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 AMY MARTINEZ
`
`
`
`
`
`
`
`
`PGR2021-00085
`Pelican EX1031 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 AMY MARTINEZ
`
`
`
`
`
`
`
`
`PGR2021-00085
`Pelican EX1031 Page 1
`
`
`
`
`
`
`
`
`
`I, Amy Martinez, do declare as follows:
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`I. Introduction
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`1.
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`I am over the age of eighteen (18) and otherwise competent to make
`
`this declaration.
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`2.
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`I hold the position of General Manager at Pelican NanoCool in
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`Albuquerque, New Mexico. I have worked for the company (previously known as
`
`NanoCool) since 2005, and have held the position of General Manager since 2008.
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`This position generally entails the overall management of NanoCool and oversight
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`of manufacturing, quality, product development, customer service, and all other
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`facets of the organization.
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`3.
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`All of the testimony provided in this declaration is based on my own
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`personal knowledge and recollection, from having worked for the company for
`
`over 15 years. I am not being compensated for any of the testimony provided
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`herein, aside from my normal salary from the company. I understand that my
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`declaration accompanies a petition for Post Grant Review involving the above-
`
`mentioned U.S. Patent.
`
`II. NanoCool Prior-art Products
`
`4.
`
`I am familiar with the thermal protection shippers made and sold by
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`NanoCool since 2010 and thereafter, and described in the Declaration of Mr. Andy
`
`Zumwalt (EX1030). Towards the end of 2010, NanoCool decided to change its
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`
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`1
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`PGR2021-00085
`Pelican EX1031 Page 2
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`
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`
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`manufacturing process to use plastic strapping instead of tape to hold the VIPs
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`together. Our products having this new configuration were tested and qualified,
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`and “Change Letters” were subsequently sent out to many of our customers to
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`explain the changes made to the products and provide the qualification test results.
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`5.
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`I have been able to locate some of the Change Letters in my files. For
`
`example, Exhibit 1032 shows a Change Letter that I sent out to one of our
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`customers, MSI Packaging, Inc., in December of 2010, regarding NanoCool’s 853
`
`shipping systems. In the letter, we explained that “[i]nstead of taping the panels
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`together as we currently do with the metalized VIP’s, the panels will be banded
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`together around the outside of the corrugate.” EX1032 at 1. We further explained
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`that this change would be effective as of around January 4, 2011, and that
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`thereafter, the shelf-life of the systems would be increased from 18 months to 2
`
`years. Id. at 1-2. A summary of our qualification test results for the 85361 shipper
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`was also provided. Id. at 2-3.
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`6.
`
`Exhibit 1033 shows another Change Letter dated January 6, 2011,
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`regarding NanoCool’s 985 products I sent to our customer, World Courier. This
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`Change Letter likewise detailed the same switch from taping to strapping the VIPs
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`together. EX1033 at 1. Exhibit 1035 is another similar Change Letter directed to
`
`our 986 products sent to a company called Cool Logistics in January of 2011.
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`7.
`
`Exhibit 1034 is another Change Letter sent to World Courier in
`
`
`
`2
`
`PGR2021-00085
`Pelican EX1031 Page 3
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`
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`
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`January of 2011 regarding our 854 products. This letter contained similar but
`
`slightly different wording, explaining that:
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`The current white VIP box is assembled and banded together
`with two bands around the perimeter of the assembled box….
`With the coming change we will assemble our 854 VIP boxes
`utilizing a corrugate sleeve which surrounds the VIP panels,
`with the bands placed on the outside of the corrugate.
`EX1034 at 1.
`
`8.
`
`These Change Letters were not designated as confidential by
`
`NanoCool, and NanoCool considered these changes to its products to be public
`
`information given that we began selling these products to the public thereafter, as
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`discussed below.
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`III. Offers to Sell and Sales of the NanoCool Prior-art Products
`
`9.
`
`NanoCool’s shipping products using strapping bands to hold the VIPs
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`together (i.e., the ones described in Mr. Zumwalt’s declaration) were offered for
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`sale and sold by NanoCool starting in late 2010/early 2011. As one example
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`specific to the 98596 product, I located Exhibit 1036, which is an offer to sell the
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`98596 product to a company called Aeras, dated January 11, 2013. Specifically,
`
`we provided a product description, our standard terms, and our pricing for the
`
`85396 and 98596 products as a function of quantity ordered. EX1036 at 2. Many
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`such offers were sent out to various customers and potential customers. See, e.g.,
`
`
`
`3
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`PGR2021-00085
`Pelican EX1031 Page 4
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`
`
`
`
`EX1037-EX1038.
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`10. NanoCool also made many sales of the products described in Mr.
`
`Zumwalt’s Declaration. For example, I was also able to locate numerous business
`
`records in the company’s files showing our sales of the 98596-type and 98830-type
`
`products. As General Manager, I am familiar with our business record files and
`
`how they are generated and kept. While there might be exceptions, the company’s
`
`typical practice is to keep a folder for each sale made of our shipper products.
`
`11. Absent some unusual circumstance, the file for a given sale will
`
`include: (1) a purchase order or other communication from the customer placing
`
`their order; (2) an “Acknowledgement” generated by NanoCool upon receiving the
`
`customer order, a copy of which was sent to the customer to confirm order details
`
`and acceptance of the order; (3) a “Sales Order” that sets in motion our internal
`
`manufacturing process to satisfy the order; (4) an “Invoice” that was generated
`
`once the order was complete and shipped to the customer; and (5) a shipping
`
`confirmation showing shipment to the customer. Depending on how the order was
`
`paid for, the file may also include a copy of the check or ACH transfer from the
`
`customer in payment of the invoice.
`
`12. These records were generated at or near the time of the customer
`
`orders by NanoCool employees as part of their normal business duties. These
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`employees carry out these steps with knowledge of the sales orders being placed,
`
`
`
`4
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`PGR2021-00085
`Pelican EX1031 Page 5
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`
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`
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`confirmed, and satisfied through the manufacture and shipping to the customer of
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`the products ordered. The records were made and kept in the regular course of
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`NanoCool’s business, and in a consistent manner according to our procedures.
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`13. For purposes of this declaration, I identified many sales of our 98596-
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`type and 98830-type shipper products prior to October of 2014. There are many
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`such records, and a sampling of them are set forth in the table below:
`
`
`
`Exhibit No.
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`
`
`Customer
`Aeras
`
`FedEx
`Services
`
`Order Date
`1/29/2013
`
`Ship Date Products Sold
`1/30/2013
`98596
`
`2/14/2013
`
`2/22/2013
`
`85361, 98596
`
`Healthpoint
`
`6/5/2013
`
`6/18/2013
`
`98630, 98830
`
`FedEx
`Services
`
`FedEx
`Services
`
`Smith &
`Nephew
`
`MSI
`Packaging
`
`6/19/2013
`
`6/21/2013
`
`85361, 98596
`
`10/23/2013
`
`11/7/2013
`
`85430, 98630,
`98830
`
`12/2/2013
`
`12/12/2013
`
`85430
`
`3/21/2014
`
`4/7/2014
`
`98601
`
`
`
`14. Regarding the entry shown in the first row of the table above, a
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`purchase order dated January 28, 2013 was received from customer Aeras,
`
`
`
`5
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`PGR2021-00085
`Pelican EX1031 Page 6
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`
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`
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`ordering 2 units of the NanoCool 98596 product. EX039 at 1. This purchase order
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`led to NanoCool generating an Acknowledgment of the order, and then a Sales
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`Order. Id. at 2-3. The products were manufactured by NanoCool and shipped to
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`the customer on January 30, 2013, and an Invoice was generated. Id. at 4-5. These
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`records show the sale of 2 units of the 98596 product in January of 2013, which at
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`that time comprised the strapped-together VIP configuration described above.
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`15. Another example in the table above shows the sale of 4 units each of
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`98630 and 98830 products to a company called Healthpoint. In this case, I believe
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`the order was placed via email to me on June 5, 2013. EX041 at 1. This led to the
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`generation of the Acknowledgement, Sales Order, and Invoice in due course (id. at
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`2-4). The documents show that the products were shipped to Healthpoint on June
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`18, 2013 (id. at 4-5), and a check dated July 23, 2013 was subsequently received
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`from Healthpoint (id. at 6). These business records show the sale of both the
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`98630 and 98830 products in July of 2013, which at that time comprised the
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`strapped-together VIP configuration described above.
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`16. The other records summarized in the table above follow along similar
`
`lines, and show sales of the identified types of products to the identified customers.
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`In each case, a purchase order was conveyed by the customer, we acknowledged
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`the purchase order, generated a sales order to initiate fulfillment of the order,
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`shipped the products to the customer, and generated an invoice for the customer.
`
`
`
`6
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`PGR2021-00085
`Pelican EX1031 Page 7
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`17.
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`The sales documented above involved the 98596-type and 98830-type
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`products having the features described in detail in Mr. Zumwalt’s declaration
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`(EX1030, 11117-16).
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`18.
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`In signing this declaration, I recognize that the declaration will be
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`filed as evidence in a contested case before the Patent Trial and Appeal Board of
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`the United States Patent and Trademark Office.
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`I also recognize that I may be
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`subject to cross-examination in the case and that cross-examination will take place
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`within the United States. If cross-examination is required of me, I will appear for
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`cross-examination within the United States during the time allotted for cross-
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`examination.
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`19.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true; and further that these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under Section 1001 of Title 18 of the United States
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`Code.
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`Dated:
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`5g g 24 Z 02/
`
`Amy Ma Inez
`
`4843-31 10-9610
`
`PGR2021-00085
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`Pelican EX1031 Page 8
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`PGR2021-00085
`Pelican EX1031 Page 8
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`
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