UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`EPL LIMITED,
`Petitioner
`
`v.
`
`COLGATE-PALMOLIVE COMPANY,
`Patent Owner
`
`___________________
`
` Case PGR2022-00001
`U.S. Patent No. 10,889,093 B2
`___________________
`
`DECLARATION OF STEPHEN MCCARTHY, PH.D., IN SUPPORT OF
`PETITION FOR POST-GRANT REVIEW OF U.S. PATENT NO. 10,889,093
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`EPL LIMITED EX1003
`U.S. Patent No. 10,889,093
`
`

`

`Case PGR2022-00001
`U.S. Patent No. 10,889,093
`
`IV.
`V.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`QUALIFICATIONS ........................................................................................ 3
`II.
`III. My Understanding of Legal Principles ............................................................ 5
`Patent Eligibility .................................................................................... 5
`Analogous Art ....................................................................................... 6
`Obviousness Law .................................................................................. 6
`Indefiniteness Law .............................................................................. 11
`Enablement Law .................................................................................. 11
`Pre- or Post-AIA eligibility of a patent or patent application ............. 12
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 13
`OVERVIEW OF THE ’093 PATENT .......................................................... 13
`Alleged Problem of Recycling Multilayer Plastics ............................. 20
`Overview of the ’093 Patent Claims ................................................... 20
`Summary of the ’093 Patent’s Prosecution History ............................ 22
`PGR Eligibility of the ’093 Patent ...................................................... 23
`Claim Construction ............................................................................. 23
`VI. OVERVIEW OF THE DECLARATION ..................................................... 24
`Citation of Prior Art ............................................................................ 24
`Morris ........................................................................................ 24
`1.
`2.
`Haley ......................................................................................... 25
`3.
`Borse ......................................................................................... 26
`Guo ............................................................................................ 27
`4.
`Grounds for the Challenge .................................................................. 27
`VII. GROUND 1: MORRIS RENDERS OBVIOUS CLAIMS 1–4 and 7–10. ... 27
`Morris renders obvious claim 1. .......................................................... 27
`Preamble: “A sheet comprising:” ............................................. 29
`1.
`2.
`[1.1] “a polymeric multi-layer structure comprising:” ............. 30
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`Case PGR2022-00001
`U.S. Patent No. 10,889,093
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`
`
`3.
`
`4.
`
`[1.1a] “a plurality of layers including an uppermost layer
`and a lowermost layer, each of the plurality of layers having
`a stress value” ............................................................................ 31
`[1.1b] “wherein the stress value of at least two of the
`plurality of layers are non-zero and different from one
`another” ..................................................................................... 33
`a)
`It would have been obvious that the multilayer
`material of Morris would have had two layers with
`non-zero, different stress values. .................................... 33
`Claiming a highly probable result of a well-known
`technique is not patentable. ............................................ 34
`Two layers with non-zero, different stress values is
`obvious as being part of a finite number of predictable
`solutions. ......................................................................... 37
`[1.1c] “wherein the multi-layer structure has a net stress
`value that is less than the greater stress value of the plurality
`of layers.” .................................................................................. 38
`B. Morris renders obvious claim 2. .......................................................... 39
`C. Morris renders obvious claim 3. .......................................................... 40
`D. Morris renders obvious claim 4. .......................................................... 40
`E. Morris renders obvious claim 7. .......................................................... 41
`F. Morris renders obvious claim 8. .......................................................... 42
`G. Morris renders obvious claim 9. .......................................................... 43
`H. Morris renders obvious claim 10. ........................................................ 44
`VIII. GROUND 2: MORRIS AND HALEY RENDERS OBVIOUS CLAIMS
`5-6. ................................................................................................................. 46
` Morris and Haley render obvious claim 5. .......................................... 46
`1.
`Element [5.1] ............................................................................. 49
`2.
`Element [5.2] ............................................................................. 50
`3.
`Element [5.3] ............................................................................. 51
` Morris and Haley render obvious claim 6. .......................................... 52
`
`b)
`
`c)
`
`5.
`
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`Case PGR2022-00001
`U.S. Patent No. 10,889,093
`
`4.
`
`5.
`
`b.
`
`
`IX. GROUND 3: HALEY, BORSE, AND GUO RENDER OBVIOUS
`CLAIMS 1–10. .............................................................................................. 54
`A. Haley, Borse, and Guo render obvious claim 1. ................................. 54
`1.
`Preamble: “A sheet comprising:” ............................................. 54
`2.
`[1.1] “a polymeric multi-layer structure comprising:” ............. 54
`3.
`[1.1a] “a plurality of layers including an uppermost layer
`and a lowermost layer, each of the plurality of layers having
`a stress value” ............................................................................ 55
`[1.1b] “wherein the stress value of at least two of the
`plurality of layers are non-zero and different from one
`another” ..................................................................................... 57
`a.
`A POSA would have been motivated to modify Haley
`in view of Borse, the combination of which renders
`element [1.1b] obvious. .................................................. 57
`A POSA would have further been motivated to apply
`the teachings of Guo to the combination of Haley and
`Borse. .............................................................................. 59
`[1.1c] “wherein the multi-layer structure has a net stress
`value that is less than the greater stress value of the plurality
`of layers” ................................................................................... 63
`Haley, Borse, and Guo render obvious claim 2. ................................. 64
`B.
`Haley, Borse, and Guo render obvious claim 3. ................................. 65
`C.
`D. Haley, Borse, and Guo render obvious claim 4. ................................. 66
`E.
`Haley, Borse, and Guo render obvious claim 5. ................................. 66
`1.
`Element [5.1] ............................................................................. 69
`2.
`Element [5.2] ............................................................................. 70
`3.
`Element [5.3] ............................................................................. 71
`Haley, Borse, and Guo render obvious claim 6. ................................. 72
`F.
`G. Haley, Borse, and Guo render obvious claim 7. ................................. 73
` Haley, Borse, and Guo render obvious claim 8. ................................. 74
`Haley, Borse, and Guo render obvious claim 9. ................................. 75
`Haley, Borse, and Guo render obvious claim 10. ............................... 76
`
`
`
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`Case PGR2022-00001
`U.S. Patent No. 10,889,093
`
`
`CLAIMS 1–10 ARE NOT ENABLED. ........................................................ 78
`X.
`XI. CLAIMS 1–10 DO NOT RECITE PATENTABLE SUBJECT MATTER. . 81
`A.
`The claims recite well-known structure in combination with certain
`material properties. .............................................................................. 81
`The claims are directed towards a natural law and meet step one. ..... 83
`B.
`The claims fail to add an inventive concept and thus meet step two. . 83
`C.
`XII. CONCLUSION .............................................................................................. 85
`
`
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`Case PGR2022-00001
`U.S. Patent No. 10,889,093
`
`I.
`
`INTRODUCTION
`I, Stephen McCarthy, declare as follows:
`
`1.
`
`I have been retained by Sterne, Kessler, Goldstein & Fox on behalf of
`
`EPL Limited (“EPL”) for a post grant review (“PGR”, number PGR2022-00001)
`
`to provide my expert opinions and expert knowledge. I understand that this
`
`proceeding involves U.S. Patent No. 10,889,093 (“the ’093 patent”) titled
`
`“Dimensionally Stable Recyclable Package,” and that the face of the ’093 patent
`
`indicates that it is currently assigned to Colgate-Palmolive Company (“Colgate”).
`
`2.
`
`The ’093 patent describes multilayer structures comprising plastic
`
`materials. I am familiar with the technology described in the ’093 patent as of its
`
`earliest possible priority date, May 6, 2019.
`
`3.
`
`I have been asked to provide my independent technical review,
`
`analysis, insights, and opinions regarding the ’093 patent and the references that
`
`form the basis for the grounds of unpatentability set forth in the petition for PGR of
`
`the ’093 patent.
`
`4.
`
`In preparing this declaration, I have reviewed and am familiar with all
`
`the documents cited herein. For reference, I include the following exhibit list
`
`detailing the exhibits I reference in this declaration.
`
`Exhibit No. Description
`1001
`U.S. Patent No. 10,899,093 B2 to Wang (“the ’093 Patent”)
`Prosecution File History of U.S. Patent No. 10,889,093 B2 (“’093
`1002
`File History”)
`
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`U.S. Patent No. 10,889,093
`
`1005
`
`1006
`1007
`
`1008
`
`1009
`1010
`1011
`
`1012
`
`Exhibit No. Description
`1004
`Curriculum Vitae of Stephen McCarthy, Ph.D.
`Barry A. Morris, The Science and Technology of Flexible
`Packaging: Multilayer Films from Resin and Process to End Use,
`Elsevier Inc., 2007 (“Morris”)
`U.S. Patent No. 8,709,611 B2 to Haley (“Haley”)
`International Patent Application Publication No. WO 2014/005214
`A1 to Borse (“Borse”)
`Guo, et al., “Predicting multilayer film’s residual stress from its
`monolayers,” Materials and Design 110 (2016) 858-864
`Multilayer Flexible Packaging, 2nd Ed., edited by John R. Wagner,
`Jr., Elsevier Inc., 2016 (“Wagner”)
`Declaration of Sylvia Hall-Ellis, Ph.D.
`High Density Polyethylene TIPELIN, MOL Group Product
`Catalogue, April 2018
`“SoarnoL,” Soarus L.L.C. website, captured by the Web Archive
`on January 6, 2019 (accessed October 8, 2021 at
`https://web.archive.org/web/20190106165900/https://soarus.com/pr
`oduct/soarnol-evoh/)
`Polyethylene Technical Guide Series, “01 General Properties –
`Technical Guide,” Qenos Pty Ltd.
`“HDPE Bottle Application Test, HDPE-A-01,” The Association of
`Postconsumer Plastic Recyclers
`U.S. Patent No. 3,655,503 to Stanley et al. (“Stanley”)
`“Newest APR Recycling Demand Champion Companies
`Announced at the 2019 Plastics Recycling Conference,” The
`Association of Plastic Recyclers Press Release, March 13, 2019
`U.S. Patent No. 7,802,685 B2 to Allen et al. (“Allen”)
`“The APR Design Guide for Plastics Recyclability,” The
`Association of Plastic Recyclers, October 26, 2018
`“Applications Guidance for Innovations ‘HDPE Bottles
`Applications Guidance Document,’” Association of Postconsumer
`Plastic Recyclers, May 13, 2019
`“SMARTFLEX -- The New Series of Packaging Film Extrusion
`Lines,” Bandera, YouTube video, June 10, 2012 (accessed October
`11, 2021 at https://www.youtube.com/watch?v=WdHTLiC5jUk)
`
`1013
`
`1014
`1015
`1016
`
`1017
`1018
`
`1019
`
`1020
`
`
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`Case PGR2022-00001
`U.S. Patent No. 10,889,093
`I have reviewed and am familiar with the ’093 patent and its file history. I confirm
`
`that to the best of my knowledge the accompanying exhibits are true and accurate
`
`copies of what they purport to be, and that an expert in the field would reasonably
`
`rely on them to formulate opinions such as those set forth in this declaration.
`
`5.
`
`I am being compensated at my customary rate of $465.00 per hour for
`
`my work on this case. My compensation is not dependent upon my opinions, my
`
`testimony, or the outcome of this case.
`
`II. QUALIFICATIONS
`6.
`I received a B.S. degree in Textile Chemistry from Southeastern
`
`Massachusetts University in 1978. I then studied Chemical Engineering at
`
`Princeton University, where I received my Master’s Degree in 1980. I continued
`
`on to study Macromolecular Science at Case Western Reserve University, where I
`
`received my Ph.D. in 1984.
`
`7.
`
`I have worked as a professor in the field of polymer science since
`
`graduating with my Ph.D. in 1984. I have held various positions at the University
`
`of Massachusetts Lowell, where I am currently an Emeritus Professor in the
`
`Department of Plastics Engineering and the Department of Biomedical
`
`Engineering. I have over 35 years of directly relevant academic experience in the
`
`field of polymers.
`
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`Case PGR2022-00001
`U.S. Patent No. 10,889,093
`8. My research focuses on polymer material design and manufacture, and
`
`I have had numerous publications that are relevant to multilayer polymer
`
`structures, a sampling of which are listed in my curriculum vitae. EX1004.
`
`Examples include (1) “Effect of Blends and Fillers on the Permeability of Linear
`
`Low Density Polyethylene”, (2) “Rheological and Mechanical Properties of
`
`Immiscible Blends of EVOH and Styrene-Based Polymers”, (3) “Interfacial
`
`Agents for Blends of Polystyrene and Ethylene-Vinyl Alcohol Copolymers”, (4)
`
`“Analysis of the Mechanical Properties of Biodegradable Films Made from Blends
`
`of Polylactic Acid (PLA) and Polyesters by Blown Film Extrusion”, (5) Advances
`
`in Properties and Biodegradability of Co-continuous, Immiscible, Biodegradable,
`
`Polymer Blends” Degradability, Renewability and Recycling – Key Functions for
`
`Future Materials, (6) “Analysis of Adhesive Properties of Different Engineering
`
`Thermoplastics to Elastomers by a Two-Shot Injection Molding Process” and (7)
`
`“Thermoplastic Paint (A.K.A. Film Finish, Paint Film, Dry Paint) A
`
`Complementary Technology for Exterior Automotive Plastic” .I have also
`
`supervised 34 Ph. D. Dissertations and 126 Masters Theses in the polymer field.
`
`EX1004.
`
`9.
`
`I also served as an editor for the Journal of Polymers and the
`
`Environment from 1991-2016, and I served on the Editorial Board of the Journal of
`
`Applied Polymer Science from 1995-2003. EX1004.
`
`
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`U.S. Patent No. 10,889,093
`I am an inventor on fifteen patents or patent applications that are all
`
`10.
`
`related to polymer science. EX1004. Some examples of relevant patents that I am
`
`an inventor on include U.S. Patent No. 6,670,028 (“Molded Article and Process for
`
`Preparing the Same”) and U.S. Patent No. 6,770,230 (“Surface Finishing
`
`Compression Molding with Multi-Layer Extrusion”).
`
`11. My curriculum vitae has further details on my education, experience,
`
`publications, and other qualifications. EX1004.
`
`III. MY UNDERSTANDING OF LEGAL PRINCIPLES
`
`Patent Eligibility
`12.
`I understand that utility patents like the ’093 patent must claim patent-
`
`eligible subject matter to be issued as a patent. I further understand that the general
`
`concepts that have been found not to be patent-eligible subject matter are natural
`
`laws, natural phenomena, and abstract ideas. I further understand that there is a
`
`two-step test for determine whether a claim is directed towards patent-ineligible
`
`subject matter. First, it is determined whether the claim recites an ineligible
`
`concept. If the answer to this step is yes, then it is determined if the claim as a
`
`whole recites an inventive concept that is significantly more than just the recited
`
`ineligible concept. Put otherwise, the remainder of the claim must recite some
`
`structures, steps, or processes that transform the ineligible concept recited in the
`
`claim into a patent-eligible invention.
`
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`Case PGR2022-00001
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` Analogous Art
`13.
`It is my understanding that a prerequisite to determining whether a
`
`combination of references renders a claimed invention obvious is determining the
`
`scope and content of the prior art and determining whether a given reference
`
`properly falls within that scope. Further, it is my understanding that a reference
`
`qualifies as prior art for an obviousness determination only when it is analogous to
`
`the claimed invention. It is my understanding that a reference is analogous art to
`
`the claimed invention only if: (1) the reference is from the same field of endeavor
`
`as the claimed invention; or (2) the reference is reasonably pertinent to the
`
`particular problem solved by the inventor. I understand that the field of endeavor
`
`of a patent is determined by looking to the patent itself—including the written
`
`description and claims, including the structure and function of the invention. I
`
`further understand that a reference is “reasonably pertinent” if it would logically
`
`commend itself to the inventor’s attention in considering the problem solved by the
`
`claimed invention.
`
` Obviousness Law
`14.
`I understand that my analysis requires an understanding of the scope of
`
`the ’093 patent claims and that the disclosures of the ’093 patent and the prior art
`
`are judged from the perspective of a person of ordinary skill in the art (“POSA”) at
`
`the time of the purported invention. For the purposes of this declaration, I have
`
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`Case PGR2022-00001
`U.S. Patent No. 10,889,093
`been instructed to consider the time of the purported invention of the ’093 patent to
`
`be May 16, 2019, the earliest alleged priority date for the ’093 patent even though
`
`that date is challenged in this proceeding. However, my opinions would not change
`
`even if all the relevant disclosures were judged from a later time period.
`
`15.
`
`I understand that during a post grant review, the claims of a patent are
`
`to be given their ordinary and customary meaning as understood by a person of
`
`ordinary skill in the art at the time of the alleged invention in light of the claims,
`
`the specification of the patent, the prosecution history, and other relevant extrinsic
`
`information.
`
`16.
`
`I understand that a patent claim is invalid if the claims would have
`
`been obvious to a person of ordinary skill in the art at the time of the purported
`
`invention. This means that even if all of the requirements of the claim cannot be
`
`found in a single prior art reference that would anticipate the claim, the claim can
`
`still be invalid.
`
`17.
`
`I understand that an obviousness analysis involves comparing a claim
`
`to the prior art to determine whether the claim would have been obvious to a
`
`person of ordinary skill in the art at the time of the purported invention in view of
`
`the prior art and in light of the general knowledge in the art as a whole. I also
`
`understand that obviousness is ultimately a legal conclusion based on underlying
`
`facts of four general types, all of which must be considered: (1) the scope and
`
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`Case PGR2022-00001
`U.S. Patent No. 10,889,093
`content of the prior art; (2) the level of ordinary skill in the art; (3) the differences
`
`between the claims and the prior art; and (4) any objective indicia of non-
`
`obviousness.
`
`18.
`
`I also understand that obviousness may be established by combining or
`
`modifying the teachings of the prior art. Specific teachings, suggestions, or
`
`motivations to combine any first prior art reference with a second prior art
`
`reference can be explicit or implicit, but they must have existed before the date of
`
`the purported invention. I understand that prior art references themselves may be
`
`one source of a specific teaching or suggestion to combine features of the prior art,
`
`but that such suggestions or motivations to combine art may come from the
`
`knowledge of a person of ordinary skill in the art. Specifically, a rationale to
`
`combine the teachings of references may include logic or common sense available
`
`to a person of ordinary skill in the art.
`
`19.
`
`I understand that a reference may be relied upon for all that it
`
`discloses, including uses beyond its primary purpose. I understand that though a
`
`reference may be said to teach away, when a person of ordinary skill, upon reading
`
`the reference, would be discouraged from following the path set out in the
`
`reference, the mere disclosure of alternative designs does not teach away.
`
`20.
`
`I further understand that whether there is a reasonable expectation of
`
`success for combining references in a particular way is also relevant to the
`
`
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`U.S. Patent No. 10,889,093
`analysis. I understand there may be a number of rationales that may support a
`
`conclusion of obviousness, including:
`
`• Combining prior art elements according to known methods to yield
`
`predictable results;
`
`•
`
`Substitution of one known element for another to obtain predictable
`
`results;
`
`• Use of a known technique to improve similar devices (methods, or
`
`products) in the same way;
`
`• Applying a known technique to a known device (method, or product)
`
`ready for improvement to yield predictable results;
`
`• Choosing from a finite number of identified, predictable solutions,
`
`with a reasonable expectation of success, or in other words, “obvious
`
`to try”;
`
`• Known work in one field of endeavor prompting variations of it for
`
`use in either the same field or a different one based on design
`
`incentives or other market forces, if the variations are predictable to
`
`one of ordinary skill in the art; and
`
`•
`
`Some teaching, suggestion, or motivation in the prior art that would
`
`have led one of ordinary skill to modify the prior art reference or to
`
`combine prior art teachings to arrive at the claimed invention.
`
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`Case PGR2022-00001
`U.S. Patent No. 10,889,093
`I understand that it is not proper to use hindsight to combine references
`
`21.
`
`or elements of references to reconstruct the invention using the claims as a guide. I
`
`understand that hindsight means the use of the current patent claims to guide the
`
`selection and combination of prior art references. My analysis of the prior art in
`
`this declaration is made from the perspective of a person of ordinary skill in the art
`
`at the time of the purported invention.
`
`22.
`
`I understand that so-called objective indicia may be relevant to the
`
`determination of whether a claim is obvious should the Patent Owner allege such
`
`evidence. Such objective indicia can include evidence of commercial success
`
`caused by an invention, evidence of a long-felt need that was solved by an
`
`invention, evidence that others copied an invention, or evidence that an invention
`
`achieved a surprising result. I understand that such evidence must have a nexus, or
`
`causal relationship to the elements of a claim, in order to be relevant to the
`
`obviousness or non-obviousness of the claim.
`
`23.
`
`I understand that for a reference to be used to show that a claim is
`
`obvious, the reference must be analogous art to the claims. I understand that a
`
`reference is analogous to the claims if the reference is from the same field of
`
`endeavor as the claims, even if it addresses a different problem, or if the reference
`
`is reasonably pertinent to the problem faced by the inventor, even if it is not in the
`
`same field of endeavor as the claims. I understand that a reference is reasonably
`
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`Case PGR2022-00001
`U.S. Patent No. 10,889,093
`pertinent if it would logically commend itself to the attention of the inventor at the
`
`time of invention based on the problem faced by the inventor as reflected in the
`
`specification, either explicitly or implicitly.
`
`
`24.
`
`Indefiniteness Law
`I understand that a claim is indefinite if it fails to inform, with
`
`reasonable certainty, those skilled in the art about the scope of the invention.
`
`Moreover, I also understand that claims must particularly and distinctly set out
`
`what is claimed so that the public has fair notice of the claimed invention. For
`
`example, if the language of a claim may be read and understood in more than one
`
`way by a POSA, then that claim is indefinite. I understand that the claim must be
`
`read in light of the disclosure of the application, the teachings of the prior art, and
`
`the knowledge of a POSA at the time of the invention of the claim. Further, I
`
`understand that each term in a claim must find clear support or antecedent basis in
`
`the specification.
`
`
`25.
`
`Enablement Law
`I understand that a claim must be enabled by the as-filed disclosure
`
`accompanying the claim. I have been informed that a claim is enabled if the as-
`
`filed disclosure accompanying the claim enables a POSA to practice the invention
`
`of the claim without undue or unreasonable experimentation. I understand that
`
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`Case PGR2022-00001
`U.S. Patent No. 10,889,093
`analyzing whether a disclosure enables a claim may include examination of many
`
`factors, including:
`
`• Breadth of the claims;
`
`• Nature of the invention;
`
`•
`
`State of the prior art;
`
`• Level of one of ordinary skill;
`
`• Level of predictability in the art;
`
`• Amount of direction provided by the inventor;
`
`• Existence of working examples; and
`
`• Quantity of experimentation needed to make or use the invention
`
`based on the content of the disclosure.
`
`
`26.
`
`Pre- or Post-AIA eligibility of a patent or patent application
`I understand that a patent or patent application can be classified as
`
`either pre- or post-America Invents Act (“AIA”). Effective March 16, 2013, all
`
`applications that included claims only supported by subject matter filed before
`
`March 16, 2013 are classified as pre-AIA applications and must be analyzed under
`
`the laws in effect before the AIA was enacted. All applications that currently
`
`include or, at any time during prosecution, included a claim only supported by
`
`subject matter filed on or after March 16, 2013 must be analyzed under the AIA
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`statute and are eligible for post grant review challenges.
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`Case PGR2022-00001
`U.S. Patent No. 10,889,093
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`27. A person of ordinary skill in the art (“POSA”) at the time of the
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`alleged invention would have had a Bachelor of Science degree in Chemical
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`Engineering, Material Science, or Mechanical Engineering (or equivalent), as well
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`as at least 2-4 years of academic or industry experience with multilayer polymer
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`material production or research. Less work experience may be compensated by a
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`higher level of relevant education, such as a Master of Science Degree, and vice
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`versa.
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`V. OVERVIEW OF THE ’093 PATENT
`28. The ’093 patent discloses methods and systems for manufacturing
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`multilayer structures made from various types of plastic materials. EX1001, 1:9-
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`22. These structures (called “sheets” in the ’093 patent) are commonly used as
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`flexible packaging for products like toothpaste. EX1001, 1:9-22, 1:35-43.
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`Examples of materials used in the layers of these sheets include High Density
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`Polyethylene (“HDPE”), Low Density Polyethylene (“LDPE”), and ethylene-vinyl-
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`alcohol (“EVOH”). EX1001, 14:31-34, 15:40-43, 16:46-48. These sheets can be
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`either formed as single, combined structure, or they can be formed by combining
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`multiple existing layers in a process called lamination. EX1008, 7-8. Forming the
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`sheets as a single structure with multiple layers can be accomplished, for example,
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`in two processes. In a blown film process molten material is extruded through a
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`Case PGR2022-00001
`U.S. Patent No. 10,889,093
`ring-shaped die that has air being blown through the center of the ring. Id.;
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`EX1001, 23:2-24:27; EX1005, 29-35. The molten material is blown into a
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`cylindrical film in a process somewhat analogous to blowing a continuous soap
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`bubble. Additional layers can be added to a blown film by adding additional dies
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`nested next to each other, with each die corresponding to a single layer. EX1001,
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`23:2-24:27; EX1005, 29-35. Figure 12 from the ’093 patent shows a nine-layer
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`blown film machine, with extruders 921-929 visible.
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`EX1001, FIG. 12.
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`Case PGR2022-00001
`U.S. Patent No. 10,889,093
`29. Another process that can form a single multi-layer structure is a
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`casting process. EX1001, 25:27-26:39; EX1005, 36-39; EX1008, 139-142. In this
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`process, the molten film material is extruded out of a die onto a series of cooling
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`rollers, as shown below.
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`EX1005, FIG. 2.15.
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`30. Multilayer sheets can also be formed by laminating together existing
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`plastic layers. EX1001, 26:1-21; EX1005, 42-45; EX1008, 142-145. Lamination
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`occurs by bonding together the existing layers into multilayer structure. EX1001,
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`26:1-21; EX1005, 42-45. This can be accomplished using adhesives, for example.
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`EX1001, 26:1-21; EX1005, 42-45. It is also possible to laminate multilayer
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`structures together to form a single, combined multilayer structures. For example,
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`Case PGR2022-00001
`U.S. Patent No. 10,889,093
`the ’093 patent teaches forming a first web 100 and a second web 200 that are each
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`themselves multilayer structures, and then laminating them together with an
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`intermediate adhesive sheet layer 300 to create the final multilayer structure.
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`EX1001, 26:21-30. A cross-section of one of the multilayer sheets discussed in the
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`’093 patent is shown below.
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`EX1001, FIG. 4.
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`31. While the ’093 patent describes in detail embodiments that are
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`laminations of multiple layers wherein the layers are themselves multilayer
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`structures made through blown film and cast film techniques, in my opinion it is
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`clear that alleged invention of the ’093 patent includes even a simple three layer
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`Case PGR2022-00001
`U.S. Patent No. 10,889,093
`sheet made using conventional blown and cast film techniques. See, e.g., EX1001,
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`28:3-13.
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`32. The ’093 patent states that flexible multilayer materials can exhibit
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`“poor dimensional stability.” EX1001, 1:15-22. The ’093 patent further explains
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`that flexible material that exhibits poor dimensional stability tends to curl onto
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`itself making it unsuitable as a packaging material. EX1001, 1:15-22. However,
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`this problem was well-known in the art long before the ’093 patent was filed. See,
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`e.g., EX1015, 3:50-54 (discussing the need to minimize curl in a patent filed in
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`1969). In my opinion, the ’093 patent does not identify any new facets or features
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`of this well-known issue. The ’093 patent explains that the polymeric material is
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`comprised of macromolecule chains. Within each layer of the multi-layer structure
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`that is formed from a polymeric material, the corresponding macromolecule chains
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`(i.e., polymer chains) may exhibit a specific molecular orientation. The ’093 patent
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`further explains that each layer of the multilayer sheet exhibits a particular
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`molecular orientation of the polymeric chains contained within the layer. EX1001,
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`5:14-6:46. Depending on the molecular orientation for a given layer, the
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`counterbalancing forces of the polymer chains within that given layer may not be
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`at equilibrium, thereby causing that layer to be in a state of internal stress. EX1001,
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`5:14-17. The internal stress of the given layer may manifest in the given layer
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`Case PGR2022-00001
`U.S. Patent No. 10,889,093
`deforming (e.g., curling) from a substantially flat state to a non-flat state even
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`when no external forces are applied to that given layer. EX1001, 5:18-28.
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`33.
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`It is important to reco