Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 6
`Entered: December 14, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DONGHEE AMERICA, INC. AND DONGHEE ALABAMA, LLC,
`Petitioner,
`v.
`PLASTIC OMNIUM ADVANCED INNOVATION AND RESEARCH,
`Patent Owner.
`
`Case IPR2017-01602
`Patent 8,122,604 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, CHRISTOPHER M. KAISER, and
`ROBERT L. KINDER, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.108
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`Donghee America, Inc. and Donghee Alabama, LLC (collectively
`“Petitioner”) filed a petition (Paper 2, “Pet.”) to institute an inter partes
`review of claims 1, 2, 4, 7, and 8 of U.S. Patent No. 8,122,604 B2 (Ex. 1001,
`“the ’604 patent”). 35 U.S.C. § 311. Plastic Omnium Advanced Innovation
`
`
`Tel: 571-272-7822
`
`Paper 6
`Entered: December 14, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DONGHEE AMERICA, INC. AND DONGHEE ALABAMA, LLC,
`Petitioner,
`v.
`PLASTIC OMNIUM ADVANCED INNOVATION AND RESEARCH,
`Patent Owner.
`
`Case IPR2017-01602
`Patent 8,122,604 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, CHRISTOPHER M. KAISER, and
`ROBERT L. KINDER, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.108
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`Donghee America, Inc. and Donghee Alabama, LLC (collectively
`“Petitioner”) filed a petition (Paper 2, “Pet.”) to institute an inter partes
`review of claims 1, 2, 4, 7, and 8 of U.S. Patent No. 8,122,604 B2 (Ex. 1001,
`“the ’604 patent”). 35 U.S.C. § 311. Plastic Omnium Advanced Innovation
`
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`IPR2017-01602
`Patent 8,122,604 B2
`and Research (“Patent Owner”) did not file a Preliminary Response during
`the permitted timeframe. Institution of an inter partes review is authorized
`by statute when “the information presented in the petition filed under section
`311 and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
`37 C.F.R. § 42.108. Based on our review of the record, we conclude that
`Petitioner is reasonably likely to prevail with respect to at least one of the
`challenged claims.
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. §§ 102, 103 based on the following grounds (Pet. 12–46):
`
`References
`U.S. Patent No. 6,726,967 B2 (Ex. 1003,
`“Vorenkamp”) and European Patent Pub. No. EP
`1110697 A2, (Ex. 1006, “Van Schaftingen”)
`
`Basis
`§ 103
`
`Claim(s)
`1, 2, 4, 7, 8
`
`U.S. Patent Pub. No. 2004/0129708 A1 (Ex. 1004,
`“Borchert”)
`
`§ 102(b) 1, 2, 4, 7
`
`Borchert and Van Schaftingen
`
`PCT Pub. No. WO 2006/008308 A1 (Ex. 1005,
`“Criel”)
`
`Criel and Borchert
`
`§ 103
`
`8
`
`§ 102(b) 1, 2, 7, 8
`
`§ 103
`
`4
`
`For the reasons described below, we institute an inter partes review of
`all challenged claims on all asserted grounds of unpatentability.
`B. RELATED PROCEEDINGS
`The parties have identified as a related proceeding the co-pending
`district court proceeding of Plastic Omnium Advanced Innovation and
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`Research v. Donghee America, Inc. et al., Civil Action No. 16-cv-00187-
`LPS-CJB (D. Del.). Pet. 2; Paper 4, 1. Both parties also note that claims 1–
`4, 6–13, and 15–17 of the ’604 patent are pending in ex parte reexamination
`number 90/013,922. Pet. 2; Paper 4, 1.
`C. THE ’604 PATENT
`The ’604 patent is directed to “a method for fastening an accessory to
`a plastic fuel tank.” Ex. 1001, 1:18–19. More specifically, the Specification
`addresses problems encountered in blow molding plastic gas tanks having
`accessories molded in during manufacturing. Id. at 1:39–44. The wall of a
`molded plastic tank shrinks by approximately 3% as it cools whereas any
`accessories incorporated into the tank during molding undergo less
`shrinkage. Id. 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 alleged
`invention 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.
`For example, the accessory may include a “fastening part,” which can
`be integral with the accessory or an additional part attached to the accessory.
`Id. at 3:55–65. Fastening part 1 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. Fastening
`part 1 may also be a rigid tab that is attached to flexible portion 2′ of
`accessory 2. Id. at 4:21–24. For example:
`An accessory (2) that may be suitable within the context
`of the invention is also illustrated in FIG. 5. This accessory (2)
`is a support for a valve (4) and it comprises two flexible tabs (1),
`which are moulded as one piece with it and each is provided with
`an orifice (for snap-riveting, but also other types of riveting, etc.).
`Id. at 4:52–57.
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`Claim 1, which is the only independent claim among the challenged
`claims, recites:
`1. A method for fastening an accessory to a plastic fuel tank,
`comprising:
`[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, wherein
`[b] 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
`[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.
`Id. at 6:14–28 (with Petitioner’s enumerations for clarity added in brackets).
`II. ANALYSIS
`A. CLAIM INTERPRETATION
`“A claim in an unexpired patent that will not expire before a final
`written decision is issued shall be given its broadest reasonable construction
`in light of the specification of the patent in which it appears.” 37 C.F.R.
`§ 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2144–46 (2016) (affirming that USPTO has statutory authority to construe
`claims according to Rule 42.100(b)). When applying that standard, we
`interpret the claim language as it would be understood by one of ordinary
`skill in the art in light of the specification. In re Suitco Surface, Inc., 603
`F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we give claim terms their ordinary
`and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249,
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`1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the
`meaning that the term would have to a person of ordinary skill in the art in
`question.’”). Only terms which are in controversy need to be construed, and
`then only to the extent necessary to resolve the controversy. Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Petitioner notes and accepts for purposes of its analysis that the
`Specification expressly defines the following three terms: “accessory,”
`“parison,” and “core.” Pet. 9–11 (citing Ex. 1001, 3:7–17 (defining
`“accessory”), 4:63–67 (defining “parison”), 5:33–37 (defining “core”)).
`When an inventor defines specific terms used to describe an invention, we
`will give effect to those definitions, as long as they are set out “with
`reasonable clarity, deliberateness, and precision,” “so as to give one of
`ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30
`F.3d 1475, 1480 (Fed. Cir. 1994). Each of the cited express definitions in
`the Specification begins with the phrase, “is understood to mean.” Ex. 1001,
`3:7–17 (defining “accessory”), 4:63–67 (defining “parison”), 5:33–37
`(defining “core”). On the current record, we understand this introductory
`phrase to provide notice of a reasonably clear, deliberate, and precise
`definition of each claim term. For the purposes of this Decision, we
`interpret each claim term according to the definition set forth in the
`Specification.
`B. LEGAL STANDARDS OF ANTICIPATION AND OBVIOUSNESS
`Petitioner challenges the patentability of the challenged claims on the
`grounds that the claims are anticipated or obvious in light of one or more of
`the following references: Vorenkamp, Van Schaftingen, Borchert, and Criel.
`“A claim is anticipated only if each and every element as set forth in the
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`claim is found, either expressly or inherently described, in a single prior art
`reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631
`(Fed. Cir. 1987). The Supreme Court in KSR International Co. v. Teleflex
`Inc., 550 U.S. 398 (2007), reaffirmed the framework for determining
`obviousness as set forth in Graham v. John Deere Co., 383 U.S. 1 (1966).
`The KSR Court summarized the four factual inquiries set forth in Graham
`that we apply in determining whether a claim is reasonably likely to be
`unpatentable as obvious under 35 U.S.C. § 103(a) as follows:
`(1) determining the scope and content of the prior art, (2) ascertaining the
`differences between the prior art and the claims at issue, (3) resolving the
`level of ordinary skill in the pertinent art, and (4) considering objective
`evidence indicating obviousness or nonobviousness. KSR, 550 U.S. at 406.
`With these standards in mind, we address each challenge below.
`C. OVERVIEW OF THE ASSERTED PRIOR ART
`1. Vorenkamp
`Vorenkamp is titled “Adapter for welding objects to plastic,” and
`addresses the specific application of fastening accessories to plastic fuel
`tanks. 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, 1:58–67, 2:14–17, 2:22–27. Vorenkamp purports to solve
`the problem by mounting accessories to an adapter having two or more
`flexible feet that weld to the interior of a fuel tank. Id. at 2:33–35, 2:54–58.
`Vorenkamp’s adapter 16 is illustrated in Figures 1 and 2, reproduced below.
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`
`Figure 2 is a perspective view
`of adapter 16
`
`Figure 1 is a side view illustrating fuel
`system component 14 attached to fuel
`tank 12 via adapter 16
`Feet 34 are welded to tank 12 at weld interface 50 during the process
`of molding tank 12. Id. at 2:46–50, 4:13–20, 8:58–61. The flexibility of
`feet 34 “minimizes stresses developed while the wall and the feet cool” and
`“minimizes stresses created when swelling occurs in the presence of fuel.”
`Id. at 2:50–53; see also 2:54–58 (“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”). In this way, adapter 16
`allows for “independent movement of the plastic fuel tank 12 and the fuel
`system component.” Id. at 4:47–49. Vorenkamp states that the fuel tank can
`be made by molding processes, such as “blow molding or twinsheet
`thermoforming.” Id. at 4:13–20.
`2. Van Schaftingen
`Van Schaftingen is directed to methods of blow molding fuel tanks
`and incorporating accessories within the tank during the molding process.
`Ex. 1006 ¶¶ 1–2. Van Schaftingen states that it was well known in the art to
`insert accessories into a parison subsequently blown to form a fuel tank. Id.
`
`
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`¶ 3 (“The insertion of accessories into a preform [i.e., a parison] intended
`then to be inflated to produce a hollow body is well known, and is found in
`numerous industrial applications for manufacturing hollow bodies, in
`particular for tanks for liquid and gas.”). Van Schaftingen also describes
`mounting “a plurality” of accessories on a preassembled structure and
`inserting the preassembled structure with the accessories mounted thereon
`into the parison using a robot arm. Id. ¶ 33 (“Preferably, the inserted
`accessory, especially when a plurality thereof are inserted, whether identical
`or not, is supported by a preassembled structure.”), ¶ 46 (describing in the
`illustrated embodiment “[a] robot (not shown) then positions the
`structure (5) supporting the accessories to be integrated into the tank”). Van
`Schaftingen further describes using “films, sheets, or plates” integral with
`the accessory to “enable the continuous holding and positioning of the object
`or of the structure [i.e., accessories] during closure of the mold” and the
`“precise positioning of the bulky objects or preassembled structures inside
`the hollow body.” Id. ¶¶ 39, 41. Van Schaftingen’s blow molding process
`also incorporates a step of cutting the extruded parison into two sheets using
`cutting blades (3) arranged 180° from each other. Id. ¶ 45.
`3. Borchert
`Borchert is titled “Fuel Tank with a Carrier for Carrying Functional
`Components and Said Carrier.” Borchert is directed to the problem of
`“shrinkage stresses” that may “occur upon cooling of [a] fuel tank” that has
`an accessory attached to it. Ex. 1004 ¶ 12. Borchert purports to solve the
`problem by using a flexible component carrier onto which accessories can be
`pre-mounted and inserted into the tank together. Id. ¶ 15. The structure of
`the carrier allows for it to be “supported yieldingly in relation to the inside
`
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`wall surface of the tank body.” Id. ¶ 17. Borchert further describes that its
`carrier 1 can be used in plastic fuel tanks 2 that are blow molded, id. ¶ 37,
`and inserted into preform 16 during blow molding, id. ¶ 42. An exemplary
`embodiment of carrier 1, with various accessories 9, 26a, 26b, 26c,
`incorporated into fuel tank 2 is illustrated in the colorized version of
`Borchert’s Figure 8, reproduced below.
`
`
`
`Patent Owner’s colorized version of Borchert’s Figure 8 is a
`perspective view showing carrier 1 in phantom lines located
`within fuel tank 2.
`Carrier 1 (blue) includes pad-shaped support feet 18 that are welded to the
`inside surface of fuel tank 2 during the molding process. Id. ¶ 42. Valves
`26a, 26b, 26c are fitted to domed raised portions 5, see id., Figure 7
`(identifying portions 5), and sending unit 25 is also fitted to carrier 1, id.
`¶ 50.
`
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`4. Criel
`Criel is directed to a “method for fastening an accessory in a plastic
`fuel tank.” Ex. 1005, 1:1–2. Criel recognizes that stresses between a plastic
`fuel tank and an accessory can occur due to “shrinkage upon cooling.” Id.
`at 5:7–11. Criel describes that the accessory (or support for an accessory) is
`fastened in such a way so that it can move relative to the fastening points on
`the wall of the tank. Id. at 5:25–36. Criel describes that the accessory (or
`support for an accessory) is snap-riveted to the tank wall through multiple
`oblong shaped orifices arranged in the direction of the dimensional changes
`of the tank. Id. Criel further describes that its fastening method can be used
`in a blow molding process in which a “core” that is inserted between the
`mold halves affixes the accessories onto a wall of the tank, id. at 7:1–13, and
`the tank is made from a “split or at least two-part parison,” id. at 6:10–21.
`Criel schematically illustrates an exemplary accessory 4′′ with support 4′
`fastened to wall 1 of a fuel tank in its Figures 2 and 4, reproduced below.
`
`Figure 2 is a partial sectional
`view along line 2—2′ of Figure 4
`
`
`
`Figure 4 is a schematic plan view
`illustrating an accessory fastened to
`
`
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`the inner wall of a fuel tank with
`illustrating the mold for forming
`plastic rivets that are formed during
`rivets to attach an accessory to
`the molding process.
`the inner wall of a fuel tank.
`Criel refers to its plastic rivets as plateaus 8, which are plastic oblong
`structures formed by injecting plastic through orifices 5 during the molding
`process into the space defined by relief 9 in counterform 7. Id. at 9:12–29.
`Oblong plateaus 8 of Figure 4 may move relative to base 4′ along the three
`axes shown in the figure to reduce stresses caused by dimensional changes
`that occur when the plastic wall of the fuel tank shrinks during cooling or
`expands when it contacts fuel in the tank. Id. at 5:7–11, 5:25–28.
`D. CLAIMS 1, 2, 4, 7, AND 8:
`OBVIOUSNESS IN VIEW OF VORENKAMP AND VAN SCHAFTINGEN
`Petitioner contends that the combination of Vorenkamp and Van
`Schaftingen renders claims 1, 2, 4, 7, and 8 unpatentable as obvious.
`Pet. 12–25. Generally, Petitioner relies upon Vorenkamp as describing using
`its adapter 16 to perform the method of claim 1 of blow-molding a tank with
`two fastening points for an accessory such that at least one of the points
`permits the mounted accessory to move relative to the fastening point. Id.
`at 13–18 (citing Ex. 1003, 2:33–34, 3:49–53, 4:13–20, 4:47–49, 4:61–63,
`6:51–64, 7:19–26, 7:61–67, 8:14–16, 8:24–40, 8:54–64, Figures 2, 4).
`Recognizing that Vorenkamp does not expressly describe inserting a core
`into the parison during the blow-molding process, Petitioner relies on Van
`Schaftingen as describing this aspect of the claimed method. Id. at 19–21
`(citing Ex. 1006 ¶¶ 3, 31–34, 39, 41, 46). Petitioner also relies upon
`testimony from Donald O. Kazmer, Ph.D. to support its contentions that an
`ordinarily skilled artisan would have been motivated to combine teachings
`from Vorenkamp and Van Schaftingen to arrive at the method of claim 1. Id.
`
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`13–21 (citing Ex. 1008 ¶¶ 37–59). For example, Dr. Kazmer testifies that an
`ordinarily skilled artisan “would have been motivated to combine
`Vorenkamp with Van Schaftingen at least to be able to precisely position
`Vorenkamp’s adapter during the manufacturing process and also to use
`Voreknkamp’s adapter to mitigate stress in a fuel tank made by Van
`Schaftingen’s process.” Ex. 1008 ¶ 59. Petitioner similarly addresses the
`manner in which the combined teachings of Vorenkamp and Van Schaftingen
`render dependent claims 2, 4, 7, and 8, which depend ultimately from claim
`1, unpatentable as obvious. Pet. 21–25 (citing Ex. 1003, 2:66–3:5, 6:65–7:3,
`7:6–9, 7:19–45, Figure 1; Ex. 1006 ¶¶ 7, 8, 24, 25, 45; Ex. 1008 ¶¶ 60–72).
`Patent Owner does not respond to Petitioner’s contentions at this stage
`of the proceeding. Based on our review of the record and arguments
`currently before us, we determine that Petitioner has demonstrated a
`reasonable likelihood of establishing that the combination of Vorenkamp and
`Van Schaftingen renders claims 1, 2, 4, 7, and 8 unpatentable as obvious.
`Accordingly, we institute an inter partes review based on this challenge to
`claims 1, 2, 4, 7, and 8.
`E. CLAIMS 1, 2, 4, AND 7:
`ANTICIPATION BY BORCHERT
`Petitioner contends that Borchert anticipates claims 1, 2, 4, and 7.
`Pet. 26–34. Petitioner identifies the manner in which Borchert describes
`each step of the claimed methods and cites portions of Borchert to support
`its contentions. Id. (citing Ex. 1004 ¶¶ 15, 17, 24, 41, 42, 50, 51, Figures 4,
`8). Petitioner also supports its contentions with Dr. Kazmer’s testimony
`also. Id. (citing Ex. 1008 ¶¶ 73–96).
`Patent Owner does not respond to Petitioner’s contentions at this stage
`of the proceeding. Based on our review of the record and arguments
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`currently before us, we determine that Petitioner has demonstrated a
`reasonable likelihood of establishing that Borchert anticipates claims 1, 2, 4,
`and 7. Accordingly, we institute an inter partes review based on this
`challenge to claims 1, 2, 4, and 7.
`F. CLAIM 8:
`OBVIOUSNESS IN VIEW OF BORCHERT AND VAN SCHAFTINGEN
`Claim 8 depends from claim 1 and further recites: “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.”
`Ex. 1001, 6:50–53. Petitioner recognizes that Borchert does not describe the
`limitations introduced in claim 8, but relies upon Van Schaftingen as
`describing the use of the parison recited in claim 8. Pet. 35–36 (citing
`Ex. 1006 ¶¶ 27, 31–34). Dr. Kazmer testifies that an ordinarily skilled
`artisan would have been motivated to use Borchert’s carrier with Van
`Schaftingen to mitigate stress in fuel tanks made using Van Schaftingen’s
`process. Ex. 1008 ¶ 101. Dr. Kazmer also testifies that an ordinarily skilled
`artisan would have modified Borchert’s process to use Van Schaftingen’s
`split parison because Van Schaftingen expressly suggests using its split
`parison method with complex and bulky accessories such as the one
`illustrated in Borchert’s Figure 8. Ex. 1006 ¶ 100 (citing Ex. 1006 ¶ 27).
`Patent Owner does not respond to Petitioner’s contentions at this stage
`of the proceeding. Based on our review of the record and arguments
`currently before us, we determine that Petitioner has demonstrated a
`reasonable likelihood of establishing that the combination of Borchert and
`Van Schaftingen renders claim 8 unpatentable as obvious. Accordingly, we
`institute an inter partes review based on this challenge to claim 8.
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`G. CLAIMS 1, 2, 7, AND 8: ANTICIPATION BY CRIEL
`Petitioner contends that Criel anticipates claims 1, 2, 7, and 8.
`Pet. 36–44. Petitioner identifies the manner in which Criel describes each
`step of the claimed methods and cites portions of Criel to support its
`contentions. Id. (citing Ex. 1005, 1:1–2, 1:29–2:2, 2:28–3:7, 4:3–14, 4:20–
`32, 5:7–17, 5:25–28, 6:10–21, 7:1–13, 7:35–8:17, 9:12–15, 9:21–29, Figures
`4, 8). Petitioner also supports its contentions with Dr. Kazmer’s testimony
`also. Id. (citing Ex. 1008 ¶¶ 103–24).
`Patent Owner does not respond to Petitioner’s contentions at this stage
`of the proceeding. Based on our review of the record and arguments
`currently before us, we determine that Petitioner has demonstrated a
`reasonable likelihood of establishing that Criel anticipates claims 1, 2, 7, and
`8. Accordingly, we institute an inter partes review based on this challenge
`to claims 1, 2, 7, and 8.
`H. CLAIM 4: OBVIOUSNESS IN VIEW OF CRIEL AND BORCHERT
`Claim 4 depends from claim 2, which depends from claim 1. Claim 2
`recites: “The method according to claim 1, wherein the fastening part is a
`fastening tab molded as one part with the accessory or attached to the
`accessory.” Ex. 1001, 6:29–31. Claim 4 recites: “The method according to
`claim 2, wherein the fastening tab is rigid but attached to a flexible portion
`of the accessory.” Id. at 6:37–38 (claim 4).
`Petitioner contends that Criel describes all limitations of claim 2, but
`fails to describe the requirement in claim 4 that “the fastening tab is rigid but
`attached to a flexible portion of the accessory.” Pet. 44. For this
`requirement, Petitioner relies upon Borchert’s description of its
`“concentrically wavy” pad-shaped support feet 18 that absorb dynamic
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`stresses by providing “a bellows-like capacity for resilient movement.” Id.
`at 44–46 (citing Ex. 1004 ¶ 51). Dr. Kazmer testifies than an ordinarily
`skilled artisan would have been motivated to modify Criel accessory support
`to include Borchert’s flexible features to protect against “impact shock
`loadings” in addition to the dimensional changes that Criel’s arrangement
`already mitigates. Ex. 1008 ¶¶ 127–28.
`Patent Owner does not respond to Petitioner’s contentions at this stage
`of the proceeding. Based on our review of the record and arguments
`currently before us, we determine that Petitioner has demonstrated a
`reasonable likelihood of establishing that the combination of Criel and
`Borchert renders claim 4 unpatentable as obvious. Accordingly, we institute
`an inter partes review based on this challenge to claim 4.
`III. CONCLUSION
`For the reasons expressed above, we determine that Petitioner has
`demonstrated a reasonable likelihood of showing that the challenged claims
`are unpatentable on all alleged grounds of unpatentability. This Decision
`does not reflect a final determination on the patentability of any claim.
`IV. ORDER
`For the reasons given, it is:
`ORDERED that inter partes review is instituted of claims 1, 2, 4, 7,
`and 8 of the ’604 patent with respect to the following grounds of
`unpatentability:
`(1) the combination of Vorenkamp and Van Schaftingen renders
`claims 1, 2, 4, 7, and 8 unpatentable under 35 U.S.C. § 103;
`(2) Borchert anticipates claims 1, 2, 4, and 7 under 35 U.S.C.
`§ 102(b);
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`(3) the combination of Borchert and Van Schaftingen renders claim 8
`unpatentable under 35 U.S.C. § 103;
`(4) Criel anticipates claims 1, 2, 7, and 8 under 35 U.S.C. § 102(b);
`and
`(5) the combination of Criel and Borchert renders claim 4
`unpatentable under 35 U.S.C. § 103; and
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’604 patent is instituted commencing on the entry date
`of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4,
`notice is given of the institution of a trial.
`
`16
`
`
`
`IPR2017-01602
`Patent 8,122,604 B2
`PETITIONER:
`Alyssa Cardis
`Bas de Blank
`ORRICK, HERRINGTON, & SUTCLIFFE LLP
`a8cptabdocket@orrick.com
`M2BPTABDocket@orrick.com
`
`PATENT OWNER:
`Robert C. Mattson
`Vincent Shier
`Christopher Ricciuti
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`CPDocketMattson@oblon.com
`CPDocketShier@oblon.com
`CPDocketRicciuti@oblon.com
`
`17
`
`
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