UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`ARTESIAN HOME PRODUCTS, INC. and ADR, INC.
`Petitioners
`
`v.
`
`GUTTERGLOVE, INC.,
`Patent Owner.
`
`U.S. Patent 9,021,747
`Filing Date: September 3, 2010
`Issue Date: May 5, 2015
`Title: CORRUGATED MESH GUTTER LEAF PRECLUSION SYSTEM
`
`________________________________________________________
`
`Inter Partes Review No.: IPR2018-00015
`________________________________________________________
`
`DECLARATION OF MATTHEW ISAAC STEIN
`
`
`
`
`
`
`
`IPR2018-00015
`Petitioners Ex. 1002 p. 1
`
`

`

`DECLARATION OF MATTHEW ISAAC STEIN
`
`
`
`Introduction
`
`[0001]
`
`I, Matthew Isaac Stein, a citizen of the United States of America, have
`
`been retained by Downey Brand LLP, counsel for Petitioners ARTESIAN HOME
`
`PRODUCTS, INC. and ADR, INC. to provide expert testimony in the inter partes
`
`review of United States Patent No. 9,021,747 to Lenney et al. (hereinafter “’747
`
`Patent”).
`
`Qualifications
`
`[0002]
`
`I graduated from Massachusetts Institute of Technology (MIT), in 1978
`
`with a Bachelor of Science degree in Mechanical Engineering.
`
`[0003]
`
`Since 1994, I have been employed by Stein Design of Truckee, CA,
`
`where I am the owner, founder, and principal engineer. Over the prior 30+ years, I
`
`have designed scores of different products, several of which went on to become the
`
`top selling product in the world within their respective fields. I am a named
`
`inventor on twelve U.S. patents, and have provided testimony as an expert witness
`
`in 26 cases, all but four of which were patent and/or trade secret related. In my
`
`prior experience, I have been retained as an expert on behalf of both plaintiffs and
`
`defendants.
`
`[0004] During my employment as principal engineer for Stein Design, I have
`
`conducted product design and development, along with engineering analysis.
`
`Among others, products designed include drinking fountains, safety showers and
`
`eyewash, various water filters and filtration peripherals, medical filters, complex
`
`plastic housings, photovoltaic (PV) solar roofing panels, specialized foam
`
`machines, paint application equipment, sonar equipment, and an innovative dollar
`
`
`
`2
`
`IPR2018-00015
`Petitioners Ex. 1002 p. 2
`
`

`

`bill stacking machine for handling multiple sizes of international currencies. I am
`
`also a licensed general contractor, specializing in residential “green building,”
`
`having built “green” homes in Hawaii during the period of 2002-2005. My work
`
`on these homes included specifying, and overseeing the installation of roofing and
`
`rain gutter systems on a number of homes. In the period of 2005-2007, I consulted
`
`for Applied Solar/Open Energy Corp. designing “Building
`
`Integrated
`
`Photovoltaic” (BIPV) solar roofing tiles for Applied Solar/Open Energy Corp,
`
`including sheet metal flashing systems to integrate roofing systems with the solar
`
`roofing panels. In the period of 2009-2010, I consulted for Active Roof
`
`Technologies, Inc., where I worked on the design of a double-walled roofing
`
`system that incorporated active solar space heating into sheet metal roofs. I also
`
`have extensive sheet metal experience starting with sheet metal design for Intellect
`
`in Hawaii in 1981-1982, then for Haws Company from 1986-1994, and since then
`
`as Stein Design working on projects for clients Acorn Engineering, Sierra Design
`
`Group and IGT. At Haws Company, a leading manufacturer of safety showers,
`
`emergency eyewashes, drinking fountains and industrial tempered water systems,
`
`in addition to a considerable body of sheet metal design work, I also worked on
`
`designs incorporating metal sieving, straining, and filtering as it pertained to safety
`
`showers, eyewashes, drinking fountains, and industrial tempered water systems. I
`
`have also designed medical filters (IV, chemotherapy dispensing, etc) for
`
`Healthtek, as well as water filters for Water safety Corporation and Safari Outdoor
`
`products.
`
`[0005]
`
`I am the author of the following publications:
`
`[0006] Geomagnetic Storms, EMP and Nuclear Armageddon. Nexus magazine,
`
`February/March 2012, Mapleton, Queensland, Australia.
`
`
`
`3
`
`IPR2018-00015
`Petitioners Ex. 1002 p. 3
`
`

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`[0007] When Disaster Strikes: A Comprehensive Guide for Emergency Planning
`
`and Crisis Survival. Published by Chelsea Green Publishing Company, White
`
`River Junction, VT, November 2011.
`
`[0008]
`
`Emergency Survival Kits. Mother Earth News magazine, Issue No. 243,
`
`December 2010/January 2011, Ogden Publications, Topeka, KS.
`
`[0009] Blending Solar Panels with Roof Profiles: Simulation Guides the Design
`
`of Innovative Solar Panel Frames, Reducing Molding Time, Material and Cost.
`
`ANSYS Advantage Magazine, Volume II, Issue 3, 2008, Canonsburg, PA.
`
`[0010] When Technology Fails: A Manual for Self-Reliance, Sustainability and
`
`Surviving the Long Emergency. Second edition, published by Chelsea Green
`
`Publishing Company, White River Junction, VT, 2008.
`
`[0011] No-Hassel Kitchen Appliance: Finite Element Analysis Helps Redesign a
`
`Countertop Water Filter. ANSYS Advantage Magazine, Volume I, Issue 2, 2007,
`
`Canonsburg, PA.
`
`[0012] Design Space in a Small Design Shop: Affordable Simulation Package is
`
`a Necessary Tool in Analyzing Complex Plastic Parts. ANSYS Solutions
`
`Magazine, Volume 3, Number 3, summer 2001, Canonsburg, PA.
`
`[0013] When Technology Fails: A Manual for Self-Reliance & Planetary
`
`Survival. First edition, published by Clear Light Books, Santa Fe, NM, 2000.
`
`[0014]
`
`Emergency Eyewashes & Showers: Tempered Water Systems Warming
`
`Up to a Good Idea. Occupational Health & Safety, Canada, 1993 Buyer’s Guide.
`
`
`
`4
`
`IPR2018-00015
`Petitioners Ex. 1002 p. 4
`
`

`

`[0015]
`
`Safety Showers Are in From the Cold: Several Options Are Available to
`
`Maintain Tempered Water in Shower and Eyewash Stations, Year Round. Safety &
`
`Health magazine, June, 1989.
`
`[0016] Based on the above qualifications I am considered an expert in the fields
`
`of sheet metal, filtration, and sieving.
`
`[0017]
`
`I have been retained by Petitioners’ counsel to determine whether the
`
`claims of the ’747 Patent are valid, and am being paid $300.00 per hour to review
`
`the patent at issue and prepare this declaration. I have no connection with
`
`Gutterglove, Inc. and do not have a stake, financial or otherwise, in whether the
`
`claims of the ’747 Patent are affirmed or cancelled.
`
`[0018]
`
`I have read and am familiar with the ’747 Patent, its prosecution history
`
`and the prior arts as detailed the petition.
`
`
`
`
`
`
`
`5
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`IPR2018-00015
`Petitioners Ex. 1002 p. 5
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`

`

`Summary of Opinions
`
`[0019] Ground 1: Claims 1–6 and 16–20 would have been obvious based on
`
`United States Patent No. 7,310,912 to Lenney et al. (“Lenney ’912”) in view of
`
`United States Patent No. 6,032,806 to Leone et al. (“Leone”), and United States
`
`Patent No. 546,042 to Van Horn ( “Van Horn”).
`
`[0020] Ground 2: Claim 18 would have been obvious based on Lenney ‘912 in
`
`view of Leone and United States Patent No. 5, 257,482 to Sichel (“Sichel”).
`
`[0021] Ground 3: Claims 1–3 and 16–18 would have been obvious based on Van
`
`Horn in view of Leone, and United States Patent Application Publication No.
`
`2007/0234647 to Higginbotham et al. (“Higginbotham”).
`
`[0022] Ground 4: Claim 18 would have been obvious based on Van Horn in
`
`view of Leone and Sichel.
`
`[0023] Ground 5: Claims 4–6 and 19–20 would have been obvious based on Van
`
`Horn in view of Leone, Higginbotham, and United States Patent No. 4,959,932 to
`
`Pfeifer (“Pfeifer”).
`
`
`
`
`
`
`
`6
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`IPR2018-00015
`Petitioners Ex. 1002 p. 6
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`

`

`Documents and Things Reviewed
`
`[0025]
`
`I have reviewed the following materials to prepare this report:
`
`a. United States Patent No. 9,021,747 to Lenney et al.
`
`b. File History of the ‘747 Patent
`
`c. United States Patent No. 4,959,932 to Pfeifer
`
`d. United States Patent No. 6,032,806 to Leone et al.
`
`e. United States Patent No. 546,042 to Van Horn
`
`f. United States Patent No. 7,310,912 to Lenney et al.
`
`g. United States Patent Application Publication No. 2007/0234647 to
`
`Higginbotham et al.
`
`h. United States Patent No. 5,257,482 to Sichel.
`
`i. United States Patent No. 2,689,017 to Schmid.
`
`j. Higginbotham ’352
`
`k. United States Patent No. 8,479,454 to Lenney et al. (hereinafter “’454
`
`Patent”)
`
`l. United States Patent No. 8,297,000 to Demartini
`
`m. United States Patent No. 7,975,435 to Lenney et al.
`
`n. United States Patent No. 7,913,458 to Higginbotham
`
`o. United States Patent No. 2,674,961 to Lake
`
`p. United States Patent No. 5,417,793 to Bakula
`
`q. Claim Construction Order in Gutterglove, Inc. v. American Die et al.;
`
`Case No. 2:16-cv-02408-WHO, E.D. Cal.
`
`r. All other exhibits submitted with the Petition
`
`
`
`
`
`
`
`7
`
`IPR2018-00015
`Petitioners Ex. 1002 p. 7
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`

`

`My Understanding of the Legal Principles
`
`[0026]
`
`I am not an attorney and do not expect to offer any opinions at trial
`
`regarding the law. I have, however, been informed of certain legal principles that I
`
`relied upon and used as a framework in reaching the opinions set forth in this
`
`report. These are summarized below.
`
`Anticipation under 35 U.S.C. § 102
`
`[0027]
`
`I understand that invalidity by anticipation requires that the four corners
`
`of a single, prior art document describe every element of the claimed invention.
`
`Further, I understand that, for an alleged prior art reference to anticipate a patent
`
`claim, the reference must disclose within its four corners all of the limitations of
`
`the claim arranged or combined in the same way as recited in the claim.
`
`[0028]
`
`I also understand that, for an alleged prior art reference to anticipate a
`
`patent claim, the reference must enable a person of ordinary skill in the art to make
`
`and use the claimed invention.
`
`[0029]
`
`I understand that a claim limitation may be present in an alleged prior art
`
`reference either expressly or inherently, but inherency may be established only if
`
`such limitation is necessarily present in the reference. I understand inherency
`
`cannot be established by probabilities or possibilities, and the mere fact that a
`
`certain thing may result from a given set of circumstances is not sufficient to
`
`establish inherency.
`
`Obviousness under 35 U.S.C. § 103(a)
`
`[0030]
`
`I am informed that a patent claim is invalid as obvious if, at the time the
`
`claimed invention was made, the differences between the prior art and the claimed
`
`invention as a whole would have been obvious to a person of ordinary skill in the
`
`
`
`8
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`IPR2018-00015
`Petitioners Ex. 1002 p. 8
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`

`

`art. I am informed that the following factors are considered in determining
`
`whether a claimed invention is invalid as obvious over the prior art: (1) the scope
`
`and content of the prior art (i.e., the devices, technology, knowledge and practices
`
`that preexisted the invention), (2) the level of ordinary skill in the art, (3) the
`
`differences between the claimed invention and the prior art, and (4) any real-world
`
`facts, sometimes referred to as “secondary considerations” or “objective indicia,”
`
`that indicate the invention was obvious or not obvious, for example:
`
` commercial success of the invention, causally related to
`the invention itself rather than to companion factors, such
`as advertising or attractive packaging;
`
` copying of the invention by competitors as distinguished
`from their independent development;
`
` the invention’s satisfaction of a long-felt but hitherto
`unsatisfied need, despite the availability of the elements
`of the invention;
`
` acquiescence by the industry to the patent’s validity by
`honoring the patent through taking licenses;
`
` failed attempts by those skilled in the art to make the
`invention or achieve the objectives of the invention;
`
` praise for the invention, such as recognition of the
`invention as an advancement over the prior art by
`technically competent peers; and
`
` any other real-world facts that indicate the invention was
`obvious or not obvious.
`
`[0031] At this point in the inter partes review, I understand that counsel has not
`
`received any exhibits of secondary considerations from the Patent Owner. I
`
`reserve the right to supplement my opinion if the Patent Owner provides exhibits
`
`of secondary considerations.
`
`Obviousness of a combination of prior art elements.
`
`
`
`9
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`IPR2018-00015
`Petitioners Ex. 1002 p. 9
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`

`

`[0032]
`
`I am informed that, in determining whether a combination of prior art
`
`elements renders a patent claim obvious, the proper inquiry is whether the
`
`combination would have been obvious to a person of ordinary skill in the art who
`
`was familiar with the prior art in the field and analogous prior art from other fields.
`
`I am informed that a claim composed of several elements is not proved obvious
`
`merely by demonstrating that each element existed somewhere in the prior art. I
`
`understand that there must be a reason why one of ordinary skill would have
`
`combined elements from different prior art references, or something else that
`
`would have prompted such a person to consider combining prior art elements. I
`
`understand that any need, design consideration or problem known in the field at the
`
`time of the alleged invention could provide a reason or motive to combine prior art
`
`elements in the claimed manner. I understand that the reason to combine an
`
`element from the prior art may derive from the fact that it is well known or
`
`commonly used in the art. I also understand that the reason to combine references
`
`may come from the background knowledge possessed by a person having ordinary
`
`skill in the art. I understand that a person of ordinary skill is also a person of
`
`ordinary creativity, and that the common sense of one skilled in the art may also
`
`provide a reason or motive to combine prior art elements to arrive at the claimed
`
`matter.
`
`[0033]
`
`I am informed that combining known elements according to known
`
`methods is likely to be obvious when it does nothing more than yield predictable
`
`results. That is, when a claimed invention is simply an arrangement of prior-art
`
`elements in which each element performs the function it was known to perform
`
`and provides the benefits that it provided in prior art devices, the claimed
`
`combination is obvious. I am also informed that choosing from a finite number of
`
`identified, predictable solutions, with a reasonable expectation of success, is also
`
`likely to be obvious.
`
`
`
`10
`
`IPR2018-00015
`Petitioners Ex. 1002 p. 10
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`

`

`PERSON OF ORDINARY SKILL IN THE ART
`
`[0034]
`
`In my opinion, a person of ordinary skill in the art (“POSITA”) of the
`
`technology of the ’747 Patent and the applied references would have working
`
`knowledge of screen systems for filtering debris from a water-based flow. A
`
`POSITA would have a four-year degree in Mechanical Engineering, a related
`
`technical field, or equivalent work experience.
`
`[0035] Based on my education and my experience, I have at least the level of
`
`ordinary skill in the art.
`
`
`
`
`
`
`
`11
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`IPR2018-00015
`Petitioners Ex. 1002 p. 11
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`

`

`The ’747 patent
`
`[0036]
`
`The ’747 Patent is directed to a gutter screen that rests above a rain gutter
`
`and has a purpose of keeping leaves out of the gutter. Three characteristics sought
`
`in the ’747 Patent are strength, flow capacity, and debris preclusion; these are
`
`addressed using a corrugated fine mesh screen with the corrugations oriented in a
`
`downhill direction. Later in this Declaration, I refer to several elements of the ’747
`
`Patent claims according to labels 1-a, 1-b, etc. shown in the following table:
`
`[0037]
`
`Element
`Label
`1-a
`
`1-b
`1-c
`
`1-d
`1-e
`
`1-f
`
`1-g
`
`1-h
`
`
`2.
`
`
`3.
`
`
`4.
`
`
`
`Claim 1
`
`A leaf preclusion system for a roof gutter having a gutter lip for
`keeping leaves and other debris out of the roof gutter while allowing
`water to pass thereinto, comprising:
`a sheet of fine mesh material;
`said sheet of fine mesh material having an upper edge adapted to be
`located above a lower edge and
`with said sheet of fine mesh material overlying the roof gutter;
`said sheet of fine mesh material being corrugated with ridges extending
`at least part of the way from said upper edge to said lower edge and
`wherein said lower edge being adjacent the gutter lip when the system
`is in use,
`wherein the water is allowed to pass through said sheet of fine mesh
`material into the roof gutter,
`wherein at least one of said ridges extends from at least one of said
`upper edge and said lower edge.
`
`2. The system of claim 1 wherein said ridges of said sheet of fine mesh
`material extend substantially perpendicular to said upper edge of said
`sheet of fine mesh material.
`
`3. The system of claim 2 wherein said upper edge and said lower edge
`of said sheet of fine mesh material are oriented substantially parallel
`with each other.
`
`4. The system of claim 1 wherein a lower support is provided adjacent
`
`12
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`IPR2018-00015
`Petitioners Ex. 1002 p. 12
`
`

`

`said lower edge of said sheet of fine mesh material, said lower support
`including a recess for receiving said lower edge of said sheet of fine
`mesh material therein, said lower support adapted to be coupled to a lip
`at a forward edge of the gutter.
`
`5. The system of claim 4 wherein said lower support includes a stop,
`said stop oriented non-parallel with valleys in said sheet of fine mesh
`material located between said ridges.
`
`6. The system of claim 5 wherein said lower support includes an upper
`plate, said upper plate coupled to said stop and oriented non-parallel
`with said stop, said upper plate configured to be located above and
`abutting the lip of the gutter to provide at least a portion of said
`coupling of said lower support to the lip of the gutter,
`said upper plate defining a portion of said recess, said recess also
`defined by a lower plate spaced below said upper plate by a distance
`substantially matching a thickness of said fine mesh material between
`said ridges and said valleys.
`
`16. A method for keeping leaves and other debris out of a roof gutter
`while allowing water to pass thereinto, including the steps of:
`providing a sheet of fine mesh material,
`the sheet of fine mesh material having an upper edge adapted to be
`located above a lower edge,
`the sheet of fine mesh material being corrugated with ridges extending
`at least part of the way from the upper edge to the lower edge; and
`locating the sheet of fine mesh material over a gutter with ridges
`running toward a lip of the gutter,
`wherein the water is allowed to pass through said sheet of fine mesh
`material into the roof gutter and
`wherein at least one of said ridges extends from at least one of said
`upper edge and said lower edge.
`
`17. The method of claim 16 including the further step of angling the
`sheet of fine mesh material to slope downward as the ridges run toward
`the lip of the gutter.
`
`18. The method of claim 17 including the further step of positioning the
`upper edge of the sheet of fine mesh material beneath shingles and over
`structural material forming the roof.
`
`13
`
`
`5.
`
`
`6-a
`
`6-b
`
`
`16-a
`
`16-b
`16-c
`
`16-d
`
`16-e
`
`16-f
`
`16-g
`
`
`17.
`
`
`18.
`
`
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`IPR2018-00015
`Petitioners Ex. 1002 p. 13
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`

`

`
`19.
`
`
`20.
`
`
`
`
`
`
`19. The method of claim 16 including the further step of providing an
`upper support adapted to be coupled to the sheet of fine mesh material,
`the upper support including a tab extending away from the sheet of fine
`mesh material and substantially coplanar with the sheet of fine mesh
`material; and positioning the tab of the upper support beneath shingles
`on the roof and above structural material forming the roof.
`
`20. The method of claim 16 including the further steps of: providing a
`lower support, the lower support including a recess locating the lower
`edge of the sheet of fine mesh material within the recess; and
`positioning the lower support upon a lip at a front edge of the gutter.
`
`
`FIG. 1 of the ’747 shows a gutter guard made of a corrugated mesh 20
`[0038]
`and a lower strip 40 mounted on a roof.
`
`’747 Patent FIG. 1.
`
`
`
`[0039] During installation, the corrugated mesh 20 is placed under shingles S
`
`and the lower strip 40 rests on the gutter lip L. The mesh 20 has an upper edge 26,
`
`a lower edge 28, and crests 22 and valleys 24. The “corrugations extend
`
`perpendicular to a long axis of the gutter and parallel with a direction that water is
`
`migrating off of the roof[.]” ’747 Patent col. 2:16–18.
`
`
`
`14
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`IPR2018-00015
`Petitioners Ex. 1002 p. 14
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`

`

`[0040]
`
`FIG. 14 of the ’747 Patent shows an embodiment which includes a tab
`
`40. In use, the tab 40 lies below the shingles S.
`
`
`
`
`
`
`
`15
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`IPR2018-00015
`Petitioners Ex. 1002 p. 15
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`

`

`Overview of the Prior Art
`
`A.
`
`Lenney ’912
`
`[0042]
`
`In my opinion, a POSITA designing a rain gutter cover would have
`
`considered this reference highly relevant.
`
`[0043]
`
`Lenney ’912 discloses a leaf preclusion system, including a screen of fine
`
`mesh material, an upper support with a tab to fit under shingles and a recess to hold
`
`the screen, and a lower support with a recess to hold the screen. Lenney ‘912 col.
`
`3:41–52, col. 4:6–16, col. 4:53–55, and col. 6:13–15. Lenney ’912 also discloses a
`
`floor with ribs that extend upward to come in contact with the screen. Id. col.
`
`5:58–60.
`
`Lenney ’912 FIG. 2.
`
`
`
`
`
`16
`
`
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`IPR2018-00015
`Petitioners Ex. 1002 p. 16
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`

`

`B.
`
`Leone
`
`[0044]
`
`Leone is concerned with filtering a mixture of clay and water. FIG. 1 of
`
`Leone shows a corrugated screen including ridges and channels that are parallel to
`
`the direction of the water flow.
`
`
`
`[0045]
`
`Leone FIG. 1A (annotated arrow indicates a ridge). Leone faced a
`
`problem of increasing rate of flow through a screen. Leone describes using a
`
`screen having “a triangular configuration” forming “ridges” to increase surface
`
`area and thus increase the flowrate through the screen. In my opinion, Leone
`
`solved a problem faced by the inventors of the ’747 Patent and a POSITA would
`
`have been motivated to look to Leone. In other words, Leone is reasonably
`
`pertinent to a problem faced by the inventors of the ’747 Patent.
`
`
`
`
`
`
`
`
`
`17
`
`IPR2018-00015
`Petitioners Ex. 1002 p. 17
`
`

`

`C.
`
`Van Horn
`
`[0046] Van Horn describes an eaves trough or gutter shield. Van Horn created a
`
`gutter cover out of a metallic plate having a plane portion a inserted under roof
`
`shingles and a convexed outer portion b. Van Horn corrugates part of the tangent
`
`base a of the shield to form watercourses and refers to these with the reference
`
`“b2”.
`
`
`
`Van Horn FIG. 2.
`
`[0047] Van Horn illustrates that corrugated gutter covers with the peaks and
`
`valleys of the corrugations being in parallel with the downhill flow of rain water
`
`off of a roof was known about 100 years before 2009. The direction of the
`
`corrugations in Van Horn’s gutter cover avoid interfering with the free flow of
`
`water off the roof.
`
`
`
`
`
`
`
`18
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`IPR2018-00015
`Petitioners Ex. 1002 p. 18
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`

`

`D.
`
`Pfeifer
`
`[0048]
`
`FIG. 3 of Pfeifer discloses a rain gutter screen.
`
`
`
`Pfeifer FIG. 3 (annotated).
`
`[0049]
`
`The rain gutter screen of Pfeifer has a simple means for installation on
`
`roofs having conventional rain gutters. The front and back edges of the gutter
`
`screen using a flexible, bondable material for attachment to the roof support
`
`portion and the eave gutter end edge.
`
`[0050]
`
`Pfeifer discloses an upper edge of a screening 6 attached to a roof
`
`attachment tab 4. A corresponding lower edge of the screening 6 is attached to
`
`longitudinal support member 9 and longitudinal gutter attachment section 10.
`
`
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`19
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`IPR2018-00015
`Petitioners Ex. 1002 p. 19
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`

`

`
`
`Pfeifer FIG. 2.
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`[0051] As shown in the figure above, the attachment section 10 is substantially
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`in the shape of a letter “T.” Pfeiffer taught a POSITA that rain gutter screening
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`could be frictionally attached to a gutter lip with a longitudinal gutter attachment
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`section that was substantially in the form of a letter “T.”
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`
`
`
`
`
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`20
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`IPR2018-00015
`Petitioners Ex. 1002 p. 20
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`

`

`E.
`
`Higginbotham
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`[0053] Higginbotham is directed to a rain gutter shield used in the field of
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`preventing debris from entering into the open top end of a gutter. The gutter shield
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`includes wells; the wells are perforated U-shaped depressions in an underlying
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`support; the perforated wells assist in moving water downward into the gutter. The
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`U-shaped depressions increase water pressure in the perforated wells and assist in
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`moving water downward into the gutter.
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`[0054]
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`The gutter shield of Higginbotham discloses a stainless steel wire cloth.
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`The gutter shield discloses downward extending portions which have the form of
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`folds or valleys. Examples of folded portions are shown in FIGS. 16 and 17.
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`Higginbotham FIG. 16 (annotated).
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`
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`21
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`IPR2018-00015
`Petitioners Ex. 1002 p. 21
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`

`

`
`
`
`
`[0055] Higginbotham FIG. 17. Higginbotham taught a POSITA that one or
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`more valleys could be impressed into a screen of stainless steel wire cloth, that
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`rainwater would enter the valleys, and that water pressure helped water move
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`downward through the screen.
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`[0056]
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`“The mesh screen may define a mesh between 80 and 280[.]”
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`Higginbotham ¶ 0027. A mesh of 80 wires per inch gives approximately 6,400
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`holes per square inch. Higginbotham notes the stiffness of the wire cloth.
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`Higginbotham ¶ 0080 (“will not be dislodged by wind due to the natural stiffness
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`present in wire cloths”).
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`
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`
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`
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`22
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`IPR2018-00015
`Petitioners Ex. 1002 p. 22
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`

`

`F.
`
`Sichel
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`
`
`[0057]
`
`Sichel describes a gutter screen of “flexible, open-mesh construction,
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`having spaced, flow-directing ribs extending in directions parallel with the slope of
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`the roof[.]” Sichel Abstract.
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`
`
`Sichel FIG. 1.
`
`[0058]
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`The apertures in the screen have dimensions in the “general range of 4 to
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`10 millimeters and widths of 1 to 3 millimeters.” Sichel col. 2:7–8. The screen
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`“upper portion 20b extends upwardly beneath the lower course of shingles,
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`following the same slope as that of roof 10” Sichel col. 2:51–52.
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`
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`23
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`IPR2018-00015
`Petitioners Ex. 1002 p. 23
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`

`

`
`
`Sichel FIG. 2 (annotated).
`
`[0059] “[F]low-directing ribs and flow-interrupting bars promotes the flow of rain
`
`water into a gutter despite the relatively small dimensions of the apertures.” Sichel
`
`col. 1:45–46 (emphasis added). The apertures have are in a “general range of 4 to
`
`30 square millimeters[.]” Sichel col. 3:28–29.
`
`Sichel FIG. 3 (annotated).
`
`
`
`24
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`
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`IPR2018-00015
`Petitioners Ex. 1002 p. 24
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`

`

`[0060] “It is believed that because of the height differential between ribs 24 and
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`bars 25, the surface tension of the water, which might otherwise cause the water to
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`flow as a sheet over the top of the screen, is disrupted.” Sichel col. 3:55–59
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`(emphasis added).
`
`
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`Sichel FIG. 4 (annotated).
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`[0061] “In FIG. 4, the surface of the water is schematically depicted by phantom
`
`line W. As the surface of the moving water drops between the upper limits of ribs
`
`24, the water impinges on transverse bars 25 and the bars disrupt the flow as
`
`represented by arrows 30[.]” Sichel col. 3:59–63.
`
`[0062] A POSITA learned from Sichel that an arrangement of downhill ribs would
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`help avoid water from a heavy downpour sliding as a single sheet over a screen and
`
`missing a rain gutter. A POSITA learned that the downhill ribs channel the water.
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`A POSITA learned that the depth of water within the troughs between the ridges
`
`provides added weight/pressure to help overcome surface tension effects thus
`
`driving the water through the apertures in the screen, rather than bypassing those
`
`apertures with a flow tangential to the main plane of the screen.
`
`
`
`
`
`25
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`IPR2018-00015
`Petitioners Ex. 1002 p. 25
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`

`

`G. Schmid
`
`
`
`[0063]
`
`Schmid is directed to “roof drains adapted to accommodate abnormally
`
`large amounts of water.” Schmid col. 1:2-4.
`
`Schmid FIG. 3.
`
`
`
`[0064]
`
`“The slots 46 in the upper section 40 of the strainer 38 are at an elevation
`
`with relation to the reservatory 20 and the top of the roof to substantially increase
`
`the head of the fluid in the reservatory 20 to carry off heavy rainfall due to
`
`cloudbursts and the like[.]” Schmid col. 4:14-19. From Schmid, a POSITA
`
`understood that height of water provided a head of pressure to improve drainage of
`
`rainwater from a roof.
`
`
`
`
`
`
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`26
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`Petitioners Ex. 1002 p. 26
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`

`

`Summary of Prior Art Teachings of Pressure Head and Fluid Flow
`
`[0065] The concept of pressure head, meaning that the pressure of a standing body
`
`of water is directly proportional to the body’s depth and density, has been
`
`understood at least since Daniel Bernoulli first published his principle of the
`
`conservation of energy in fluid flows within his book Hydrodynamica in 1738, and
`
`the resulting Bernoulli Equation that was developed into its current form in the
`
`18th, 19th, and 20th centuries. As discussed above, at least as early as Schmid,
`
`issued September 14, 1954, inventors were well aware of the benefit of increasing
`
`fluid depth to increase the driving force to cause fluids to flow through narrow
`
`orifices of a screen or grating at higher velocities and flow rates than would
`
`otherwise occur with prior shallower designs. As discussed above, both
`
`Higginbotham and Sichel acknowledged the benefit of using channels in a screen
`
`to increase the fluid depth and resulting pressure over screen orifices in order to
`
`generate higher fluid pressures to help the draining water to overcome surface
`
`tension effects, thus drive more of the water through the screen orifices, rather than
`
`along a path in a direction tangential to the screen materials, which would result in
`
`an undesirable fluid bypass effect. In my opinion, had a POSITA not been aware of
`
`these principles already, a POSITA would have learned from Schmid, Sichel, and
`
`Higginbotham to increase the depth of a corrugation or channel to boost the fluid
`
`flow through a screen or grating.
`
`
`
`
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`
`
`
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`27
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`IPR2018-00015
`Petitioners Ex. 1002 p. 27
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`

`

`CLAIM CONSTRUCTION
`
`[0066]
`
`I understand that the Petitioners and the Patent Owner will have different
`
`constructions for a number of terms and the PTAB has not yet construed any
`
`disputed terms. I have reviewed the claim construction order in Gutterglove, Inc.
`
`v. American Die et al.; Case No. 2:16-cv-02408-WHO, E.D. Cal. I understand that
`
`the PTAB and district court can have different constructions of the same terms. I
`
`reserve the right to perform additional analyses based on the Patent Owner’s
`
`proposed construction and based on the PTAB’s preliminary constructions in the
`
`institution decision.
`
`[0067]
`
`I have been informed that the Petitioners propose the following
`
`constructions:
`
`Claim Terms
`
`Proposed Constructions
`
`fine mesh
`
`
`
`coupling
`
`
`
`screen suitable for filtering debris in a
`rain gutter setting
`
`coupled together, such language should
`be interpreted broadly … directly
`together or … through intervening
`structures
`
`plate
`
`a thin structural member
`
`
`corrugated with ridges
`
`
`
`
`
`
`
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`folds comprising some high points and
`low points
`
`
`
`28
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`IPR2018-00015
`Petitioners Ex. 1002 p. 28
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`

`

`INVALDITY OPINIONS
`
`Ground 1:
`
`[0068]
`
`In my opinion, claims 1–6, 16–20 of the ’747 Patent would have been
`
`obvious based on Lenney ’912 in view of Leone, and Van Horn.
`
`[0069]
`
`The ’747 Patent discloses a gutter cover that uses a corrugated screen to
`
`keep debris out of a rain gutter while allowing rainwater to enter the gutter. The
`
`inventors of the ’747 Patent faced problems of: keeping leaves out of a gutter, flow
`
`rate of a gutter screen during a heavy downpour of rain and strength of the gutter
`
`screen. In my opinion, those considerations are merely typical problems faced in
`
`designing a rain gutter system.
`
`[0070]
`
` The inventors of the ’747 Patent addressed these problems with a fine
`
`mesh screen and corrugations in the fine mesh screen. Yet the’747 Patent’s
`
`solutions to these problems are the exact same solutions taught in the prior art to
`
`keep leaves out of the gutter, to increase the flow rate of a screen, and to strengthen
`
`the screen. Lenney ’912 taught to use a woven screen of stainless steel wire.
`
`Leone taught to use corrugations to