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
`
`
`DECLARATION OF CHARLES ZUMWALT
`
`
`
`
`
`
`
`
`PGR2021-00085
`Pelican EX1030 Page 1
`
`
`____________
`
`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
`
`
`DECLARATION OF CHARLES ZUMWALT
`
`
`
`
`
`
`
`
`PGR2021-00085
`Pelican EX1030 Page 1
`
`
`
`
`
`
`
`
`
`I, Charles Zumwalt, do declare as follows:
`
`I. Introduction
`
`1.
`
`I am over the age of eighteen (18) and otherwise competent to make
`
`this declaration.
`
`2.
`
`I hold the position of Product Development Engineer at Pelican
`
`BioThermal in Albuquerque, New Mexico. I have worked for the company since
`
`2016, and have held the position of Product Development Engineer since that time.
`
`This position generally entails managing the product design process from
`
`collaborating with customers to design custom systems, to innovating new
`
`products and product improvements through testing and qualifying systems and
`
`authoring related technical reports. This position also (i) consults internally to
`
`solve quality control problems, introduce new products into production, and
`
`provide technical support to colleagues; (ii) generates documentation and reports
`
`for qualification; and (iii) creates internal technical instructions for building
`
`products and inventory management.
`
`3.
`
`All of the testimony provided in this declaration is based on my own
`
`personal knowledge and recollection, from having worked for the company for 5
`
`years. I am not being compensated for any of the testimony provided herein, aside
`
`from my normal salary from the company.
`
`1
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`PGR2021-00085
`Pelican EX1030 Page 2
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`
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`
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`II. NanoCool Prior-art Products
`
`4.
`
`Pelican BioThermal specializes in the design and manufacture of
`
`thermal protection packaging solutions for the safe transport and distribution of
`
`frozen, refrigerated, and controlled ambient temperature-sensitive payloads. In
`
`basic terms, these specialized shipping containers consist of an assembly of
`
`vacuum insulation panels (abbreviated as “VIPs”) arranged in a “box type” shape
`
`to provide an interior cavity that is thermally insulated from the outside ambient.
`
`To form the container, there is at a minimum four sidewall VIPs, and one bottom
`
`VIP. Some of our products use a “cooling engine” placed at the top of the VIP-
`
`formed box to maintain the desired temperature in the interior space, e.g., the
`
`“98596-type products” discussed below. Other products just use a top VIP to
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`enclose the space, e.g., the “98830-type products” discussed below.
`
`5.
`
`Prior to late 2010, the VIPs were held together by taping them.
`
`However, in late 2010/early 2011, NanoCool changed its manufacturing process to
`
`use plastic strapping instead of tape to hold the VIPs together for most of its
`
`products. As part of the new design, the exterior of the bottom and sidewall VIPs
`
`were encased in cardboard corrugate, located between the VIPs and the strapping
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`to protect the VIPs from hazards, including the forces created by the strapping
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`when it is pulled tight. During assembly, before applying the strapping a hard
`
`plastic supporting frame was placed in the interior cavity between the sidewall
`
`2
`
`PGR2021-00085
`Pelican EX1030 Page 3
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`
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`
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`VIPs, the frame being sized to fit into the cavity snugly for the size box being
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`manufactured. This hard frame holds the VIPs in place and helps oppose the
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`compressive forces caused by the application of the strapping. Once the first strap
`
`was applied (usually towards the middle part of the box), the supporting frame
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`would be moved towards the outer opening prior to application of the strap nearest
`
`the outer opening. Upon finishing the strapping operation, the frame was removed
`
`from the strapped VIPs for reuse with the next assembly. Once strapped together,
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`the VIPs could be handled as a coherent, single assembly, which was placed into a
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`separate cardboard box to further protect the assembly during use.
`
`6.
`
`Based on documents I have seen and information I have learned
`
`during my employment, NanoCool made and sold several different versions of
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`these shippers from late 2010/early 2011 to October of 2014. For example, some
`
`had cooling engines and others did not. Some shippers also contained a packet of
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`phase-change material (known as a “PCM”) sandwiched between two bottom VIPs
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`to further assist in controlling the interior of the shippers at a desired temperature.
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`And even shippers having the same design were offered in different sizes. I will
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`now further describe two particular product types in more detail below.
`
`a. NanoCool’s 98596 Products
`
`7.
`
`In the lobby of its Albuquerque office, NanoCool maintained a
`
`display table with various products it has manufactured over the years. In this
`
`3
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`PGR2021-00085
`Pelican EX1030 Page 4
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`
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`
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`display, I located a shipper product manufactured in 2013 having model number 2-
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`98596 and referred to as a “Long Haul Shipper.” This product has four sidewall
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`VIPs, and two bottom VIPs sandwiching a PCM packet; the top of the assembly is
`
`a cooling engine. The entire assembly is enclosed by an outer box for shipping.
`
`8.
`
`Photos of the 98596 product I located are shown below:
`
`
`
`Outer box for
`shipping
`
`Foam liner
`
`VIP insert/
`assembly
`(with cooling
`engine cover)
`
`
`
`
`
`
`
`
`
`Outer box
`hinged cover
`
`Outer box
`sidewalls
`
`
`
`4
`
`
`
`Outer box
`bottom
`
`
`
`PGR2021-00085
`Pelican EX1030 Page 5
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`
`
`
`
`Cardboard
`corrugate
`protector
`
`Plastic
`strapping
`
`
`
`
`
`Four sidewall VIPs and
`bottom VIPs placed to
`form box-shape, then
`strapped together with
`cardboard corrugate
`protecting the VIPs to
`form coherent assembly
`
`
`
`
`The 98596 products used (and still use) a cooling engine to help
`
`9.
`
`maintain the temperature inside the container, which has the silver foil cover seen
`
`in the photo above on the left. There was also a foam liner glued to the underside
`
`of the lid of the outer box that pressed against the cooling engine when the box lid
`
`is closed. A close-up photo of the top of the cooling engine from this product is
`
`shown below:
`
`5
`
`PGR2021-00085
`Pelican EX1030 Page 6
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`
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`
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`10. The bottom part of the VIP insert of the 98596 products consisted of
`
`two bottom VIPs with a PCM packet sandwiched between them. The “upper”
`
`bottom VIP was sized to fit snugly within the assembled sidewall VIPs, while the
`
`“lower” bottom VIP was sized to have the same dimensions as the outer periphery
`
`of the sidewall VIPs as assembled. This configuration of the bottom VIPs can be
`
`seen in the photo below:1
`
`
`
`1 This photo is not taken from the 98596 product from the display table, since the
`
`product would have to be disassembled to be able to see these features. Therefore,
`
`6
`
`PGR2021-00085
`Pelican EX1030 Page 7
`
`
`
`
`
`Upper bottom
`VIP fitting
`snugly inside the
`sidewall VIPs
`
`PCM packet
`
`Lower bottom
`VIP sized to
`match the outer
`dimensions of
`the assembled
`sidewall VIPs
`
`
`
`
`
`11. A close up of the sticker affixed to the 98596 product is also shown
`
`above in paragraph 8, on the top right. It shows the 2-98596 part number for this
`
`product, identified it as a 985 Long Haul Shipping Unit, and showed it as having
`
`an expiration date in April of 2015. The expiration date is significant because
`
`NanoCool designated these products as having a 2-year shelf-life. This shelf-life is
`
`referenced in the Change Letters NanoCool sent to its customers in late 2010/early
`
`2011 to disclose the switch from using tape to strapping to hold the VIPs together.
`
`See, e.g., EX1032 at 2 (explaining that starting “sometime in January 2011, all of
`
`
`
`I took this photo of a more recent product and can attest that it accurately depicts
`
`the configuration of the bottom VIPs of the 98596 and similar products, including
`
`the one from the display table shown in the other photos.
`
`7
`
`PGR2021-00085
`Pelican EX1030 Page 8
`
`
`
`
`
`our systems will have a two year shelf life”); see also EX1033-1035 (same). Thus,
`
`the expiration date of this display-table 98596 product indicates that it was
`
`manufactured in April of 2013.
`
`12. The assembly process using straps also made use of a stiff plastic
`
`frame placed inside of the sidewall VIPs to hold them in place and resist against
`
`the inward forces applied during application of the strapping. First, the bottom and
`
`sidewall VIPs are placed roughly into position with the cardboard corrugate on
`
`their exteriors. Two of the sidewall VIPs are longer with freely extending ends,
`
`while the other two sidewall VIPs are sized to fit inside and abut up against the two
`
`longer VIPs. Next, a supporting frame sized to fit snugly within the interior cavity
`
`created by the sidewall VIPs, was placed towards the bottom of the interior cavity
`
`created by the VIPs while the first strap was applied around the exterior of the
`
`corrugate. Then, the frame was moved towards the opening of the sidewall VIP
`
`assembly for application of additional straps, including the strap near the top, as
`
`depicted in these photos as to the 98596 product:
`
`8
`
`PGR2021-00085
`Pelican EX1030 Page 9
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`
`
`
`
`
`
`Stiff supporting frame placed inside
`the VIPs to counter the inward forces
`exerted by the strapping process
`
`“Top” strap
`
`
`
`
`
`
`
`Longer VIP with
`freely projecting
`ends
`
`Shorter VIP with
`ends abutting
`adjacent VIPs
`
`Stiff supporting
`frame positioned
`towards outer
`opening to hold
`against inward
`compression
`forces from the
`strapping near
`the opening
`
`
`
`“Top” strap
`nearest the
`opening
`
`
`
`13. The VIPs of the NanoCool products are encased in a white film to
`
`facilitate the vacuum sealing of the panels. There is excess white film at opposite
`
`ends of each panel that forms a flap or strip of film material running lengthwise
`
`down that edge of the VIP. The flap or strip of material running down the edge are
`
`9
`
`PGR2021-00085
`Pelican EX1030 Page 10
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`
`
`
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`folded over the end of the VIP towards the outside of the VIP assembly. For the
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`two VIPs that are sized to fit between two adjacent VIPs, the folded-over strip of
`
`material presses against the adjacent VIP abutting that end, as shown below:
`
`Excess white film strips
`folded over and pressing
`against adjacent VIPs
`when assembled
`
`
`14. Another NanoCool product, designated by product number 85361,
`
`also has the same design configuration as the 98596 product shown in the photos
`
`above and was made by the same process. Thus, the 98596 and 85361 products
`
`can be collectively referred to as “98596-type” products all having the same
`
`relevant design.
`
`b. NanoCool’s 98830 Products
`
`15. As I mentioned previously, NanoCool also made shippers having a
`
`top VIP resting on the sidewall VIPs instead of a cooling engine. One product
`
`with this design is the 98830 product, two photos of which taken by me are shown
`
`below:
`
`10
`
`PGR2021-00085
`Pelican EX1030 Page 11
`
`
`
`
`
`Sidewall VIPs placed to form box-shape
`assembly, then strapped together with
`cardboard corrugate protecting the VIPs
`
`Top VIP
`
`Outer box
`
`
`
`
`98830 Product
`
`
`
`
`16. Another difference from the 98596 product is that the 98830 product
`
`uses only a single bottom VIP (instead of two bottom VIPs sandwiching a PCM).
`
`In the 98830 product, the single bottom VIP dimensioned to be the same size as the
`
`outer periphery of the assembled sidewall VIPs, just like the bottom-most VIP of
`
`the 98596-type products. The sidewall and bottom VIPs (5 in total) of the 98830
`
`products are protected by cardboard corrugate and, using the same type of stiff
`
`supporting frame as described above,2 the VIPs are strapped together to form a
`
`
`
`2 The 98830 product has the same length and width dimensions as the 98596
`
`product, so the stiff supporting frame used is identical for both products. Products
`
`having different dimensions used an appropriately sized supporting frame that
`
`would be essentially identical to the one shown and described above in all other
`
`11
`
`PGR2021-00085
`Pelican EX1030 Page 12
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`
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`
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`stand-alone insert that can be covered with a top VIP and placed into an outer box
`
`for shipping. Here are two photos of the cardboard-protected and strapped-
`
`together VIPs from the 98830 product:
`
`Sidewall VIPs
`
`Bottom VIP
`
`
`
`
`
`
`98830 Product
`
`
`
`
`17. Other NanoCool products, designated by product number 85430 and
`
`98630, also have the same configuration as the 98830 product shown in the photos
`
`above and were made by the same process. Thus, the 98830, 85430, and 98630
`
`products can be collectively referred to as “98830-type” products all having the
`
`same relevant design.
`
`
`
`18.
`
`In signing this declaration, I recognize that the declaration will be
`
`filed as evidence in a contested case before the Patent Trial and Appeal Board of
`
`
`
`respects.
`
`12
`
`PGR2021-00085
`Pelican EX1030 Page 13
`
`
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`the United States Patent and Trademark Office. I also recognize that I may be
`
`subject to cross—examination in the case and that cross-examination will take place
`
`within the United States. If cross-examination is required of me, I will appear for
`
`cross-examination within the United States during the time allotted for cross-
`
`examination.
`
`19.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
`
`Dated:
`
`fig, 752/
`
`%Z M
`
`13
`
`PGR2021-00085
`
`Pelican EX1030 Page 14
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`PGR2021-00085
`Pelican EX1030 Page 14
`
`
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