UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`PELICAN BIOTHERMAL, LLC
`Petitioner
`
`v.
`
`VA-Q-TEC AG.
`Patent Owner
`
`Patent No. 10,766,685
`Issue Date: September 8, 2020
`Title: BOX-TYPE TRANSPORT CONTAINER
`_______________
`
`Post-Grant Review No. PGR2021-00085
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`
`DECLARATION OF PAUL HARBER
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`Patent No. 10,766,685
`Declaration in Support of PGR2021-00085
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1 
`I. 
`II.  My Background and Qualifications ................................................................. 1 
`III.  The Bases for My Opinions ............................................................................. 3 
`IV.  Summary of Opinions ...................................................................................... 7 
`V. 
`Person of Ordinary Skill in the Art .................................................................. 8 
`VI.  The ’685 Patent ................................................................................................ 9 
`VII.  The Prosecution History of the ’685 Patent .................................................. 12 
`VIII.  Technical Background ................................................................................... 15 
`IX.  Prior Art ......................................................................................................... 19 
`A.  NanoCool Products.............................................................................. 19 
`B. 
`Smith (Exhibit 1011) ........................................................................... 20 
`C.  Wood (Exhibit 1013) ........................................................................... 22 
`D.  Goncharko (Exhibit 1012) ................................................................... 27 
`E. 
`Combs (Exhibit 1014) ......................................................................... 28 
`F. 
`Sawaki (Exhibit 1016) ......................................................................... 30 
`G. 
`Frysinger (Exhibit 1018) ..................................................................... 32 
`H.  Other Prior Art ..................................................................................... 33 
`X.  Unpatentability of the Challenged Claims of the ’685 Patent ....................... 37 
`A.  Ground 1: Claims 2, 20-23, and 43-45 of the ’685 Patent
`Contain or Depend on an Indefinite Claim Term ............................... 37 
`Ground 2: Claims 1-2, 4, 7-12, 14, 19-28, 36-38, and 43-48 of
`the ’685 Patent are Anticipated by the NanoCool Products ................ 41 
`
`B. 
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`Declaration in Support of PGR2021-00085
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`Independent Claim 1 ................................................................. 42 
`1. 
`Dependent Claim 2 ................................................................... 55 
`2. 
`Dependent Claim 4 ................................................................... 56 
`3. 
`Dependent Claim 7 ................................................................... 57 
`4. 
`Dependent Claim 8 ................................................................... 59 
`5. 
`Dependent Claim 9 ................................................................... 60 
`6. 
`Dependent Claim 10 ................................................................. 61 
`7. 
`Dependent Claim 11 ................................................................. 63 
`8. 
`Dependent Claim 12 ................................................................. 65 
`9. 
`10.  Dependent Claim 14 ................................................................. 67 
`11. 
`Independent Claim 19 ............................................................... 68 
`12.  Dependent Claim 20 ................................................................. 68 
`13.  Dependent Claim 21 ................................................................. 69 
`14.  Dependent Claim 22 ................................................................. 70 
`15.  Dependent Claim 23 ................................................................. 71 
`16.  Dependent Claim 24 ................................................................. 71 
`17.  Dependent Claim 25 ................................................................. 71 
`18.  Dependent Claim 26 ................................................................. 72 
`19.  Dependent Claim 27 ................................................................. 72 
`20.  Dependent Claim 28 ................................................................. 72 
`21. 
`Independent Claim 36 ............................................................... 73 
`22. 
`Independent Claim 37 ............................................................... 73 
`23. 
`Independent Claim 38 ............................................................... 73 
`iii
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`Patent No. 10,766,685
`Declaration in Support of PGR2021-00085
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`C. 
`
`Independent Claim 43 ............................................................... 74 
`24. 
`25.  Dependent Claim 44 ................................................................. 74 
`26.  Dependent Claim 45 ................................................................. 74 
`27. 
`Independent Claim 46 ............................................................... 75 
`28.  Dependent Claim 47 ................................................................. 75 
`29.  Dependent Claim 48 ................................................................. 75 
`Ground 3: Claims 1, 2, 4, 7, 8, 14, 19, 20, 24 and 25 Are
`Obvious Over Smith in view of either: Wood or
`Goncharko/Combs ............................................................................... 76 
`1. 
`Independent Claim 1 ................................................................. 77 
`2. 
`Dependent Claim 2 ................................................................... 92 
`3. 
`Dependent Claim 4 ................................................................... 94 
`4. 
`Dependent Claim 7 ................................................................... 95 
`5. 
`Dependent Claim 8 ................................................................... 96 
`6. 
`Dependent Claim 14 ................................................................. 97 
`7. 
`Independent Claim 19 ............................................................... 99 
`8. 
`Dependent Claim 20 ...............................................................102 
`9. 
`Dependent Claim 24 ...............................................................103 
`10.  Dependent Claim 25 ...............................................................103 
`D.  Ground 4: Claims 12 and 38 Are Obvious Over Smith in view
`of either: Wood or Goncharko/Combs (per Ground 3 above)
`and further in view of Frysinger (Exhibit 1018) ...............................104 
`1. 
`Dependent Claim 12 ...............................................................105 
`2. 
`Independent Claim 38 .............................................................108 
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`Patent No. 10,766,685
`Declaration in Support of PGR2021-00085
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`E. 
`
`
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`Ground 5: Claims 1-2, 4, 7-8, 14, 19-20, and 24-25 Are
`Obvious Over Goncharko in view of either: Wood or Combs ........109 
`1. 
`Independent Claim 1 ...............................................................110 
`2. 
`Dependent Claim 2 .................................................................119 
`3. 
`Dependent Claim 4 .................................................................120 
`4. 
`Dependent Claim 7 .................................................................121 
`5. 
`Dependent Claim 8 .................................................................122 
`6. 
`Dependent Claim 14 ...............................................................123 
`7. 
`Independent Claim 19 .............................................................124 
`8. 
`Dependent Claim 20 ...............................................................126 
`9. 
`Dependent Claim 24 ...............................................................127 
`10.  Dependent Claim 25 ...............................................................127 
`Ground 6: Claims 10, 26-27, 36, and 46-47 Are Obvious Over
`Goncharko in view of either: Wood or Combs (per Ground 5
`above) and further in view of Sawaki ...............................................128 
`1. 
`Dependent Claims 10 and 26 ..................................................128 
`2. 
`Dependent Claim 27 ...............................................................131 
`3. 
`Independent Claim 36 .............................................................131 
`4. 
`Independent Claim 46 .............................................................133 
`5. 
`Dependent Claim 47 ...............................................................134 
`G.  Ground 7: Claims 12 and 38 Are Obvious Over Goncharko in
`view of either: Wood or Combs (per Ground 5 above) and
`further in view of Frysinger ..............................................................134 
`1. 
`Dependent Claim 12 ...............................................................135 
`2. 
`Independent Claim 38 .............................................................138 
`
`F. 
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`Patent No. 10,766,685
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`Reasonable Expectation of Success ..................................................139 
`H. 
`XI.  Conclusion ...................................................................................................140 
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`Patent No. 10,766,685
`Declaration in Support of PGR2021-00085
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`I, Paul Harber, do declare as follows:
`
`
`
`I.
`
`INTRODUCTION
`
`I am over the age of eighteen (18) and otherwise competent to make
`
`this declaration.
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`
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`I have been retained as an expert witness on behalf of Pelican
`
`BioThermal, LLC for a Post-Grant Review (PGR) for U.S. Patent No. 10,766,685
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`(EX1001). I am being compensated for my time in connection with this PGR at
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`my standard consulting rate. I understand that my declaration accompanies a
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`petition for Post-Grant Review involving the above-mentioned U.S. Patent.
`
`II. MY BACKGROUND AND QUALIFICATIONS
` My area of expertise is in the field of insulated shipping containers. I
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`am presently a Principal at Parenteral Supply Chain, LLC.
`
` My curriculum vitae is presented in Exhibit 1010.
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`
`
`I received my Bachelor of Science degree in Agricultural and
`
`Biological Engineering and my Master of Science degree in Engineering, both
`
`from Purdue University.
`
`
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`From 2018 to present, I have been a founding member of Parenteral
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`Supply Chain, LLC, where I have been responsible for serving a client base of
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`biotech companies and other companies serving the life science industry.
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`Patent No. 10,766,685
`Declaration in Support of PGR2021-00085
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`Prior to Parenteral Supply Chain, LLC, I co-founded and was a
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`Principal of Modality Solutions, LLC, where the scope of my work (from about
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`2011 to about 2018) included validation of active and passive shippers (shipping
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`containers) for numerous pharmaceutical clients, as well as the installation and
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`qualification of the Transport Simulation Lab located at BioConvergence.
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`
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`Also, in 2014, I did project work with non-government organizations,
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`including FHI 360, where I evaluated cold chain operations at Ebola vaccine
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`clinical trial sites in Zone 4 countries. This was a personally rewarding addition to
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`my work as part of Modality Solutions, LLC.
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`
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`From 1981 to 2011, I was an engineer for Eli Lilly and Company,
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`where my work focused on developing and qualifying thermal shippers for clinical
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`and commercial transportation of temperature labile products. In this role, I gained
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`extensive knowledge of and experience with designs and functionality of thermal
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`controlled shipping containers. For example, I had major roles in defining and
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`specifying the cold chain components and practices necessary to support the
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`approval and commercialization of multiple Lilly products. I had the role of Eli
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`Lilly’s interface to regulatory agencies during audits and inspections on issues
`
`related to transport package qualification. As a team member on the internal Lilly
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`CM&C teams, my work also included the selection and qualification of primary
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`packaging. I am the 2008 recipient of Eli Lilly Engineering Excellence Award, a
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`
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`Patent No. 10,766,685
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`peer selected award acknowledging lifetime engineering achievements at Eli Lilly
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`
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`and Company.
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`
`
`In 2007, I co-authored the PDA Journal of Pharmaceutical Science
`
`and Technology Technical Report No. 39 (PDA TR#39). That Report is widely
`
`used by both industry professionals and regulators as a definitive reference source
`
`for best-demonstrated practices in transport validation. From 2008 to 2018, I
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`contributed a number of articles on subjects related to cold chain including MKT
`
`and Stability Studies for Transportation. I also assisted in the writing and
`
`execution of the ISTA 7E project. Some of my publications are listed in my
`
`curriculum vitae. EX1010.
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`
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`I am the inventor of U.S. Patent No. 10,618,687, titled “Shock and
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`Vibration Absorbing Pallets and Panels.”
`
`III. THE BASES FOR MY OPINIONS
`
`In formulating my opinion, I considered the following exhibits,
`
`including any other exhibits I cite herein even if not listed below:
`
`Ex #
`
`EXHIBIT
`
`1001 U.S. Patent No. 10,766,685 (“the ’685 patent”)
`1003 Preliminary Amendment from ’685 Patent Prosecution History
`1004 Office Action dated June 13, 2019, from ’685 Patent Prosecution History
`1005 Amendment dated Sept. 12, 2019, from ’685 Patent Prosecution History
`1006 Office Action dated Dec. 27, 2019, from ’685 Patent Prosecution History
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`Patent No. 10,766,685
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`1007 Amendment dated March 23, 2020, from ’685 Patent Prosecution History
`1008 Notice of Allowance from ’685 Patent Prosecution History
`1009 Amendment after Allowance dated May 13, 2020
`1011 U.S. Patent No. 6,701,724 (“Smith”)
`1012 U.S. Application Publication No. 2008/0006628 A1 (“Goncharko”)
`1013 PCT Publication No. WO 2013/144621 (“Wood”)
`1014 U.S. Patent No. 4,576,017 (“Combs”)
`1015 U.S. Patent No. 3,199,709 (“Morrison”)
`1016 U.S. Patent No. 8,348,087 (“Sawaki”)
`1017 U.S. Patent No. 7,383,592 (“Kruelle”)
`1018 U.S. Patent No. 6,244,458 (“Frysinger”)
`1019 Signode 1996 Catalog
`1020 ACME 1995 Catalog
`1021 Intentionally left blank
`1022 U.S. Application Publication No. 2010/0326993 (“Mayer”)
`1023 U.S. Patent No. 5,323,911 (“Johnston”)
`1024 U.S. Application Publication No. 2014/0054297 (“Patstone”)
`1025 PCT Publication No. WO 2013/002325 (“Fujii”)
`1026 PCT Publication No. WO 2008/137889 A1
`1027 PCT Publication No. WO 2008/137883 A1
`1028 PCT Publication No. WO 2004/104498 A2
`1029 European Patent Publication No. EP 2 221 569 A1
`1030 Declaration of Mr. Charles Zumwalt
`1031 Declaration of Ms. Amy Martinez
`1032 MSI Packaging 853 Change Letter 12-29-2010
`1033 World Courier 985 Change Letter 01-06-2011
`1034 World Courier 854 Change Letter 01-06-2011
`1035 Cool Logistics 98601 Change Letter 01-10-2011
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`1036 Aeras Pricing Proposal dated 01-11-2013
`1037 Cool Logistics Pricing Proposal 12-19-2012
`1038 Johnson and Johnson Pricing Proposal 12-14-2012
`1039 Documents re Product Sales to Aeras Jan 2013
`1040 Documents re Product Sales to FedEx Feb 2013
`1041 Documents re Product Sales to Healthpoint June 2013
`1042 Documents re Product Sales to FedEx June 2013
`1043 Documents re Product Sales to FedEx Oct 2013
`1044 Documents re Product Sales to Smith and Nephew Dec 2013
`1045 Documents re Product Sales to MSI Packaging Mar 2014
`1046 Appendix 1 – Claim charts based on NanoCool Products
`1047 Appendix 2 – Claim charts based on Smith
`1048 Appendix 3 – Claim charts based on Goncharko
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`
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`
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`I understand that an anticipation analysis involves comparing a claim
`
`to the prior art to determine whether each and every element of the claim, arranged
`
`as in the claim, is described by a single prior art reference, in a manner enabling to
`
`a person of ordinary skill in the art (POSITA) at the time of the alleged invention
`
`(prior to the earliest possible effective date of the ’685 patent, which I understand
`
`to be October 27, 2014). I understand that an obviousness analysis involves
`
`comparing a claim to the prior art to determine whether the claimed invention
`
`would have been obvious to a POSITA in view of the prior art, and in light of the
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`general knowledge in the art, at the time of the alleged invention (prior to the
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`earliest possible effective date of the ’685 patent). I also understand that when a
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`POSITA would have reached the claimed invention through routine
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`
`
`experimentation, the invention may be deemed obvious.
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`
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`I also understand that obviousness can be established by combining or
`
`modifying the teachings of the prior art to achieve the claimed invention. It is also
`
`my understanding that where there is a reason to modify or combine the prior art to
`
`achieve the claimed invention, there must also be a reasonable expectation of
`
`success in so doing. I understand that the reason to combine prior art references
`
`can come from a variety of sources, not just the prior art itself or the specific
`
`problem the patentee was trying to solve. I understand that the references
`
`themselves need not provide a specific hint or suggestion of the alteration needed
`
`to arrive at the claimed invention; the analysis may include recourse to logic,
`
`judgment, and common sense available to a POSITA that does not necessarily
`
`require explication in any reference. I understand that the combination of familiar
`
`elements according to known methods is likely to be obvious when it does no more
`
`than yield predictable results.
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`
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`I understand that when considering the obviousness of an invention,
`
`one should also consider whether there are any secondary considerations that
`
`support the nonobviousness of the invention.
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`IV. SUMMARY OF OPINIONS
` Based on my investigation and analysis and for the reasons set forth
`below, it is my opinion that Claims 2, 20-23, and 43-45 are indefinite and therefore
`
`
`
`invalid.
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`
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`Indefiniteness notwithstanding, it is my opinion that Claims 1-2, 4, 7-
`
`12, 14, 19-28, 36-38, and 43-48 of the ’685 patent were anticipated by one or both
`
`of the NanoCool 98596-type and 98830-type products.
`
`
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`In addition, it is my opinion that claims 1-2, 4, 7-8, 14, 19-20 and 24-
`
`25 of the ’685 patent would have been obvious to one of ordinary skill in the art at
`
`the time of the alleged invention, over Smith (EX1011) in view of Wood
`
`(EX1013), or Smith in view of Goncharko (EX1012) and Combs (EX1014).
`
`
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`In addition, it is my opinion that Claims 10, 26-27, 36, and 46-47 of
`
`the ’685 patent would have been obvious to one of ordinary skill in the art at the
`
`time of the alleged invention, over Smith in view of Wood and Sawaki (EX1016),
`
`or Smith in view of Goncharko/Combs and Sawaki. In addition, it is my opinion
`
`that Claims 12 and 38 of the ’685 patent would have been obvious to one of
`
`ordinary skill in the art at the time of the alleged invention, over Smith in view of
`
`Wood and Frysinger (EX1018); or Smith in view of Goncharko and Combs, and
`
`further in view of view Frysinger.
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`Patent No. 10,766,685
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`In addition, it is my opinion that Claims 1-2, 4, 7-8, 14, 19-20, and 24-
`
`25 of the ’685 patent would have been obvious to one of ordinary skill in the art at
`
`the time of the alleged invention, over Goncharko in view of Wood, or Goncharko
`
`in view of Combs.
`
`
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`In addition, it is my opinion that Claims 10, 26-27, 36, and 46-47 of
`
`the ’685 patent would have been obvious to one of ordinary skill in the art at the
`
`time of the alleged invention, over Goncharko in view of Wood and Sawaki
`
`(EX1016), or Goncharko in view of Combs and Sawaki.
`
`
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`In addition, it is my opinion that Claims 12 and 38 of the ’685 patent
`
`would have been obvious to one of ordinary skill in the art at the time of the
`
`alleged invention, over Goncharko in view of Wood and Frysinger, or Goncharko
`
`in view of Combs and Frysinger.
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`V.
`
`PERSON OF ORDINARY SKILL IN THE ART
`
` I understand that as of October 27, 2014, a hypothetical POSITA
`
`would “be aware of all the pertinent prior art” at the time of the alleged invention.
`
`Thus, in view of the art at that time, a POSITA would have familiarity with VIPs
`
`for use in Insulated Shipping Containers (ISCs) to improve thermal insulating
`
`performance, as well as general techniques for creating containers from VIPs,
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`banding them together using strapping or the like, and preparing such systems for
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`shipping such as, for example, placing them into outer boxes for additional
`
`
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`protection, application of labels and shipping instructions, etc.
`
` The hypothetical POSITA would have: (i) at least a bachelor’s degree
`
`in biological, chemical or mechanical engineering, or related sciences, and have at
`
`least three to five years of experience in designing and testing ISCs. Such a person
`
`may also have (ii) a higher level degree, such as a PhD and/or Master’s degree in
`
`engineering, or related sciences, and have at least two to three years of experience
`
`in designing and testing ISCs. These descriptions are approximate, and a higher
`
`level of education or specific skill might make up for less experience, and vice-
`
`versa.
`
`VI. THE ’685 PATENT
`
`I understand that U.S. Patent No. 10,766,685 (“the ’685 patent”)
`
`(EX1001) issued from U.S. Patent Application No. 15/521,338 (“the ’338
`
`application”) that purports on its face to have been filed based on a PCT filing date
`
`of October 20, 2015. The ’685 patent also purports on its face to have a priority
`
`date claim based on German application 20 2014 008 489 U, dated October 27,
`
`2014, which is referred to herein as the earliest possible effective date (“EPED”) of
`
`the ’685 patent.
`
`
`
`I understand that the priority date to which the ’685 patent is entitled
`
`may be in dispute. I have been instructed to base my opinion from the perspective
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`of a POSITA as of October 27, 2014. However, if I were to use any of the other
`
`
`
`dates noted above, as the relevant date, my opinion would be the same.
`
` The ’685 patent describes a “box-type transport container” and a
`
`“coherent frame-type insert” created by clamping vacuum insulation panels
`
`(“VIPs”) together by at least one tensioning means. EX1001, 4:15-20. The VIPs 5
`
`are arranged in a corrugated paperboard outer container 1. Id. at 1:14-17 and
`
`10:53-55. “For all variants” the VIPs are “fixed … relative to one another by
`
`means of at least one encircling tensioning strap 10 …” and “can thus be handled
`
`as a coherent frame-type insert 11 for the outer container 1.” Id. at 8:14-21. Also,
`
`“the corners of the vacuum insulation panels placed together in the coherent frame-
`
`type insert are protected by means of corner protection elements [12], e.g., angled
`
`rails made of paperboard or plastic (metal is also possible…)”. Id. at 4:32-36 and
`
`8:54-58.
`
` The “Background” section of the ’685 patent admits that insulated
`
`box-type transport containers and VIPs were previously known for transporting
`
`temperature sensitive goods. Id. at 1:23–2:38. The ’685 patent further
`
`acknowledges that known box-type transport containers had VIPs of prismatic
`
`design with smooth edges arranged in a box-type outer container, citing prior art
`
`references: WO 2008/0137889 A1, WO 2008/0137883 A1, WO 2004/104498 A2,
`
`and EP 2 221 569 A1. Id. at 1:23-2:26. The first listed reference (Exhibit 1026) is
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`directed to a “radiant liquid heating container,” and thus may have been identified
`
`
`
`in the ’685 specification with an incorrect reference number. The other listed
`
`references are cited herein as Exhibits 1027-1029, respectively.
`
` Some claims of the ’685 patent focus on VIPs being fixed to one
`
`another by at least one tensioning means, that can be handled as a coherent frame-
`
`type insert for the outer container. Some claims also include corner protection
`
`elements disposed between the VIPs and the at least one tensioning means. Other
`
`claims also include a supporting frame disposed inside the VIPs providing an
`
`abutment for forces applied by the at least one tensioning means. Yet other claims
`
`include other features, such as another VIP disposed at the bottom of the container,
`
`or additional sealing means between the VIPs.
`
` However, transport containers and/or container inserts having those
`
`features had been described in the prior art, marketed and sold in the U.S. and,
`
`therefore, well known to POSITA before the filing date of the ’685 patent. Indeed,
`
`multiple prior art publications and on-sale evidence not considered during the
`
`prosecution of the ’685 patent, but discussed herein, taught of transport containers
`
`having VIPs strapped in a coherent frame, and the need for corner protection
`
`elements between the straps and the VIPs. Based on my review of this evidence,
`
`and for the reasons I explain in this declaration, I believe the allowance of the
`
`claims of the ’685 patent challenged herein was in error.
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`Patent No. 10,766,685
`Declaration in Support of PGR2021-00085
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`VII. THE PROSECUTION HISTORY OF THE ’685 PATENT
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`I have been informed that the application for the ’685 patent was filed
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`with claims 1-27 from PCT/EP2015/002068. I have reviewed several documents
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`from the prosecution file history of the ’685 patent, including a preliminary
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`amendment dated April 24, 2017 (EX1003) that cancelled all of the original claims
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`and added new application claims 28-57 (including independent application claims
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`28, 46 and 47). New claim 28 (patent claim 1) was identical to issued patent claim
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`1, except it did not include “corner protection elements” limitations that were later
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`added to that claim by an Amendment dated March 23, 2020 (EX1007).
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` New claims 46 and 47 corresponded to patent claims 18 and 19.
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`However, Claim 47 was subsequently amended to add “corner protection
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`elements” limitations, in response to rejections over prior art. Id.
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`In the first Office Action dated June 13, 2019 (EX1004), all pending
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`claims 28-57 were rejected as obvious over certain combinations of Mayer (US
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`2010/0326993), Johnston (US 5,323,911), Patstone (US 2014/0054297) and Fujii
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`(WO2013002325). Those references are cited as Exhibits 1022-1025, respectively.
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` The Examiner stated Johnston (EX1023) discloses corner protection
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`elements between vacuum insulation panels and tensioning means. The Examiner
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`also noted that the corner protection elements 50 extend to the bottom VIP to
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`Patent No. 10,766,685
`Declaration in Support of PGR2021-00085
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`jointly clamp the bottom VIP with sidewall VIPs, citing Fig. 1, below. EX1004, at
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`5.
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`In a response dated September 12, 2019 (EX1005), the applicant
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`argued that Johnston relates to a storage container on a palletized base and that
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`Johnston’s tensioning means (straps 16) extend around an outermost container, not
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`a frame-type insert for an outer container, as in claims 28 and 47.
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` A second Office Action dated December 27, 2019 (EX1006) included
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`new rejections of many of the pending claims (including claims 28 and 47) as
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`anticipated by Goncharko (EX1012) or as obvious over Goncharko and Fujii
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`(EX1025). Other claims were objected to and claim 46 (patent claim 18) was
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`allowed. In the rejections, the Examiner stated Goncharko “discloses a coherent
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`Patent No. 10,766,685
`Declaration in Support of PGR2021-00085
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`frame-type insert for a box-type outer container of an altogether box-type transport
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`container, the insert comprising: board-like vacuum insulation panels 16/18/20/22
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`(Figure 2; paragraph 2) that have a prismatic design … fixed in position relative to
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`one another by at least on tensioning means 14/15/17 (Figure 3).” EX1006 at 4
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`and 10.
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` Responding to the rejections on March 23, 2020 (EX1007), the
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`applicant amended claim 28 (patent claim 1) adding: “the transport container
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`further comprising corner protection elements disposed between the vacuum
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`insulation panels and the at least one tensioning means.” That limitation was in
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`dependent claim 32 (cancelled). Claim 47 (patent claim 19) was amended to add
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`similar corner protection element limitations from dependent claim 53 (cancelled).
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` Thereafter, a Notice of Allowance dated April 7, 2020, was issued.
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`EX1008. However, the use of corner protection elements was well-known by
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`POSITA and commonly used for strapped VIP containers, as taught by other prior
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`art described herein. I believe that the allowance was in error, in view of such
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`prior art.
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` After allowance, an Examiner interview was conducted, and an
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`Amendment dated May 13, 2020 (EX1009) was filed to add these statements to the
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`specification:
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`Patent No. 10,766,685
`Declaration in Support of PGR2021-00085
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`“It will be recognized that as used within the present disclosure,
`an ‘edge’ may also be referred to as a ‘face.’” Id., 2:2-4.
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`“It will be recognized that, as used within the present
`disclosure, a ‘corner protection element’ may also be referred to
`as an ‘corner protection element,’ [sic] and within this context a
`‘corner’ may be referred to as an ‘edge.’” Id., 4:39-43.
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`VIII. TECHNICAL BACKGROUND
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`ISCs, including those with vacuum insulation panels (VIPs) were well
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`known to a POSITA, prior to the earliest possible effective date, as represented by
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`the examples described in a myriad of prior art references, including the above-
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`cited references identified in the ’685 patent, itself, as well as Smith (EX1011),
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`Wood (EX1013), Goncharko (EX1012), and other prior art references cited herein.
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` Such ISCs commonly included vacuum insulation panels (VIPs) or
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`other foam insulation panels held within an outer container. A typical outer
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`container was a corrugated cardboard box. The VIPs were typically arranged
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`inside of the outer container (a cardboard box), to surround and thermally insulate
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`an interior cargo volume. Some shipping containers included one or more cooling
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`devices (such as one or more containers of phase change material or other cooling
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`devices) arranged in or around the cargo volume.
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`Patent No. 10,766,685
`Declaration in Support of PGR2021-00085
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` To assemble such shipping containers, the VIPs were placed inside of
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`the outer container (e.g., cardboard box), facing or against the inner wall surfaces
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`of the outer container. During placement of the VIPs, one or more VIPs could be
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`held upright against an inner wall surface, while one or more, further VIPs were
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`placed against the other walls, until four sidewall VIPs are in place and abutted
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`against each other. That procedure often required two or more hands and a
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`sufficient combination of dexterity, skill and practice to hold some VIPs in place,
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`while other VIPs were inserted into the outer container. Accordingly, to simplify