UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DONGHEE AMERICA, INC. and DONGHEE ALABAMA, LLC,
`Petitioners
`
`v.
`
`PLASTIC OMNIUM ADVANCED INNOVATION AND RESEARCH,
`Patent Owner
`
`U.S. Patent 8,122,604
`Issue Date: February 28, 2012
`Title: Method for Fastening an Accessory to a Plastic Fuel Tank
`
`CASE: Unassigned
`
`Petition for Inter Partes Review of U.S. Patent 8,122,604
`
`

`

`Petition for Inter Partes Review of U.S. Patent 8,122,604
`
`EXHIBIT LIST
`
`Ex. 1001 U.S. Patent No. 8,122,604 (“the ’604 Patent”).
`
`Ex. 1002
`
`File History of U.S. Patent No. 8,122,604 (“File History”) [Excerpts].
`
`Ex. 1003 U.S. Patent No. 6,726,967 (“Vorenkamp”).
`
`Ex. 1004 U.S. Patent Pub. No. 2004/0129708 A1 (“Borchert”).
`
`Ex. 1005
`
`PCT Pub. No. WO 2006/008308 A1 (“Criel”).
`
`Ex. 1006
`
`European Patent Pub. No. EP 1110697 A2, a certified translation
`thereof (“Van Schaftingen”).
`
`Ex. 1007 Merriam Webster’s Collegiate Dictionary Tenth Edition (1996)
`[Excerpts].
`
`Ex. 1008 Declaration of Expert David Kazmer Ph.D. (“Kazmer”).
`
`Ex. 1009
`
`Plaintiff Plastic Omnium Advanced Innovation and Research’s Initial
`Claim Charts and Production of Concluded License Agreements for
`the Asserted Patents (“Infringement Contentions”) [Excerpts].
`(Confidential Non-Relevant Information Redacted)
`
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`

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`Table of Contents
`
`Page
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B) ............................ 1
`A.
`REAL PARTY IN INTEREST ............................................................ 1
`B.
`RELATED MATTERS ........................................................................ 2
`C. NOTICE OF COUNSEL AND SERVICE INFORMATION ............. 2
`III. REQUIREMENTS FOR INTER PARTES REVIEW ................................... 3
`A. GROUND FOR STANDING............................................................... 3
`B.
`IDENTIFICATION OF CHALLENGE ............................................... 3
`1.
`Challenged Claims ..................................................................... 3
`2.
`The Prior Art And Statutory Grounds. ....................................... 3
`3.
`Claim Construction .................................................................... 4
`4.
`Identification Of Elements In The Prior Art .............................. 5
`5.
`Supporting Evidence .................................................................. 5
`IV. OVERVIEW OF THE ’604 PATENT ........................................................... 5
`A.
`SUMMARY OF THE ’604 PATENT .................................................. 5
`B.
`SUMMARY OF THE FILE HISTORY .............................................. 7
`LEVEL OF ORDINARY SKILL IN THE ART ............................................ 8
`V.
`VI. PROPOSED CLAIM CONSTRUCTION ...................................................... 9
`1.
`“Accessory” ............................................................................... 9
`2.
`“Parison” .................................................................................. 10
`3.
`“Core” ...................................................................................... 10
`IDENTIFICATION OF THE REFERENCES AS PRIOR ART ................. 11
`VII.
`VIII. DETAILED EXPLANATION OF UNPATENTABILITY OF
`CLAIMS 1, 2, 4, 7 AND 8 OF THE ’604 PATENT .................................... 12
`A. GROUND 1: OBVIOUSNESS BY VORENKAMP IN VIEW
`OF VAN SCHAFTINGEN ................................................................ 12
`1.
`Claim 1 ..................................................................................... 13
`2.
`Claim 2 ..................................................................................... 21
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`Table of Contents
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`Page
`
`Claim 4 ..................................................................................... 23
`3.
`Claim 7 ..................................................................................... 24
`4.
`Claim 8 ..................................................................................... 25
`5.
`B. GROUND 2: ANTICIPATION BY BORCHERT ............................ 26
`1.
`Claim 1 ..................................................................................... 26
`2.
`Claim 2 ..................................................................................... 32
`3.
`Claim 4 ..................................................................................... 33
`4.
`Claim 7 ..................................................................................... 34
`C. GROUND 3: OBVIOUSNESS BY BORCHERT AND VAN
`SCHAFTINGEN ................................................................................ 35
`1.
`Claim 8 ..................................................................................... 35
`D. GROUND 4: ANTICIPATION BY CRIEL ..................................... 36
`1.
`Claim 1 ..................................................................................... 37
`2.
`Claim 2 ..................................................................................... 42
`3.
`Claim 7 ..................................................................................... 43
`4.
`Claim 8 ..................................................................................... 43
`GROUND 5: OBVIOUSNESS BY CRIEL AND BORCHERT ....... 44
`1.
`Claim 4 ..................................................................................... 44
`IX. CONCLUSION ............................................................................................. 46
`
`E.
`
`-iii-
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`

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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
`
`I.
`
`INTRODUCTION
`
`Petitioners Donghee America, Inc. and Donghee Alabama LLC (collectively,
`
`“Petitioners”) respectfully request inter partes review of claims 1, 2, 4, 7 and 8 of
`
`U.S. Patent No. 8,122,604 (“’604 Patent”, Ex. 1001). For the reasons set forth
`
`below, there is a reasonable likelihood that the challenged claims are unpatentable.
`
`The ’604 Patent claims methods and apparatus for attaching plastic
`
`accessories to fuel tanks. A fundamental truth in plastic manufacturing is that
`
`warm plastic shrinks when it cools. When premade (and already cooled)
`
`accessories are attached to just-molded and still warm fuel tanks, the resulting
`
`temperature change may cause stress or failure at the attachment point. The ’604
`
`Patent “solves” this problem by requiring that the accessories be attached in such a
`
`way that they can move relative to the tank wall (e.g., by use of a flexible material
`
`or a flexible structure). However, as demonstrated herein, the use of flexible
`
`attachment mechanisms to overcome such stresses and failures was well known,
`
`both in plastics technology generally and in fuel tanks specifically.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B)
`
`A.
`
`REAL PARTY IN INTEREST
`
`Petitioners, together with Kautex Textron GmbH & Co. KG, Donghee
`
`Industrial Co., Ltd., and DH Holdings Co., Ltd., are the real parties in interest.
`
`-1-
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`

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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
`
`B.
`
`RELATED MATTERS
`
`The ’604 Patent is asserted against Petitioners in a lawsuit brought by Patent
`
`Owner, Plastic Omnium Advanced Innovation and Research v. Donghee America,
`
`Inc. et al., C.A. No. 16-cv-00187-LPS-CJB (D. Del.). The Complaint was served
`
`on June 21, 2016. Other patents asserted in that litigation are U.S. Patent Nos.
`
`6,814,921; 6,866,812; 7,166,253; 8,163,228; 9,079,490; 9,399,326; and 9,399,327.
`
`On April 13, 2017, the PTO ordered ex parte reexamination of claims 1-4, 6-
`
`13, 15-17 of the ’604 Patent. The ex parte reexamination is currently pending as
`
`Application No. 90/013,922. In the ex parte reexamination, the Examiner found
`
`substantial new questions of patentability were raised by the same art and grounds
`
`relied on by Petitioners in this Petition for inter partes review. However,
`
`Petitioners are petitioning for inter partes review of only claims 1, 2, 4, 7 and 8,
`
`and are asserting fewer grounds than at issue in the ex parte reexamination.
`
`C.
`
`NOTICE OF COUNSEL AND SERVICE INFORMATION
`
`Petitioners consent to e-mail service at the address below.
`
`Backup Counsel
`Lead Counsel
`Bas de Blank
`Alyssa Caridis
`M2BPTABDocket@orrick.com
`a8cptabdocket@orrick.com
`Registration No. 74,930
`Registration No. 57,545
`ORRICK, HERRINGTON, & SUTCLIFFE LLP
`777 South Figueroa Street, Suite 3200
`Los Angeles, CA 90017
`Tel: 213-629-2020/Fax: 213-612-2499
`Customer No. 34313
`
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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`
`As set forth below, this Petition meets and complies with all requirements
`
`under 37 C.F.R. § 42.104 for inter partes review.
`
`A.
`
`GROUND FOR STANDING
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioners certify that the ’604 Patent is
`
`available for inter partes review and Petitioners are not barred or estopped from
`
`requesting inter partes review challenging the claims of the ’604 Patent on the
`
`grounds identified herein.
`
`B.
`
`IDENTIFICATION OF CHALLENGE
`
`Pursuant to 37 C.F.R. § 42.104(b), Petitioners request that the PTAB
`
`invalidate the challenged claims of the ’604 Patent.
`
`1.
`
`Challenged Claims
`
`Claims 1, 2, 4, 7 and 8 of the ’604 Patent are challenged in this Petition.
`
`2.
`
`The Prior Art And Statutory Grounds.
`
`The prior art references relied upon herein are: U.S. Patent No. 6,726,967
`
`(“Vorenkamp”, Ex. 1003); U.S. Patent Pub. No. 2004/0129708 A1 (“Borchert”, Ex.
`
`1004); PCT Pub. No. WO 2006/008308 A1 (“Criel”, Ex. 1005); and European
`
`Patent Pub. No. EP 1110697 A2 (“Van Schaftingen”, Ex. 1006).
`
`Below are the specific statutory grounds under 35 U.S.C. §§ 102, 103 (pre-
`
`AIA) on which the claims are challenged:
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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
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`Ground 1: Claims 1, 2, 4, 7, and 8 are rendered obvious under § 103 by
`
`Vorenkamp in view of Van Schaftingen.
`
`Ground 2: Claims 1, 2, 4, and 7 are anticipated under § 102 by Borchert.
`
`Ground 3: Claim 8 is rendered obvious under § 103 by Borchert in view of
`
`Van Schaftingen.
`
`Ground 4: Claims 1, 2, 7 and 8 are anticipated under § 102 by Criel, which
`
`expressly incorporates Van Schaftingen by reference.
`
`Ground 5: Claim 4 is rendered obvious under § 103 by Criel in view of
`
`Borchert.
`
`With regards to the grounds based on obviousness, Petitioners are not aware
`
`of any secondary considerations that would impact the obviousness of the claims.
`
`Claim Construction
`3.
`A claim subject to inter partes review shall be given by the Patent Office
`
`“its broadest reasonable construction in light of the specification of the patent in
`
`which it appears” to one of ordinary skill in the art. 37 C.F.R. §§ 42.100(b) and
`
`42.104(b)(3). Petitioners’ proposed constructions of certain terms in the
`
`challenged claims pursuant to this standard are provided in Section VI below.
`
`-4-
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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
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`4.
`
`Identification Of Elements In The Prior Art
`
`An explanation of how claims 1, 2, 4, 7 and 8 of the ’604 Patent are
`
`unpatentable, including an identification of where each element of the claims is
`
`found in the prior art, is provided in Section VIII below.
`
`5.
`
`Supporting Evidence
`
`Supporting evidence relied upon includes excerpts of the File History of
`
`the ’604 Patent (“File History”, Ex. 1002) and the Declaration of David Kazmer,
`
`Ph.D. (“Kazmer”, Ex. 1008).
`
`IV. OVERVIEW OF THE ’604 PATENT
`
`The ’604 Patent is titled “Method for Fastening an Accessory to a Plastic
`
`Fuel Tank.” The PCT application that matured into the ’604 Patent was filed on
`
`February 12, 2007, and the patent issued on February 28, 2012. The face of the
`
`patent lists Frederic Jannot, Bjorn Criel, Hugues Masse, Barbara Mabed, and
`
`Herve Lemoine as inventors, and states that the patent was assigned to Inergy
`
`Automotive Systems Research (S.A.). According to the assignment record filed
`
`with the PTO, Inergy Automotive Systems Research (S.A.) changed its name to
`
`Plastic Omnium Advanced Innovation and Research.
`
`A.
`
`SUMMARY OF THE ’604 PATENT
`
`The ’604 Patent purports to address a problem in the manufacturing of
`
`molded plastic fuel tanks. The wall of a molded plastic tank shrinks by
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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
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`approximately 3% as it cools whereas any accessories incorporated into the tank
`
`during molding undergo less shrinkage. Ex. 1001, ’604 Patent at 1:44-52. Stress
`
`caused by the differential shrinkage can cause the tank or the accessories to deform.
`
`Id. at 1:52-54. The ’604 Patent seeks to eliminate stress and deformation by
`
`fastening an accessory to the tank wall in a manner that allows the accessory to
`
`move relative to at least one of two or more points of attachment. Id. at 2:7-20.
`
`To accomplish this, the accessory includes a “fastening part,” which can be
`
`integral with the accessory or an additional part attached to the accessory. Id. at
`
`3:55-65. According to the patent, an accessory is “any functional object or device,”
`
`such as a baffle, reservoir, pump, or “a support for one or more such devices.” Id.
`
`at 3:7-17. The fastening part can be a tab that is able to deform due to its geometry
`
`and/or the flexibility of its material. Id. at 4:7-14. The fastening part may also be
`
`a rigid tab that is attached to a flexible portion of the accessory. Id. at 4:21-24.
`
`The specification of the ’604 Patent also discloses prior art methods and
`
`apparatuses for forming the tank and affixing parts to the tank. These admissions
`
`of prior art are relevant to the limitations of the challenged claims.
`
`For example, claim 1 requires “inserting a core into the parison during the
`
`blow-molding and fastening several accessories to the parison via the core.”
`
`The ’604 Patent admits that “cores” were known in the art and that they could be
`
`used for this purpose. Id. at 5:33-43.
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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
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`As another example, dependent claim 8 requires that “the parison is an
`
`extruded tubular parison, which is cut over an entire length along two diametrically
`
`opposed lines, so as to obtain two separate portions.” The ’604 Patent admits that
`
`this limitation is disclosed by Van Schaftingen. Id at 5:4-14.
`
`B.
`
`SUMMARY OF THE FILE HISTORY
`
`The PCT application which lead to the ’604 Patent was filed on February 12,
`
`2007 as PCT/EP2007/051326, and the application entered the National Stage on
`
`August 6, 2008 as U.S. Patent Appl. No. 12/278,525.
`
`On December 23, 2010, the Examiner rejected all of the original claims as
`
`indefinite under 35 U.S.C. § 112 ¶ 2. See Ex. 1002, File History at 1-6. In
`
`response, the Applicant filed an Amendment on April 19, 2011 amending the
`
`original claims and adding new claims. Id. at 7-15. On July 5, 2011, the Examiner
`
`rejected independent claims 1 and 11 and dependent claims 2-4, 6, 12-14, and 16
`
`as anticipated under 35 U.S.C. § 102 by U.S. Patent Pub. 2006/0102634 A1 to
`
`Potter. Id. at 16-21. The Examiner objected to dependent claims 5, 7-10, 15, and
`
`17-19 as claims that depend upon rejected base claims, but which would be
`
`allowable if rewritten in independent form with the limitations of their respective
`
`base claims and any intervening claims. Id. at 19.
`
`On October 5, 2011, the Applicant amended independent claim 1 by adding
`
`to it the limitation of dependent claim 10, which stated: “the molding of the fuel
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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
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`tank includes blow-molding by blowing a parison, the method further comprising
`
`inserting a core into the parison during the blow molding and fastening several
`
`accessories to the parison via the core.” Ex. 1002, File History at 25-31.
`
`Applicant amended independent claim 11 (now independent claim 10) by adding
`
`the similar limitation of dependent claim 19. Id. at 27-28. Applicant also canceled
`
`claims 10 and 19. Id. at 27 and 29.
`
`Though the limitation of original claims 10 and 19 was known in the prior
`
`art, as admitted in the specification of the ’604 Patent (Ex. 1001, ’604 Patent at
`
`5:33-43) and explained above, the Examiner issued a Notice of Allowance on
`
`October 18, 2011 without further comment, and the patent issued on February 28,
`
`2012. See Ex. 1002, File History at 32.
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`A person of ordinary skill in the art (“POSITA”) at the time of the alleged
`
`invention of the ’604 Patent would have a degreed Mechanical or Plastics
`
`engineering with three years of experience directly related to plastics product
`
`design or molding. Ex. 1008, Kazmer ¶ 25. Alternatively, a non-degreed
`
`practitioner with ten years of experience directly related to plastics product design
`
`or molding could also be considered one of ordinary skill in the art. Id. ¶ 25.
`
`Petitioners’ expert, Dr. David Kazmer, was a POSITA at the time of the
`
`alleged invention, and is qualified to testify about what a POSITA would have
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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
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`understood at the relevant time. Id. ¶¶ 3-11 and 26. Today, Dr. Kazmer is a
`
`professor and Chair of the Department of Plastics Engineering at the University of
`
`Massachusetts Lowell, with more than twenty patents in the field. Id. ¶¶ 3 and 10.
`
`VI. PROPOSED CLAIM CONSTRUCTION
`
`Petitioner proposes construction of certain claim terms below pursuant to the
`
`broadest reasonable interpretation standard. The proposed claim constructions are
`
`offered to comply with 37 C.F.R. §§ 42.100(b) and 42.104(b)(3) and for the sole
`
`purpose of this Petition, and thus do not necessarily reflect appropriate claim
`
`constructions to be used in litigation where a different claim construction standard
`
`applies.
`
`1.
`
`“Accessory”
`
`Claim 1 recites an “accessory.” According to the specification of the ’604
`
`Patent:
`
`Within the context of the invention, the term
`“accessory” is understood to mean:
`any functional object or device which is
`generally associated with the fuel tank in its usual
`mode of use or operation and which cooperates
`with the latter in order to fulfil certain useful
`functions; or
`a support for one or more such devices.
`Non-limiting examples of such devices are: liquid
`pumps, level gauges, delivery tubes, reservoirs or baffles
`
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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
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`internal to the fuel tank, ventilation devices, electronic
`units and stiffening bars.
`
`Ex. 1001, ’604 Patent at 3:7-17. Accordingly, the broadest reasonable
`
`interpretation of “accessory” is “any functional object or device which is generally
`
`associated with the fuel tank in its usual mode of use or operation and which
`
`cooperates with the latter in order to fulfil certain useful functions, or a support for
`
`one or more such devices.” See also Ex., 1008, Kazmer ¶ 16.
`
`2.
`
`“Parison”
`
`Claim 1 recites a “parison.” The ’604 Patent explains that “[t]he moulding
`
`of fuel tanks generally starts with a parison.” Ex. 1001, ’604 Patent at 4:63.
`
`According to the patent, “[t]he term ‘parison’ is understood to mean [ ] a preform,
`
`generally extruded, which is intended to form the wall of the [fuel] tank after being
`
`moulded to the required shape and dimensions.” Id. at 4:63-67. Accordingly, the
`
`broadest reasonable interpretation of “parison” is “a preform, generally extruded,
`
`which is intended to form the wall of the fuel tank after being molded to the
`
`required shape and dimensions.” See also Ex. 1008, Kazmer ¶ 17.
`
`3.
`
`“Core”
`
`Claim 1 recites a “core,” which is inserted into the parison and used to fasten
`
`accessories to the parison. The patent states that the term “core” “mean[s] a part of
`
`appropriate size and shape for it to be able to be inserted between the mould
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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
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`impressions and in particular to be introduced into the parison during moulding.”
`
`Ex. 1001, ’604 Patent at 5:33-37. Accordingly, the broadest reasonable
`
`interpretation of “core” should be “a part of appropriate size and shape for it to be
`
`able to be inserted between the mold impressions and in particular to be introduced
`
`into the parison during molding.” See also Ex. 1008, Kazmer ¶ 18.
`
`VII.
`
`IDENTIFICATION OF THE REFERENCES AS PRIOR ART
`
`Borchert and Vorenkamp were not before the Examiner during the
`
`prosecution of the ’604 Patent. Criel and Van Schaftingen were before the
`
`Examiner, but the Examiner did not apply those references against the claims and
`
`there is no evidence that the Examiner considered the particular disclosures cited
`
`herein. Cf. Microsoft Corp. v. Parallel Networks Licensing LLC, IPR2015-00486
`
`(Decision entered July 15, 2015) at 15 (rejecting argument that petition, which
`
`included prior art before the examiner, should not be instituted). Moreover, the
`
`combinations of Van Schaftingen with either Borchert or Vorenkamp, and the
`
`combination of Criel and Borchert, were not before the Examiner.
`
`As explained below, each of the prior art references relied upon by
`
`Petitioners qualifies as prior art under 35 US.C. § 102(b) (pre-AIA):
`
`• Vorenkamp (Ex. 1003) issued on April 27, 2004, more than one year
`
`prior to the earliest U.S. priority date of the ’604 Patent.
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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
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`• Borchert (Ex. 1004) published on July 8, 2004, more than one year
`
`prior to the earliest U.S. priority date of the ’604 Patent.
`
`• Criel (Ex. 1005) published on January 26, 2006, more than one year
`
`prior to the earliest U.S. priority date of the ’604 Patent.
`
`• Van Schaftingen (Ex. 1006) published on June 27, 2001, more than
`
`one year prior to the earliest U.S. priority date of the ’604 Patent.
`
`VIII. DETAILED EXPLANATION OF UNPATENTABILITY OF CLAIMS
`1, 2, 4, 7 AND 8 OF THE ’604 PATENT
`
`A.
`
`GROUND 1: OBVIOUSNESS BY VORENKAMP IN VIEW OF
`VAN SCHAFTINGEN
`
`Vorenkamp in view of Van Schaftingen renders claims 1, 2, 4, 7, and 8 of
`
`the ’604 Patent obvious under 35 U.S.C. § 103.
`
`Vorenkamp is titled “Adapter for welding objects to plastic,” and addresses
`
`the specific application of fastening accessories to plastic fuel tanks. Like the ’604
`
`Patent, Vorenkamp is directed to the problem of “stresses [that] may develop at the
`
`interface between [an accessory] and the wall as the plastic fuel tank cools.” Ex.
`
`1003, Vorenkamp at 1:58-67. Like the ’604 Patent, Vorenkamp solves the
`
`problem by using an adapter (fastening part) that couples to an accessory, the
`
`adapter having two or more flexible feet. Id. at 2:33-35, 2:54-58. The flexible feet
`
`are welded to the tank while the tank is being molded. Id. at 2:46-50; see also
`
`4:13-20 (the tank can be made by blow molding); 8:58-61 (“adapter [ ] is placed
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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
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`inside the plastic fuel tank [ ] during manufacturing and welds to the surface of the
`
`interior wall” of the tank).
`
`The flexible feet of the adapter enable the adapter to “minimize[ ] stresses
`
`developed while the wall and the feet cool” and “minimize[ ] stresses created when
`
`swelling occurs in the presence of fuel.” Ex. 1003, Vorenkamp at 2:50-53; see
`
`also 2:54-58 (“[t]he feet are formed of flexible material to absorb stresses induced
`
`by independent shrinkage and swelling, as well as dynamic loading, of the plastic
`
`and/or the adaptor”). The adapter (fastening part) therefore allows for
`
`“independent movement of the plastic fuel tank [ ] and the fuel system component.”
`
`Id. at 4:47-49.
`
`1.
`
`Claim 1
`
`[1-preamble] A method for fastening an accessory to a
`plastic fuel tank, comprising:
`
`Vorenkamp specifically discloses that its adapter can be used for the
`
`attachment of fuel system components to a plastic fuel tank. Ex. 1003, Vorenkamp
`
`at 3:49-53. Figure 1 of Vorenkamp below shows a portion of the wall of the
`
`plastic fuel tank 12, the adapter 16, and fuel system component 14.
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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
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`Vorenkamp discloses that the components which may be attached to the tank
`
`via the adapter “include valves, hoses, pumps, cam-lock rings, structural
`
`enhancements and other fuel system related mechanisms and features.” Id. at 4:27-
`
`31. Each of these devices is an “accessory.”
`
`Further, under the broadest reasonable interpretation of “accessory” and the
`
`definition provided by the ’604 Patent, the adapter itself is an accessory because it
`
`is a support for a device(s) (valve, pump, etc.). Ex. 1001, ’604 Patent at 3:7-17.
`
`Thus, to the extent the preamble is determined to be limiting, Vorenkamp
`
`discloses this element. See also Ex. 1008, Kazmer ¶¶ 37-40.
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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
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`[1-a] fastening an accessory at at least two fastening points
`on a wall of the plastic fuel tank during the actual
`manufacture of the fuel tank by molding,
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`Vorenkamp’s “adapter includes a body, a coupling mechanism and at least
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`two feet,” which are fastened at at least two fastening points. Ex. 1003,
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`Vorenkamp at 2:33-34; 4:61-63 (“adapter 16 includes a body 30, a coupling
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`mechanism 32 and a plurality of feet 34”). Figure 1 of Vorenkamp depicts a weld
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`interface 50 between each foot of the adapter 16 and the interior wall 22 of the
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`plastic fuel tank. Id. at 7:19-26. Below, Figure 2 of Vorenkamp is annotated to
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`highlight in yellow four feet, which fasten the accessory to the wall at four
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`fastening points.
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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
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`The end of each foot has a “relatively flat” weld zone which is “weld[ed] to
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`the surface of the interior wall” of the tank “during manufacturing” of the tank.
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`Ex. 1003, Vorenkamp at 6:51-64; 8:54-64 (“In one embodiment, the adapter 16
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`may be advantageously applied during manufacture of a plastic fuel tank 12. In
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`this embodiment, the adapter 16 provides a surface mount for fuel system
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`components 14 on the interior wall 22 of the plastic fuel tank 12. The adapter 16 is
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`placed inside the plastic fuel tank 12 during manufacturing and welds to the
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`surface of the interior wall 22 without compromising the hydrocarbon barrier.”).
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`Vorenkamp states that the fuel tank can be made by molding processes, such as
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`“blow molding or twinsheet thermoforming.” Id. at 4:13-20.
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`Accordingly, Vorenkamp discloses limitation 1-a. See also Ex. 1008,
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`Kazmer ¶¶ 41-45.
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`[1-b] wherein the accessory is provided, at least at one of the
`at least two fastening points, with a fastening part in such a
`way that, although the accessory is fastened to the wall of
`the fuel tank, the accessory is moveable relative to the at
`least one of the at least two fastening points on the wall of
`the fuel tank, and
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`Vorenkamp’s adapter “provides a flexible mount to allow some independent
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`movement of the plastic fuel tank 12 and the fuel system component 14.” Ex.
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`1003, Vorenkamp at 4:47-49. This is achieved because, at each fastening point,
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`“feet 34 of the adapter 16 include sufficient flexibility to bend in response to the
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`lateral movement of the piece of plastic 52.” Id. at 8:14-16. Accordingly, as the
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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
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`fuel tank cools and shrinks, “the adapter 16 provides compensation for the stresses
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`that may otherwise be present at the weld interface 50” caused by “differential
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`shrinkage of the interior wall 22 and the feet 34.” Id. at 7:61-67. This is depicted
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`below in Figure 4 of Vorenkamp, which shows a hot tank on the left and a cool
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`tank on the right. The height of the accessory (the adapter and device mounted
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`thereon (not shown)) changes along axis 40, and thus the accessory is moveable
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`relative to at least one of the at least two fastening points on the wall of the fuel
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`tank.
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`The adapter can also absorb “by the flexible bending of the feet” stresses
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`caused by the “lateral movement of the fuel system component 14… or fuel within
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`the plastic fuel tank 12.” Id. at 8:24-36. “In any situation where forces in
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`directions non-parallel with the central axis 40 impart stresses on the adapter 16
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`and the piece of plastic 52 the feet 34 may absorb the stresses created.” Id. at 8:36-
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`40. This is illustrated in annotated Figure 1 below, which shows how the
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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
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`accessory (the adapter and device mounted thereon) would move relative to each
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`of the fastening points on the wall of the tank when a lateral force is applied to the
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`accessory.
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`Accordingly, Vorenkamp discloses limitation 1-b. See also Ex. 1008,
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`Kazmer ¶¶ 46-52.
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`[1-c] the molding of the fuel tank includes blow-molding by
`blowing a parison, the method further comprising inserting
`a core into the parison during the blow-molding and
`fastening several accessories to the parison via the core.
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`Vorenkamp states that the fuel tank in which the adapter is inserted can be
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`made by “blow molding.” Ex. 1003, Vorenkamp at 4:13-20. Vorenkamp explains
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`that, when the tank is manufactured by blow molding, “molten plastic is extruded
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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
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`as a hollow parison,” which is blown so that the parison takes the shape of the
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`mold. Id.
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`Vorenkamp does not expressly disclose inserting a core into the parison
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`during the blow-molding and fastening several accessories to the parison via the
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`core. However, this limitation is disclosed by Van Schaftingen. Van Schaftingen
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`relates to a method for making a blow molded vehicle fuel tank and fastening
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`accessories to the interior of the fuel tank during its manufacture. Ex. 1006, Van
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`Schaftingen ¶¶ 31-34.
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`Van Schaftingen states that it was well known in the art to insert accessories
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`into a parison subsequently blown to form a fuel tank. Ex. 1006, Van Schaftingen
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`¶ 3 (“The insertion of accessories into a preform [i.e., a parison] intended then to
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`be inflated to produce a hollow body is well known, and is found in numerous
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`industrial applications for manufacturing hollow bodies, in particular for tanks for
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`liquid and gas.”). And Van Schaftingen discloses numerous ways to accomplish
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`the insertion of accessories into a parison. For example, Van Schaftingen discloses
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`mounting “a plurality” of accessories on a preassembled structure and inserting the
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`preassembled structure with the accessories mounted thereon into the parison using
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`a robot arm. Id. ¶¶ 33 (“Preferably, the inserted accessory, especially when a
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`plurality thereof are inserted, whether identical or not, is supported by a
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`preassembled structure.”), 46 (describing in the illustrated embodiment “[a] robot
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`Petition for Inter Partes Review of U.S. Pat. No. 8,122,604
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`(not shown) then positions the structure (5) supporting the accessories to be
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`integrated into the tank”). As another example, Van Schaftingen discloses uses
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`“films, sheets, or plates” integral with the accessory to “enable the continuous
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`holding and positioning of the object or of the structure [i.e., accessories] during
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`closure of the mold” and the “precise positioning of the bulky objects or
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`preassembled structures inside the hollow body….” Id. ¶¶ 39, 41. Each of these
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`assemblies (robot arms, films, sheets, or plates) is a “core under the broadest
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`reasonable interpretation of that term and the definition of core provided by
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`the ’604 Patent at 5:32-37 (Ex. 1001).
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`It would have been obvious to a POSITA to combine the adapter of
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`Vorenkamp with the process disclosed in Van Schaftingen to make the claimed
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`invention. See Ex. 1008, Kazmer ¶ 59. Like Vorenkamp, Van Schaftingen is
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`directed to the same technical field of plastic fuel tanks, and specifically a process
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`for blow molding fuel tanks and fastening internal accessories during the
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`manufacture of the tanks. Ex. 1006, Van Schaftingen ¶¶ 31-34. Indeed, as with
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`Van Schaftingen’s preassembled structure, Vorenkamp’s adapter is a preassembled
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`structure that is capable of attaching multiple accessories to the inside of the tank
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`(in addition, Vorenkamp’s adapter is itself an accessory under the broadest
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`reasonable interpretation of that term and the definition provided by the ’604
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`Patent at 3:7-17 (Ex. 1001)). Ex. 1003, Vorenkamp at 2:43-46 (“the adapter