which it appears when they are being
`
`considered by the U.S. Patent and Trademark Office (“PTO”) in the context of
`
`subsequent review process before the PTO when the petition is granted. I also
`
`understand that patent claim terms are usually given their plain and ordinary
`
`meanings as understood by PHOSITAs as of the filing date of the patent.
`
`17.
`
`I understand that the Board’s Institution Decision ordered review of
`
`the following: claims 1-3, 6, and 10-18 as allegedly anticipated by Hochtritt;
`
`claims 1-3, 8, 9, 12, and 13 as allegedly anticipated by Grosriez; claims 1-3 and 6-
`
`20 as allegedly obvious over Hochtritt; and claims 1-20 as allegedly obvious over
`
`the combination of Hochtritt and Grosriez. Paper 9. I understand that the Board
`
`did not institute review of any claims as anticipated by or obvious over Pigneul.
`
`Id.
`
`18.
`
`I understand that a claim of a patent is invalid as “anticipated” only if
`
`all of the elements of the claim existed in a single prior art device or method, or if
`
`all of the elements of the claim were either expressly described or inherently
`
`disclosed in a single prior art publication or patent, exactly as they are arranged in
`
`the claim. I understand that a claim element is inherently disclosed in a single
`
`prior art publication or patent only if that prior art publication or patent must
`
`necessarily include the unstated claim element in order to enable the technology or
`
`invention that the prior art publication or patent discloses. I understand that the
`
` 9
`
`

`

`disclosure in the prior art reference should be considered from the standpoint of
`
`someone with ordinary skill in the field and requires that such a person, looking at
`
`that one reference, would be able to make and use at least one embodiment of the
`
`claimed invention without undue experimentation.
`
`19.
`
`I have noted and have taken into account that the standard for
`
`anticipation requires that each allegedly anticipatory reference itself disclose the
`
`claimed invention sufficiently to allow the invention to be made and used by one
`
`of ordinary skill in the art “without undue experimentation.” Moreover, I
`
`understand and have taken into account that for anticipation to be present the
`
`claimed invention must be “described” in the alleged item of prior art.
`
`20.
`
`I understand that even though a claimed invention may not have been
`
`identically disclosed or described in a single prior art reference before it was
`
`allegedly made by the named inventors, in order to be patentable, the invention
`
`must also not have been “obvious.” I further understand that a patented invention
`
`is invalid as obvious only if the differences between the claimed invention and the
`
`prior art are such that the claimed invention 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. Here, I understand that the earliest effective filing date of
`
`the ‘372 patent is October 29, 2010. So an obviousness analysis with respect to the
`
` 10
`
`

`

`‘372 patent must be performed based on what a person of ordinary skill in the art
`
`would have known just before that particular date.
`
`21.
`
`I understand that an obviousness analysis is a question of law and
`
`requires consideration of (at least) the following four factors: (1) the scope and
`
`content of the prior art, (2) the differences between the prior art and the claims at
`
`issue, (3) the knowledge of a person of ordinary skill in the art, and (4) the
`
`existence of any objective factors indicating obviousness or non-obviousness. I
`
`understand that in some cases, there may be objective factors indicating
`
`obviousness or non-obviousness, including without limitation, commercial success
`
`of products covered by the patent; a long-felt need for the invention; failed
`
`attempts by others to make the invention, copying of the invention by others in the
`
`field; unexpected results achieved by the invention, and praise for the invention by
`
`others in the field. I also understand that this evidence must be specifically
`
`connected to the invention rather than being associated with marketing or some
`
`other reason.
`
`22.
`
`I understand that an obviousness analysis should not employ hindsight
`
`but must be considered from the perspective of a person of ordinary skill in the art
`
`as of the effective filing date of the patent. I also understand that a claimed
`
`invention composed of several elements is not obvious merely because each of the
`
`elements may have been independently known in the prior art. There needs to be a
`
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`
`

`

`searching comparison of the claimed invention, including all of its limitations, with
`
`the teachings of the prior art. A patent is not proved obvious merely by
`
`demonstrating that each of its elements was known independently in the prior art.
`
`23.
`
`It is impermissible to use the claimed invention, or disclosure of the
`
`subject patent, as a template to piece together the teachings of the prior art so that
`
`the claimed invention is rendered obvious. It is impermissible to use hindsight
`
`reconstruction to pick and choose among separate prior art references to arrive at
`
`the claimed invention. It is improper to use hindsight to reconstruct the claims,
`
`such as where the prior art gives no indication of which parameters were critical or
`
`no direction as to which of many possible choices are likely to be successful.
`
`24. There must be a reason that would have prompted a person of
`
`ordinary skill in the relevant field to combine the elements in the way taught by the
`
`claimed new invention. A part of this inquiry is the determination regarding the
`
`references and how the references would be viewed by a PHOSITA in the relevant
`
`time period. If the combination of elements arranged in the same manner as the
`
`patent claims cannot be explained and motivated, it is likely that the combination
`
`was derived by impermissibly using the patent specification itself as a roadmap.
`
`25. Choosing bits and pieces of the prior art that favor the particular
`
`combination of elements that the invalidity challenger proposes, and failing to
`
`consider each reference as a whole, indicates that the invalidity challenger is
`
` 12
`
`

`

`impermissibly using hindsight to make that combination. Such hindsight
`
`reasoning, using the invention as a roadmap to find its prior art components,
`
`discounts the value of combining various existing features or principles in a new
`
`way to achieve a new result.
`
`26.
`
`I have been advised that certain factors can be used to determine
`
`whether it would have been obvious to one skilled in the art to combine disclosures
`
`from multiple prior art references. For example, I understand that a claimed
`
`invention may be obvious if it merely involves (a) combining prior art elements
`
`according to known methods to yield predictable results; (b) the simple substitution
`
`of one known element for another to obtain predictable results; (c) the use of a
`
`known technique to improve similar devices or methods in the same way; (d)
`
`applying a known technique to a known device or method that is ready for
`
`improvement to yield predictable results; or (e) choosing from a finite number of
`
`identified, predictable solutions, with a reasonable expectation of success. I also
`
`understand that a teaching, suggestion, or motivation to modify or combine the
`
`prior art to arrive at the claimed invention may be found in the prior art itself. I
`
`understand, however, that the obviousness analysis need not seek out precise
`
`teachings in the prior art, but may take into account ordinary innovation and
`
`experimentation that does no more than yield predictable results, and which are
`
`inferences and steps that a person of ordinary skill in the art would employ.
`
` 13
`
`

`

`27.
`
`I understand that a prior art reference is to be considered as a whole,
`
`including portions that would teach away from the claimed invention. A
`
`combination is more likely to be nonobvious when the prior art “teaches away”
`
`from the proposed combination. I understand that a prior art reference may be said
`
`to teach away when (1) a person of ordinary skill in the art would be discouraged
`
`by the teachings of one prior art reference from combining a feature or teaching
`
`from another prior art reference; (2) a person of ordinary skill in the art is led in a
`
`direction divergent from the claimed invention that is alleged to be obvious; or (3)
`
`the proposed combination would render the result inoperable. A reference may be
`
`said to teach away when a person of ordinary skill, upon reading a prior art
`
`reference, would be discouraged from attempting the proposed combination, or
`
`would be led in a direction divergent from the path that was taken in the patent
`
`alleged to be obvious.
`
`28.
`
`I have been advised that patent claims can be both independent and
`
`dependent. A claim that stands on its own is called an independent claim. A
`
`dependent claim is one that refers to another claim, incorporates its limitations, and
`
`adds additional limitations. If the prior art does not render obvious an independent
`
`claim, it cannot render obvious any dependent claim that further limits that
`
`independent claim.
`
` 14
`
`

`

`29.
`
`I understand that Petitioner has the burden of proving that claims 1-20
`
`of the ‘372 patent are anticipated or obvious by a preponderance of the evidence. I
`
`understand that a preponderance of the evidence is evidence sufficient to show that
`
`a proposed fact is more likely to be true than false.
`
`V.
`
` SUMMARY OF CONCLUSIONS
`
`30. After reviewing the Petition and its supporting materials, it is my
`
`opinion that none of the claims of the ‘372 patent are anticipated by Hochtritt or
`
`Grosriez. It is further my opinion that a PHOSITA would not have found obvious
`
`any of the claims of the ‘372 in view of Hochtritt and/or Grosriez.
`
`31.
`
`It is specifically my opinion that Hochtritt fails to disclose a stack of
`
`absorbent sheets, where each sheet includes at least two folds, the first fold being
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`offset from a parallel line bisecting the sheet, and the second fold being an
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`interfolding fold that intersects the offset first fold. Thus, it is my opinion that
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`Hochtritt fails to anticipate the claims of the ‘372 patent.
`
`32. With continued reference to Hochtritt alone, it is my opinion that the
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`claims of the ‘372 patent would not be obvious to a PHOSITA in view of
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`Hochtritt. It is my opinion that Hochtritt fails to teach several key elements of the
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`claims. It is further my opinion that it would not have been obvious to a PHOSITA
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`to modify Hochtritt to include these limitations. Hochtritt provides a complete
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`solution that overcomes the cited “disadvantages” of single-fold napkins, namely
`
`by providing a stack of absorbent sheets with each sheet including at least two
`
`equal folds that each bisect the sheet. It is my opinion that it would be unnecessary
`
`for a PHOSITA to improve upon the stack of absorbent sheets invented by
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`Hochtritt.
`
`33. Turning to Grosriez, it is my opinion that Grosriez fails to disclose a
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`stack of absorbent sheets, where each sheet includes at least two folds, the first fold
`
`being offset from a parallel line bisecting the sheet, and the second fold being an
`
`interfolding fold that is substantially perpendicular to the offset first fold, with each
`
`sheet interfolded with adjacent sheets in the stack. Providing Grosriez’s
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`interfolded embodiment with an offset fold would heighten the stacking problems
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`and associated drawbacks that Grosriez specifically teaches are sought to be
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`avoided and are overcome. In particular, Grosriez never shows or explains how its
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`napkins of its alternative folding form might be stacked (with interfolding or not).
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`Thus, it is my opinion that Grosriez fails to anticipate the claims of the ‘372 patent.
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`34. With reference to the combination of Hochtritt and Grosriez, because
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`both of these references supposedly accomplish the same goal independently,
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`namely, a stack of folded, absorbent sheet products (e.g., napkins), and each
`
`reference independently operates to accomplish that same goal, a PHOSITA would
`
`have had no reason to combine the features of each reference into a single device.
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`Put another way, it would be wholly unnecessary for a PHOSITA to look to
`
`Grosriez to improve upon Hochtritt.
`
`35. Moreover, a PHOSITA would not have found it obvious to modify
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`Hochtritt’s stack of interfolded sheets having equal, bisecting folds with Grosriez’s
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`napkins allegedly having one offset fold and one bisecting fold. Given the
`
`teachings of Grosriez, a PHOSITA would have understood that Grosriez’s
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`alternative folding form would have heightened the stacking problems and
`
`associated drawbacks that Grosriez specifically teaches are sought to be avoided.
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`A PHOSITA would have thus been discouraged from making such a modification
`
`to Hochtritt’s sheets and causing the stacking problems specifically sought to be
`
`avoided.
`
`36. The proposed combination of Hochtritt and Grosriez would lead to an
`
`undesirable configuration and would materially alter the principle of operation of
`
`Grosriez’s napkins, making the proposed combination undesirable over Hochtritt
`
`and Grosriez. The only way for a PHOSITA to provide a stack of absorbent sheets
`
`having the specific structural limitations recited in the ‘372 patent would be to
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`completely ignore the warnings and drawbacks expressly described by Grosriez,
`
`which a PHOSITA would not have done.
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`37. The bases for these opinions are set forth in more detail below and in
`
`Patent Owner’s Response to the Petition. I have reviewed and I agree with the
`
`Patent Owner’s Response to the Petition.
`
`
`
` SUMMARY OF THE ‘372 PATENT VI.
`
`A. Background of the Relevant Technology
`38. Folded paper products such as napkins and towels are often provided
`
`in dispensers in commercial food service establishments and public restrooms. To
`
`reduce waste and to save cost on the paper products, it is desirable to have the
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`stack of paper products and the cover of the dispenser designed so as to encourage
`
`users to take a single towel or napkin, as opposed to multiples. Before the time of
`
`the ‘372 patent, napkins were often single-folded. This was known as half-folded
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`(if the fold bisected the napkin) or off-folded (if there was an offset causing the
`
`napkin on one side of the fold to be longer than the other). To achieve a given
`
`level of absorption, the packaged size of the single-folded napkins were larger, and
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`their areal weight higher, so they tended to have less softness and less drape.
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`Napkins that are folded twice about perpendicular axes have advantages of more
`
`compact size and lighter areal weight for equivalent absorption. Ex. 1028 at 1:6-
`
`62.
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`B. Disclosure of the ‘372 Patent
`39.
`
`I have reviewed the ‘372 patent, which is entitled “Stack of
`
`Interfolded Absorbent Sheet Products,” and I have considered the disclosure of the
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`‘372 patent in light of the general knowledge in the art as of the claimed priority
`
`date of October 29, 2010.
`
`40. The ‘372 patent is directed to a stack of interfolded absorbent sheet
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`products. Ex. 1028 at Abstract. More particularly, each sheet includes at least two
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`folds, the first fold being “del