Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 43
`Entered: December 11, 2018
`
`
`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 IPR2017-01605
`Patent 7,166,253 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, CHRISTOPHER M. KAISER, and
`ROBERT L. KINDER, Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318; 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 43
`Entered: December 11, 2018
`
`
`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 IPR2017-01605
`Patent 7,166,253 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, CHRISTOPHER M. KAISER, and
`ROBERT L. KINDER, Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318; 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`IPR2017-01605
`Patent 7,166,253 B2
`
`INTRODUCTION
`
`A. Background
`Donghee America, Inc. and Donghee Alabama, LLC (collectively,
`“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes
`review of claims 1–3, 7, 11, 12, and 14 of U.S. Patent No. 7,166,253 B2
`(Ex. 1001, “the ’253 patent”). Plastic Omnium Advanced Innovation and
`Research (“Patent Owner”) did not file a Preliminary Response. On
`December 14, 2017, we instituted trial on all claims and grounds in the
`Petition. Paper 7 (“Inst. Dec.”).
`During the trial, Patent Owner filed a Response (Paper 12, “PO
`Resp.”), Petitioner filed a Reply (Paper 23), Patent Owner filed Observations
`on Cross-Examination (Paper 36), and Petitioner filed Responses to those
`Observations (Paper 39). In addition, Patent Owner filed a Contingent
`Motion to Amend proposing three new claims as replacements for
`claims 1–3 if those claims were proven unpatentable. Paper 14 (“Mot.
`Amend”). Petitioner opposed the Motion to Amend (Paper 22, “Opp. Mot.
`Amend”), Patent Owner filed a Reply (Paper 29, “Reply Mot. Amend”), and
`Petitioner filed a Sur-Reply (Paper 34). Finally, Patent Owner filed a
`motion to strike Exhibit 1014, which Petitioner opposed. Paper 38;
`Paper 41. We held a hearing, the transcript of which has been entered into
`the record. Paper 42 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6, and we issue this Final
`Written Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. We
`conclude that Petitioner has established by a preponderance of the evidence
`that each of claims 1–3, 7, 11, 12, and 14 of the ’253 patent is unpatentable.
`We also conclude that Patent Owner did not satisfy the statutory
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`Patent 7,166,253 B2
`requirements for its Motion to Amend, so we deny the motion. Finally, we
`dismiss Patent Owner’s Motion to Strike as moot.
`
`B. Related Matters
`The parties note that the ’253 patent is asserted in Plastic Omnium
`Advanced Innovation and Research v. Donghee America, Inc. et al., C.A.
`No. 16-cv-00187-LPS-CJB (D. Del.). Pet. 2; Paper 4, 1.
`
`C. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–3, 7, 11, 12, and 14 of the
`’253 patent are unpatentable based on the following grounds (Pet. 13–38):1
`Statutory
`Basis
`Challenged Claim(s)
`Ground
`§ 102
`§ 103
`§ 103
`§ 102
`§ 103
`
`Linden2
`Linden
`Linden and Hata3
`Keller4
`Keller and Hata
`
`1–3, 12, and 14
`14
`7 and 11
`1–3, 12, and 14
`7 and 11
`
`D. The ’253 Patent
`The ’253 patent, titled “Process for Manufacturing Hollow Plastic
`Bodies,” issued on January 23, 2007. Ex. 1001, at [45], [54]. “Hollow
`plastic bodies are used in a number of diverse and varied industries for many
`uses, especially as gas and liquid tanks.” Id. at 1:13–15. To meet “sealing
`
`
`1 Petitioner also relies on a declaration from Dr. David O. Kazmer.
`Ex. 1007.
`2 Linden et al., U.S. Patent No. 5,326,514, issued July 5, 1994 (Ex. 1003,
`“Linden”).
`3 Hata et al., European Patent Application Publication No. EP 0742096 A2,
`published Nov. 13, 1996 (Ex. 1004, “Hata”).
`4 Keller, U.S. Patent No. 6,138,857, issued Oct. 31, 2000 (Ex. 1005,
`“Keller”).
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`IPR2017-01605
`Patent 7,166,253 B2
`standards in relation to the environmental requirements with which [the
`tanks] must comply,” “[endeavors] have . . . been made to reduce as far as
`possible the losses arising from the various ducts and accessories associated
`with the hollow bodies.” Id. at 1:15–28. These efforts have included
`“incorporat[ing] certain accessories and ducts actually within the hollow
`bodies, thus eliminating any interface between them and the external
`atmosphere.” Id. at 1:28–31. The ’253 patent is intended “to provide a
`process which . . . allows bulky accessories to be easily and rapidly inserted
`into and positioned in a hollow body without any risk of producing
`undesirable irregularities in the walls of the hollow body obtained.” Id.
`at 1:56–61. One embodiment of the invention is illustrated in the only figure
`of the ’253 patent, reproduced below:
`
`
`
`4
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`Patent 7,166,253 B2
`The figure depicts “an extrusion blow-[molding] machine with
`continuous extrusion used for producing motor-vehicle fuel tanks.” Id.
`at 2:50–54. The circular die of extrusion head 2 produces tubular
`extrudate 1 “of circular cross section.” Id. at 5:37–42. As the tubular
`material leaves the extrusion head, it “is separated into two sheets” by two
`blades 3. Id. at 5:42–45. Blowing nozzle 6 and structure 5 “supporting the
`accessories to be incorporated into the tank” are positioned between the two
`sheets, and the sheets are positioned between two halves 7 “of an open
`[mold].” Id. at 5:46–53. The halves are “then closed around the
`combination of sheets and accessories, causing the two sheets to be welded
`together, while blowing air is injected under pressure,” causing the tank to
`be formed. Id. at 5:53–57.
`
`E. Illustrative Claim
`Claims 1–3, 7, 11, 12, and 14 of the ’253 patent are challenged.
`Claim 1 is independent and illustrative; it recites:
`1. A process for manufacturing a hollow body using a [mold],
`comprising the steps of:
`incorporating at least one of an accessory or a duct within the
`hollow body;
`after said step of incorporating, closing said [mold] in a way
`which eliminates any interface between said at least one of said
`accessory or said duct and an external atmosphere outside of the
`hollow body;
`wherein said at least one of said accessory or said duct is
`supported by a preassembled structure which comprises at least
`one device configured to anchor said preassembled structure to
`an internal wall of the hollow body.
`Id. at 6:2–14.
`
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`
`ANALYSIS
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
`(2016); see Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`Claim terms generally are given their ordinary and customary meaning, as
`would be understood by one of ordinary skill in the art in the context of the
`entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007).
`Petitioner proposes construing three terms: “hollow body,”
`“accessory,” and “duct.” Pet. 10–12.
`
`1. “Hollow Body”
`Petitioner argues that “hollow body” should be interpreted as “any
`article whose surface has at least one empty or concave part.” Id. at 11
`(citing Ex. 1001, 1:66–67; Ex. 1007 ¶ 15). Patent Owner agrees. PO
`Resp. 15. The ’253 patent states that “[t]he term ‘hollow body’ is
`understood to mean any article whose surface has at least one empty or
`concave part.” Ex. 1001, 1:66–67. Where 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).
`Here, the phrase “is understood to mean,” as used in the ’253 patent, signals
`that the inventor presents a clear, deliberate, and precise definition.
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`Patent 7,166,253 B2
`Accordingly, we interpret “hollow body” as having the definition given it in
`the ’253 patent, “any article whose surface has at least one empty or concave
`part.”
`
`2. “Accessory”
`Petitioner argues that “accessory” should be interpreted as “any object
`or device which is generally associated with the hollow body in its usual
`method of use or operation and which interacts with it in order to fulfil
`certain useful functions.” Pet. 11–12 (citing Ex. 1001, 4:5–8; Ex. 1007
`¶ 16). Patent Owner agrees. PO Resp. 15. As with “hollow body,”
`“accessory” also is defined in the ’253 patent, which states that “[t]he term
`‘accessory’ is understood to mean any object or device which is generally
`associated with the hollow body in its usual method of use or operation and
`which interacts with it in order to fulfil certain useful functions.” Ex. 1001,
`4:5–8. Accordingly, we interpret “accessory” as “any object or device
`which is generally associated with the hollow body in its usual method of
`use or operation and which interacts with it in order to fulfil certain useful
`functions.”
`
`3. “Incorporating”
`The parties disagree about the proper construction of “incorporating.”
`Patent Owner argues that “incorporating” means “attaching,” and Petitioner
`argues that “incorporating” means “inserting.” PO Resp. 15–20; Reply 2–9.
`In contrast to the claim terms discussed above, the parties do not direct us to
`any express definition of “incorporating” in the specification of the
`’253 patent. PO Resp. 15–20; Reply 2–9.
`Patent Owner directs us to several pieces of evidence that allegedly
`support construing “incorporating” to mean “attaching.” First, Patent Owner
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`Patent 7,166,253 B2
`argues that its proposed construction “is consistent with the dictionary
`definition of ‘incorporate,’ which means ‘[u]nited into one body; combined
`in one mass or substance.’” PO Resp. 17 (quoting Ex. 2002, 3 (alteration in
`original)). The dictionary definition to which Patent Owner refers us is the
`definition of the participial adjective “incorporate,” not the verb used in the
`challenged claims. Ex. 2002, 3 (“incorporate . . . ppl. a.”). This definition
`also is indicated as “[n]ow rare.” Id. Accordingly, it is unhelpful in
`determining the proper construction of the term “incorporating” in the
`challenged claims. The dictionary page Patent Owner filed as Exhibit 2002
`also defines the transitive verb “incorporate,” as “[t]o combine or unite into
`one body” and “[t]o put into or include in the body or substance of
`something else.” Id. Because one of these definitions is consistent with
`Patent Owner’s proposed construction and the other is consistent with
`Petitioner’s proposed construction, these definitions do not resolve the
`dispute on the correct meaning of the term.
`Patent Owner also argues that the use of the words “insert” and
`“incorporate” in the written description of the ’253 patent demonstrates that
`“incorporate” cannot be construed to mean “insert.” PO Resp. 17–18.
`Specifically, according to Patent Owner, because the ’253 patent in several
`places states that “the two parts of the cut parison are held apart at a
`sufficient distance from each other so that it is possible to insert between
`them, before moulding, an object intended to be incorporated inside the
`hollow body,” the words “insert” and “incorporate” must have different
`meanings. Id. at 17 (emphasis omitted) (quoting Ex. 1001, 3:39–48). We
`disagree. The cited language in the ’253 patent distinguishes inserting an
`object between the “parts of the cut parison” from incorporating that object
`
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`IPR2017-01605
`Patent 7,166,253 B2
`“inside the hollow body,” not merely “insert[ing]” from “incorporat[ing].”
`Ex. 1001, 3:39–43; see Ex. 1001, 3:65–67 (“it is desired to insert into the cut
`parison at least one accessory intended to be incorporated into the hollow
`body”), 4:1–4 (“it is desired to insert between the sheets at least one
`accessory intended to be incorporated into the hollow body”). To the extent
`these phrases must mean different things, that difference may be due to the
`fact that the insertion is into one thing (“the two parts of the cut parison,”
`“the cut parison,” or “between the sheets”) and the incorporation is into
`another (“the hollow body”). Thus, the language of the written description
`of the ’253 patent does not require that “insert” and “incorporate” have
`different meanings.
`Finally, Patent Owner directs us to the testimony of Professor Tim
`Osswald as support for its view that “incorporate” should mean “attach.”
`PO Resp. 16 (citing Ex. 2001 ¶¶ 40–42). In relevant part, this testimony
`states that, “[a]fter reading the specification of the ’253 patent, one of
`ordinary skill in the art would understand and interpret the word
`‘incorporating’ to mean ‘fastening’ or ‘attaching’ so that the accessory or
`duct becomes part of the hollow body.” Ex. 2001 ¶ 42. Professor Osswald
`does not cite any evidence in support of his testimony. “[C]onclusory,
`unsupported assertions by experts as to the definition of a claim term are not
`useful.” Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en
`banc). Accordingly, we give little weight to Professor Osswald’s statement
`regarding the proper construction of “incorporate.” See In re Am. Acad. of
`Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he [PTAB] is
`entitled to weigh the declarations and conclude that the lack of factual
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`corroboration warrants discounting the opinions expressed in the
`declarations . . . .” (citations omitted)).
`In contrast to Patent Owner, Petitioner directs us to evidence
`supporting its proposed construction of “incorporate” as “insert.” First,
`Petitioner argues that the language of the ’253 patent requires a construction
`of “incorporating” as encompassing “inserting” rather than as limited to
`“attaching.” Reply 2–4. Both parties argue that the “incorporating” recited
`in the challenged claims must occur before the mold closes to form the
`hollow body. PO Resp. 16; Reply 2–3. We agree. Ex. 1001, 6:2–14
`(“. . . after said step of incorporating, closing said mould . . .”). Thus, it is
`important to note the processes that the ’253 patent describes as occurring
`before, during, and after mold closure. Because “incorporating” must occur
`before mold closure, the process of “incorporating” may not be limited to
`any process that the patent describes as occurring during or after mold
`closure. Petitioner is correct that the ’253 patent describes a process in
`which a preassembled structure for supporting an accessory “may . . . be
`fastened by welding to the wall of the hollow body, upon closing the
`mould,” i.e., during, not before, mold closure. Ex. 1001, 4:23–30. Thus, the
`language of the ’253 patent does not support construing the term
`“incorporating” as limited to “attaching.”
`Petitioner also argues that both parties agreed in the related
`infringement suit in District Court that the proper construction of
`“incorporating” under the Phillips standard, used in that forum, was
`“inserting.” Reply 7–8 (citing Ex. 1010, at Ex. A, 4). Specifically, in that
`litigation, Patent Owner agreed that the correct construction of
`“incorporating at least one of an accessory or a duct within the hollow body”
`
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`IPR2017-01605
`Patent 7,166,253 B2
`was “inserting an accessory or duct into the hollow body.” Ex. 1010, at
`Ex. A, 4. Here, we apply the broadest-reasonable-interpretation standard.
`37 C.F.R. § 42.100(b) (2016). “The broadest reasonable interpretation of a
`claim term may be the same as or broader than the construction of a term
`under the Phillips standard. But it cannot be narrower.” Facebook, Inc. v.
`Pragmatus AV, LLC, 582 F. App’x 864, 869 (Fed. Cir. 2014) (non-
`precedential). Here, for the term “incorporating,” Patent Owner’s proposed
`broadest reasonable interpretation (“attaching”) is narrower than the Phillips
`construction Patent Owner has advanced (“inserting”). Thus, “attaching”
`cannot be the broadest reasonable interpretation of “incorporating.”
`Other than Patent Owner’s proposed “attaching” construction, the
`only construction the parties have proposed either in this case or in the
`related District Court case is Petitioner’s proposed “inserting” construction.
`PO Resp. 15–20 (discussing only “inserting” and “attaching” constructions);
`Reply 2–9 (Petitioner arguing in favor of “inserting”); Ex. 1010, at Ex. A, 4
`(both parties proposing “inserting”). The ’253 patent supports such a
`construction, because it describes at least some of its embodiments as
`involving only insertion of an object between the sheets that will form the
`hollow body before mold closure. Ex. 1001, 4:23–30.
`Accordingly, for the foregoing reasons, we adopt Petitioner’s
`proposed construction of “incorporating” as “inserting.”
`
`4. “Duct”
`Petitioner argues that “duct” should be interpreted as a “pipe, tube, or
`channel that conveys a substance.” Pet. 12; Reply 9–11. Unlike “hollow
`body” and “accessory,” the term “duct” is not defined expressly in the
`’253 patent. Petitioner’s proposed construction is the ordinary meaning of
`
`11
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`Patent 7,166,253 B2
`“duct.” Pet. 12 (citing Ex. 1006, 357 (dictionary definition of “duct” as “a
`pipe, tube, or channel that conveys a substance”)).
`Patent Owner argues that we should depart from the ordinary meaning
`of “duct” to interpret it as “a pipe or tube external to a fuel-tank accessory.”
`PO Resp. 20–22. Specifically, Patent Owner argues that the recitation in the
`challenged claims of “an accessory or a duct” “makes clear that an accessory
`is a separate component from a duct.” Id. at 20–21. This argument does not
`persuade us that a “duct” must always be external to an “accessory.” As
`Patent Owner notes, the ’253 patent gives “[n]on-limiting examples” of
`accessories, including “liquid pumps, pipettes, reservoirs or baffles internal
`to the hollow body, and ventilation devices [i.e. valves].” Id. (quoting
`Ex. 1001, 4:5–11) (alteration in original). We agree that “the claimed ‘duct’
`is something distinct from the above-noted accessories,” id. at 21, in that the
`function of a duct is to convey a substance from one place to another, which
`differs from the functions of the listed accessories. But the listing of
`exemplary accessories and the use of the alternative “or” in the challenged
`claims do not require that a duct be located outside any accessory that
`happens to be present.
`Patent Owner also argues that, “[i]n the context of fuel tanks, ducts
`are used to connect fuel-tank accessories to each other” and that another
`patent related to fuel tanks “defines the word ‘pipe’ in the context of fuel
`tanks” as “an elongated channel open at its end and of basically tubular
`section” that “is preferably used to convey something.” Id. at 21 (quoting
`Ex. 2003, 2:65–3:5; citing Ex. 2001 ¶¶ 49–50). We note that, except for
`claim 12, the challenged claims are not limited to fuel tanks, which makes
`this evidence of limited value. Ex. 1001, 6:2–55 (claiming a “process for
`
`12
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`Patent 7,166,253 B2
`manufacturing a hollow body”). Further, the definition of “pipe” in Exhibit
`2003 does not appear in the ’253 patent and is a definition of “pipe,” not a
`definition of “duct.” Ex. 2003, 2:65–3:5. Moreover, even if this evidence
`were considered to provide a definition for “duct” in the ’253 patent, the
`definition in question would be consistent with Petitioner’s—not Patent
`Owner’s—proposed construction. Compare Ex. 2003, 2:65–3:5 (defining
`“pipe” as “an elongated channel open at its end and of basically tubular
`section” that “is preferably used to convey something”), with Pet. 12
`(proposing to construe “duct” as a “pipe, tube, or channel that conveys a
`substance”), and PO Resp. 20 (proposing to construe “duct” as “a pipe or
`tube external to a fuel-tank accessory”). Thus, this evidence does not
`support adopting Patent Owner’s proposed construction of “duct.”
`Finally, Patent Owner directs us to the testimony of Professor
`Osswald as support for the position that “one of ordinary skill in the art
`would not consider an internal, sub-part of a functional accessory, such as a
`fuel line within a surge pot, to be the claimed ‘duct’” and that “[d]ucts and
`accessories are separate components.” PO Resp. 22 (citing Ex. 2001
`¶¶ 51–52). But Professor Osswald’s testimony merely states without
`support, and in precisely the same language as Patent Owner’s brief, that
`“one of ordinary skill in the art would not consider an internal, sub-part of a
`functional accessory, such as a fuel line within a surge pot, to be the claimed
`‘duct.’” Ex. 2001 ¶ 52. As discussed above, “conclusory, unsupported
`assertions by experts as to the definition of a claim term are not useful.”
`Phillips, 415 F.3d at 1318. Accordingly, we give little weight to Professor
`Osswald’s statement regarding the proper construction of “duct.” See Am.
`Acad. of Sci., 367 F.3d at 1368 (“[T]he [PTAB] is entitled to weigh the
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`declarations and conclude that the lack of factual corroboration warrants
`discounting the opinions expressed in the declarations . . . .” (citations
`omitted)).
`Thus, Patent Owner has not directed us to evidence of record
`sufficient to support the adoption of Patent Owner’s narrow construction of
`“duct” as limited to pipes or tubes “external to a fuel-tank accessory.”
`Because Petitioner’s proposed construction is consistent with the ordinary
`meaning of “duct,” we adopt it and construe “duct” as a “pipe, tube, or
`channel that conveys a substance.”
`
`5. “Preassembled Structure”
`The challenged claims each recite “wherein said at least one of said
`accessory or said duct is supported by a preassembled structure.” Ex. 1001,
`6:2–14. Patent Owner argues that we should construe “preassembled
`structure” as limited to “a set of multiple parts previously joined into a single
`arrangement that is capable of attachment to at least one accessory.” PO
`Resp. 22–23 (quoting Ex. 2004, 11–12). Petitioner disagrees, arguing that
`“preassembled structure” should be construed more broadly to cover any
`“premade structure,” even if it is not made up of multiple parts. Reply 11–
`13.
`
`In support of its proposed construction, Patent Owner directs us to
`evidence that Petitioner supported Patent Owner’s proposed construction in
`the related District Court proceeding and that the District Court adopted this
`construction. PO Resp. 22 (quoting Ex. 2004, 11–12).
`In support of its proposed construction, Petitioner directs us to
`evidence that Patent Owner supported Petitioner’s proposed construction in
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`the related District Court proceeding. Reply 13 (quoting Ex. 1012, 14; citing
`Ex. 1011, 15–16).
`We are not persuaded that either party necessarily should be bound to
`the claim construction it proposed in District Court in this case. We
`interpret claim terms as having their broadest reasonable interpretation, a
`different standard from that applied in District Court proceedings. 37 C.F.R.
`§ 42.100(b) (2016). Moreover, a rule binding one party to its statements in
`District Court necessarily would bind the other party to its own contradictory
`statements, bringing us no closer to resolving the disputed meaning of this
`term.
`
`It is worth noting that the District Court construed the term
`“preassembled structure” consistently with the construction proposed here
`by Patent Owner. Ex. 2004, 11–12. “There is no dispute that the [Patent
`Trial and Appeal Board] is not generally bound by a prior judicial
`construction of a claim term.” Power Integrations, Inc. v. Lee, 797 F.3d
`1318, 1326 (Fed. Cir. 2015) (citing In re Trans Tex. Holdings Corp., 498
`F.3d 1290, 1298 (Fed. Cir. 2007)). This “does not mean, however, that [the
`Board] has no obligation to acknowledge that interpretation or to assess
`whether it is consistent with the broadest reasonable construction of the
`term.” Id. On the issue of requiring multiple parts, the District Court
`reasoned that “the Court does not understand [preassembled] to merely mean
`‘premade.’” Ex. 2004, 11–12.
`We are not persuaded by the District Court’s reasoning, because the
`court may not have been presented with, and did not discuss, all of the claim
`construction arguments the parties have made here. Moreover, the limitation
`of “preassembled structure[s]” to those having multiple parts is inconsistent
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`with the description in the ’253 patent of an exemplary “preassembled
`structure” as “an arm provided with a tab for fastening to the wall of the
`hollow body.” Ex. 1001, 4:26–28. A single arm does not have multiple
`parts, and, although the arm and the tab might be separate pieces, there is no
`description that requires this to be the case, as opposed to an arm/tab
`combination that is forged, machined, or molded in a single operation. Id.
`Accordingly, we are unpersuaded that the record contains evidence
`sufficient to limit “preassembled structure[s]” to those made up of multiple
`parts. Moreover, to the extent that both a construction limiting a
`“preassembled structure” to something made of multiple pieces and a
`construction also allowing for a one-piece “preassembled structure” are
`reasonable, we are compelled to choose the broader of the two constructions.
`37 C.F.R. § 42.100(b) (2016). Here, the broader construction is the one that
`allows the “preassembled structure” to have either a single piece or multiple
`pieces.
`For the foregoing reasons, we adopt Petitioner’s proposed
`construction and interpret “preassembled structure” as “premade structure.”
`
`B. Asserted Anticipation by Linden
`Petitioner argues that Linden anticipates claims 1–3, 12, and 14.
`Pet. 13–23.
`
`1. Linden
`Linden relates to “a process for the production of hollow bodies from
`thermoplastic material by blow molding” in which “an additional body is
`disposed inside the hollow body by being carried on a holding means which
`is joined to the inside surface of the wall of the hollow body.” Ex. 1003,
`at [57]. The process of Linden is illustrated in Figure 1, reproduced below:
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`Figure 1 of Linden depicts “an apparatus for the production of hollow
`bodies” at the beginning of the production process. Id. at 5:65–67. The
`apparatus “comprises two blow molding mold halves 10a and 10b.” Id.
`at 6:23–24. Mandrel 14 “projects from below between the two [mold]
`halves” and “into the mold cavity 12 defined by the mold in the closed
`condition.” Id. at 6:24–27. Extrusion head 16 produces tubular preform 28,
`which extends between the mold halves outside mandrel 14. Id. at 7:8–11.
`During its extrusion, the tubular preform is “guided . . . over the holding
`means 24 with additional body 26.” Id. at 7:17–20. The mold halves are
`closed around the preform and the mandrel, and “a suitable blowing
`agent . . . is introduced under pressure” through the mandrel, causing the
`preform to expand to press “against the inside wall defining the mold
`cavity.” Id. at 7:27–55. The mandrel is then turned, causing the holding
`means to be displaced to bring enlarged foot portions of the holding means
`into contact with the inner wall of the expanded preform, welding the
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`holding means to the wall. Id. at 8:11–29. Linden teaches that this process
`can be used to produce “motor vehicle [fuel] tanks” containing “a surge cup
`or pot” as an “additional body.” Id. at 1:14–21.
`
`2. Analysis
`Petitioner argues that all limitations of claims 1–3, 12, and 14 are
`disclosed by Linden. Pet. 13–23. Patent Owner argues that, under its
`proposed construction of “incorporating,” Linden does not disclose
`“incorporating at least one of an accessory or a duct within the hollow body”
`before closing the mold, as required by each of the challenged claims. PO
`Resp. 23–24. Patent Owner also argues that, under its proposed construction
`of “duct,” Linden does not disclose “incorporating [a] duct within [the]
`hollow body,” as required by claim 14. Id. at 24–25. We are persuaded that
`Petitioner has shown by a preponderance of the evidence that Linden
`discloses all the limitations of claims 1–3, 12, and 14.
`
`a. Claim 1
`As Petitioner argues, claim 1 recites a preamble and three limitations:
`“[a] process for manufacturing a hollow body using a [mold],”
`“incorporating at least one of an accessory or a duct within the hollow
`body,” “after said step of incorporating, closing said [mold] in a way which
`eliminates any interface between said at least one of said accessory or said
`duct and an external atmosphere outside of the hollow body,” and “said at
`least one of said accessory or said duct is supported by a preassembled
`structure which comprises at least one device configured to anchor said
`preassembled structure to an internal wall of the hollow body.” Pet. 14–19
`(emphases omitted); see Ex. 1001, 6:2–14.
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`With respect to the preamble, Linden discloses “a process for the
`production of a hollow body of thermoplastic material by blow molding.”
`Ex. 1003, 3:33–35. Specifically, the “hollow body” of Linden may be a
`“motor vehicle tank[].” Id. at 1:14–20. Accordingly, Linden discloses a
`“process for manufacturing a hollow body using a [mold],” as required by
`claim 1.
`The next issue is whether Linden discloses “incorporating at least one
`of an accessory or a duct within the hollow body.” Linden teaches
`“introduc[ing]” “an additional body . . . into the preform” for incorporation
`into the finished hollow body. Id. at 3:68–4:1. This “additional body” may
`be “a surge cup or pot” that contains “the intake opening for the fuel line
`leading to the fuel pump.” Id. at 1:60–2:5. The surge cup of Linden is an
`“object or device which is generally associated with the [fuel tank of
`Linden] in its usual method of use or operation and which interacts with it in
`order to fulfil certain useful functions,” such as supplying fuel to a fuel
`pump. Id. (“a surge cup or pot provided in the interior of a . . . fuel tank and
`intended to ensure that fuel is retained in the region of the intake opening
`leading to the fuel pump, thereby to ensure that fuel is always available to
`the pump”). Accordingly, Linden’s surge cup falls within our construction
`of “accessory.”
`Moreover, Linden teaches “introduc[ing]” the surge cup “into the
`preform which has at least one opening for that purpose, to be applied to the
`inside surface of the wall of the expanded hollow body.” Id. at 3:62–4:3.
`Patent Owner argues that this teaching is insufficient to disclose attaching
`the surge cup to the wall of the hollow body before the mold closes. PO
`Resp. 23–24. We agree that Linden does not teach attaching its accessory to
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`the inside wall of the fuel tank before the mold closes around the preform.
`Instead, in Linden, the mold halves are closed around the preform and the
`mandrel, and “a suitable blowing agent . . . is introduced under pressure”
`through the mandrel, causing the preform to expand to press “against the
`inside wall defining the mold cavity,” and only then is the holding means for
`the accessory displaced to be brought into contact with the inner wall of the
`expanded preform, welding the holding means to the wall. Ex. 1003,
`7:27–55, 8:11–29, Figs. 1–3. But, as discussed above, we disagree with
`Patent Owner about the proper construction of “incorporating” in the
`challenged claims. Claim 1 requires only that an accessory or a duct be
`“incorporat[ed] . . . within the hollow body” before mold closure occurs, and
`we construe “incorporating” to mean “inserting,” without requiring
`“attaching.” Thus, it is unimportant that Linden fails to teach attaching the
`surge cup to the wall before mold closure. All that is required is that Linden
`disclose inserting the surge cup into the preform before mold closure, and
`Linden does disclose this. Id. at 3:62–4:3, 7:27–49, Figs. 1–3.
`The next question is whether Linden discloses “after said step of
`incorporating, closing [the mold] in a way which eliminates any interface
`between said at least one of said accessory or said duct and
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