Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 34
`Entered: January 2, 2019
`
`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 IPR2017-01633
`Patent 6,866,812 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
`
`
`
`
`
`
`

`

`IPR2017-01633
`Patent 6,866,812 B2
`
`A. Background
`
`INTRODUCTION
`
`Donghee America, Inc. and Donghee Alabama, LLC (collectively,
`
`“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes
`
`review of claims 16, 24–27, 30–32, 38–41, 44, and 45 of U.S. Patent No.
`
`6,866,812 B2 (Ex. 1001, “the ’812 patent”). Plastic Omnium Advanced
`
`Innovation and Research (“Patent Owner”) did not file a Preliminary
`
`Response. On January 18, 2018, we instituted trial on all claims and
`
`grounds in the Petition. Paper 7 (“Inst. Dec.”). During the trial, Patent
`
`Owner filed a Response (Paper 11, “PO Resp.”), Petitioner filed a Reply
`
`(Paper 22), and Patent Owner filed a Sur-Reply (Paper 28). We held a
`
`hearing, the transcript of which has been entered into the record. Paper 33
`
`(“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 16, 24–27, 30–32, 38–41, 44, and 45 of the ’812 patent is
`
`unpatentable.
`
`B. Related Matters
`
`The parties note that the ’812 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 3, 1.
`
`2
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`

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`IPR2017-01633
`Patent 6,866,812 B2
`
`C. The Asserted Grounds of Unpatentability
`
`Petitioner contends that claims 16, 24–27, 30–32, 38–41, 44, and 45
`
`of the ’812 patent are unpatentable based on the following grounds
`
`(Pet. 14–48):1
`
`Statutory
`Challenged Claim(s)
`Basis
`Ground
`§ 103 Kasugai2 and Kagitani3
`32, 38–41, 44, and 45
`§ 103 Kasugai, Kagitani, and Hata4
`16, 24–27, 30, and 31
`§ 103 Hatakeyama5 and Kagitani
`32, 38–41, 44, and 45
`§ 103 Hatakeyama, Kagitani, and Hata 16, 24–27, 30, and 31
`
`D. The ’812 Patent
`
`The ’812 patent, titled “Process for Manufacturing Hollow Plastic
`
`Bodies,” issued on March 15, 2005. 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 1:6–8. To meet “sealing 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 within the
`
`hollow bodies.” Id. at 1:8–20. These efforts have included “incorporat[ing]
`
`
`1 Petitioner also relies on a declaration from Dr. David O. Kazmer.
`Ex. 1010.
`2 Kasugai, U.S. Patent No. 4,952,347, issued Aug. 28, 1990 (Ex. 1003,
`“Kasugai”).
`3 Kagitani et al., Japanese Patent Application Publication No. Hei 6-218792,
`published Aug. 9, 1994 (English translation and Japanese original both
`provided) (Ex. 1004, “Kagitani”).
`4 Hata et al., European Patent Application Publication No. EP 0742096 A2,
`published Nov. 13, 1996 (Ex. 1006, “Hata”).
`5 Hatakeyama et al., Japanese Patent Application Publication No. Sho 56-
`51333, published May 8, 1981 (English translation and Japanese original
`both provided) (Ex. 1005, “Hatakeyama”).
`
`3
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`IPR2017-01633
`Patent 6,866,812 B2
`
`certain accessories and ducts actually within the hollow bodies, thus
`
`eliminating any interface between them and the external atmosphere.” Id.
`
`at 1:20–23. The ’812 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 1:48–53. One embodiment of
`
`the invention is illustrated in the sole figure of the ’812 patent, reproduced
`
`below:
`
`The figure depicts “an extrusion blow-[molding] machine with
`
`continuous extrusion used for producing motor-vehicle fuel tanks.” Id.
`
`at 2:41–45. The circular die of extrusion head 2 produces tubular
`
`
`
`4
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`IPR2017-01633
`Patent 6,866,812 B2
`
`extrudate 1 “of circular cross section.” Id. at 5:23–27. As the tubular
`
`material leaves the extrusion head, it “is separated into two sheets” by two
`
`blades 3. Id. at 5:27–30. 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 5:31–37. 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 5:37–41.
`
`E. Illustrative Claims
`
`Claims 16, 24–27, 30–32, 38–41, 44, and 45 of the ’812 patent are
`
`challenged. Claims 16 and 32 are independent and illustrative; they recite:
`
`16. A process of manufacturing a hollow body, comprising the
`steps of:
`
`extruding a multilayered parison comprising stacked layers
`fastened to each other;
`
`cutting through said multilayered parison so as to form two
`portions separated by a cut; and
`
`molding said two portions so as to form said hollow body,
`
`wherein said step of cutting said multilayered parison
`comprises making at least two cuts in said multilayered
`parison so as to form two separate sheets.
`
`Ex. 1001, 6:27–37.
`
`32. A process of manufacturing a fuel tank, comprising the
`steps of:
`
`extruding a parison;
`
`cutting through said parison so as to form two portions
`separated by a cut; and
`
`molding said two portions so as to form said fuel tank,
`
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`IPR2017-01633
`Patent 6,866,812 B2
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`wherein said step of cutting said parison comprises making at
`least two cuts in said parison so as to form two separate
`sheets.
`
`Ex. 1001, 7:14–23.
`
`A. Claim Construction
`
`ANALYSIS
`
`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);6 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 two terms: “hollow body” and
`
`“parison.” Pet. 11–12. Patent Owner discusses these same two terms. PO
`
`Resp. 13–15.
`
`1. “Hollow Body”
`
`Petitioner argues that “hollow body” should be interpreted as “any
`
`article whose surface has at least one empty or concave part.” Pet. 12 (citing
`
`
`6 The Final Rule changing the claim construction standard to the standard
`that is used to construe a claim in a civil action under 35 U.S.C. § 282(b)
`does not apply here because the Petition was filed before the effective date
`of the Final Rule, November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,344 (Oct. 11,
`2018).
`
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`IPR2017-01633
`Patent 6,866,812 B2
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`Ex. 1001, 1:58–62; Ex. 1010 ¶ 19). Patent Owner agrees. PO Resp. 13.
`
`The ’812 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,
`
`1:58–59. 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 ’812 patent, signals that the inventor presents a clear,
`
`deliberate, and precise definition. Accordingly, we interpret “hollow body”
`
`as having the definition given it in the ’812 patent, “any article whose
`
`surface has at least one empty or concave part.”
`
`2. “Parison”
`
`The two challenged independent claims both recite a step involving
`
`“extruding” a “parison.” Ex. 1001, 6:27–37, 7:14–23. Petitioner argues that
`
`“parison” in these claims should be interpreted as “the product obtained by
`
`passing, through a die, a composition of at least one thermoplastic melt
`
`homogenized in an extruder whose head is terminated by the die.”
`
`Pet. 11–12 (citing Ex. 1001, 2:35–40; Ex. 1010 ¶ 18). Patent Owner does
`
`not propose a different construction but notes that Petitioner’s proposed
`
`construction “is inconsistent with its litigation definition” and is different
`
`from the construction adopted by the District Court in the related
`
`infringement suit. PO Resp. 14–15. In addition, Patent Owner argues that
`
`the term “parison” need not be construed because each combination of prior
`
`art asserted by Petitioner “depicts a parison.” Id. The ’812 patent defines
`
`“extruded parison” in the same way that it defines “hollow body,” using the
`
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`IPR2017-01633
`Patent 6,866,812 B2
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`phrase “is understood to mean.” Compare Ex. 1001, 2:35–38, with
`
`Ex. 1001, 1:58–59. Although we construe the term “parison” rather than the
`
`term “extruded parison,” we note that the parison used in the methods of the
`
`challenged claims is something that is extruded. Id. at 6:27–37, 7:14–23.
`
`Accordingly, we give effect to the definition in the ’812 patent, and we
`
`interpret “parison” as “the product obtained by passing, through a die, a
`
`composition of at least one thermoplastic melt homogenized in an extruder
`
`whose head is terminated by the die.” Ex. 1001, 2:35–38.
`
`B. Asserted Obviousness over Kasugai and Kagitani
`
`Petitioner argues that the subject matter of claims 32, 38–41, 44,
`
`and 45 would have been obvious to a person of ordinary skill in the art given
`
`the teachings of Kasugai and Kagitani. Pet. 14–31.
`
`1. Kasugai
`
`Kasugai “relates to a method of manufacturing a fuel tank for
`
`automobiles,” particularly from “synthetic resin formed by blow molding.”
`
`Ex. 1003, 1:7–10. In the method of Kasugai, “component parts are
`
`previously fixed to a holding plate of synthetic resin being used . . . as an
`
`insert to a blow molding mold,” allowing “the outside wall [to be] formed
`
`around the insert member by blow molding.” Id. at 2:17–25. The outer wall
`
`of Kasugai’s fuel tank “is formed by blow molding” a “cylindrical parison”
`
`that “is arranged around the insert member.” Id. at 4:59–5:1. In addition to
`
`this “cylindrical parison” embodiment, Kasugai also teaches that “the
`
`parison . . . may be composed of two sheets.” Id. at 5:42–45.
`
`2. Kagitani
`
`Kagitani “relates to a method and device for producing a plastic
`
`sheet.” Ex. 1004 ¶ 1. In Kagitani’s method, “a parison is lowered from an
`
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`IPR2017-01633
`Patent 6,866,812 B2
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`accumulator head as its thickness is adjusted, and the lowered parison is
`
`severed in a vertical direction by a severing blade and expanded by an
`
`expansion member,” which “turn[s] the parison into a sheet shape.” Id. ¶ 4.
`
`The die slit from which the parison of Kagitani is extruded is “annular.” Id.
`
`¶ 6. In addition, Kagitani teaches using “severing blades in two locations”
`
`to make the parison “into two sheets” to be “used in a blow molding
`
`method.” Id. ¶ 7.
`
`3. Analysis
`
`Petitioner argues that a person of ordinary skill in the art would have
`
`had reason to combine the teachings of Kasugai with the teachings of
`
`Kagitani and that those combined teachings teach or suggest every limitation
`
`of claims 32, 38–41, 44, and 45. Pet. 14–31. Patent Owner argues that a
`
`person of ordinary skill in the art would have had no reason to combine the
`
`teachings of Kasugai with those of Kagitani. PO Resp. 15–19. In addition,
`
`as discussed below, Patent Owner argues that the combination of Kasugai
`
`and Kagitani does not teach or suggest certain limitations of the dependent
`
`claims 38, 39, 41, 44, and 45. Id. at 19–24.
`
`a. Claim 32
`
`As Petitioner argues, Pet. 15–25, claim 32 recites a preamble and four
`
`limitations: “[a] process of manufacturing a fuel tank,” “extruding a
`
`parison,” “cutting through said parison so as to form two portions separated
`
`by a cut,” and “molding said two portions so as to form said fuel tank,”
`
`“wherein said step of cutting said parison comprises making at least two cuts
`
`in said parison so as to form two separate sheets.” Ex. 1001, 7:14–23.
`
`Petitioner argues that the combination of Kasugai and Kagitani
`
`teaches each of these limitations. Pet. 15–25. We agree.
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`Kasugai teaches “a method of manufacturing a fuel tank” from
`
`“synthetic resin formed by blow molding.” Ex. 1003, 1:7–10. Specifically,
`
`Kasugai teaches that a “cylindrical parison” is “extruded from . . . the
`
`molding machine” and that it is used to blow mold a fuel tank. Id.
`
`at 4:59– 5:10. In addition to this use of a “cylindrical parison,” Kasugai
`
`teaches using “two sheets” for blow molding a fuel tank. Id. at 5:42–45,
`
`Fig. 7. Although Kasugai does not explain how to make the two sheets that
`
`it teaches using to blow mold a fuel tank in its two-sheet embodiment,
`
`Kagitani teaches a method of making two sheets for use in blow molding.
`
`Ex. 1004 ¶ 7. Kagitani cuts an extruded cylindrical parison with “severing
`
`blades in two locations” and expands those severed portions “into a sheet
`
`shape.” Id. ¶¶ 6–7.
`
`Patent Owner does not dispute this evidence or argue that the
`
`combination of Kasugai and Kagitani fails to teach or suggest any limitation
`
`of claim 32.7 PO Resp. 15–19. Accordingly, on the present record, we are
`
`persuaded that Petitioner has shown by a preponderance of the evidence that
`
`the combination of Kasugai and Kagitani teaches every limitation of
`
`claim 32, including the scope of the claim as a whole.
`
`Petitioner argues that a person of ordinary skill in the art would have
`
`had a reason to combine the teachings of Kasugai and Kagitani. Pet. 20–23.
`
`Specifically, Petitioner argues that simultaneously producing the two sheets
`
`
`7 Patent Owner does argue that Kasugai fails to teach or suggest certain
`limitations and that Kagitani fails to teach or suggest other claim limitations.
`PO Resp. 15–19. But a claim is not nonobvious when there are deficiencies
`in individual prior-art references, only when there is a deficiency in the
`combination of those references. In re Keller, 642 F.2d 413, 425 (CCPA
`1981) (“The test for obviousness is not . . . that the claimed invention must
`be expressly suggested in any one . . . reference[].”).
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`necessary for Kasugai’s two-sheet process from a single extruded parison, as
`
`taught by Kagitani, would create a manufacturing advantage, and producing
`
`the sheets this way would also allow for the production of sheets of varying
`
`thickness, which would not be possible using other prior-art sheet
`
`manufacturing methods. Id.
`
`There is evidence to support Petitioner’s view. Petitioner directs us to
`
`evidence of record supporting a finding that a person of ordinary skill in the
`
`art would have sought to gain a manufacturing advantage by using
`
`Kagitani’s method to produce the two plastic sheets needed for Kasugai’s
`
`blow molding method from a single extruded cylindrical parison. Ex. 1010
`
`¶¶ 52–53. Moreover, Kagitani teaches that its method of producing plastic
`
`sheets is beneficial because it allows the thickness of the produced plastic
`
`sheets to vary, allowing the production of fuel tanks with walls of varying
`
`thickness. Ex. 1004 ¶¶ 3–4; Ex. 1010 ¶ 56. Thus, the evidence of record
`
`supports the conclusion that a person of ordinary skill in the art, seeking to
`
`carry out the two-sheet fuel tank formation process taught by Kasugai,
`
`would have had a reason to use the two-sheet manufacturing process of
`
`Kagitani to make the two plastic sheets necessary to carry out Kasugai’s
`
`process.
`
`Against this evidence, Patent Owner argues that a person of ordinary
`
`skill in the art would not have thought “that it could be beneficial (or even
`
`possible) to start with Kasugai’s [cylindrical] parison embodiment and then
`
`modify it to practice a two-sheet process” because the cylindrical parison
`
`embodiment “is the preferred way to practice Kasugai’s invention.” PO
`
`Resp. 16. We disagree. Petitioner does not argue that a person of ordinary
`
`skill in the art would “start with Kasugai’s [cylindrical] parison embodiment
`
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`and then modify it to practice a two-sheet process,” as Patent Owner argues.
`
`Instead, Petitioner relies on Kasugai’s disclosure of a separate embodiment
`
`that molds two flat sheets into a hollow body. Pet. 16 (“Kasugai also
`
`discloses other embodiments where the tank is formed by blow molding two
`
`sheets of plastic.”). Moreover, Kasugai depicts the cylindrical parison
`
`process and the two-sheet process as separate embodiments. Ex. 1003,
`
`4:55–5:41 (describing the cylindrical parison embodiment), 5:42–45
`
`(describing the two-sheet embodiment), Fig. 2 (depicting the cylindrical
`
`parison embodiment), Fig. 7 (depicting the two-sheet embodiment).
`
`Patent Owner also argues that Kasugai fails to explain how to seal the
`
`seam between its two sheets “in a manner that would prevent evaporative
`
`losses and maintain the structural integrity of the tank.” PO Resp. 16–17.
`
`According to Patent Owner, sealing this seam “would require undue
`
`experimentation.” Id. at 17 (citing Ex. 2001 ¶ 57). Patent Owner cites
`
`expert testimony that states, without further support, that sealing the seam of
`
`Kasugai’s two-sheet embodiment “would be highly problematic, if not
`
`technically/economically feasible.” Ex. 2001 ¶ 57. This unsupported
`
`testimony is conclusory, so it is unpersuasive. Exmark Mfg. Co. v. Briggs &
`
`Stratton Power Prods. Grp., LLC, 879 F.3d 1332, 1350 (Fed. Cir. 2018)
`
`(conclusory statements by expert in support of damages analysis cannot
`
`support a verdict); Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir.
`
`2005) (en banc) (conclusory statements by expert in support of claim
`
`construction may not be relied upon). Further, Kasugai is a patent that not
`
`only teaches but also claims its two-sheet embodiment. Ex. 1003, 10:13–17,
`
`12:9–13. As such, it “is presumptively enabling barring any showing to the
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`contrary by a . . . patentee.” In re Antor Media Corp., 689 F.3d 1282, 1288
`
`(Fed. Cir. 2012).
`
`Moreover, to the extent Kasugai lacks disclosure of how to seal the
`
`seam between its two sheets with an interposed plate, the ’812 patent also
`
`lacks this disclosure. Ex. 1001, 1:4–5:42. The description of sealing the
`
`seam between the two sheets in the ’812 patent merely states that “[t]he
`
`welding operation in the [mold] consists in pinching the periphery of the
`
`parison, at least partially, and in welding together, by hot fusion welding, the
`
`surfaces of the parison which have been pinched.” Id. at 3:1–4. The ’812
`
`patent discusses “films, sheets or plates” that support the accessories placed
`
`inside its fuel tank and states that those “films, sheets or plates” may be
`
`“extended to the outside of the perimeter of the [parison] sheets,” in which
`
`case they are “held between the pinching regions of the parison which are
`
`intended to be fastened together.” Id. at 4:52–64. This is quite similar to
`
`Kasugai’s disclosure of “holding plate 6” that “is grasped by the parison 28
`
`and pressed [so that] the melting bonding strength becomes good.”
`
`Ex. 1003, 4:66–5:1. Thus, the level of detail in the disclosure of Kasugai is
`
`similar to that of the specification of the ’812 patent. That is, Patent Owner
`
`did not provide in its own specification “the type of detail [it] now argues is
`
`necessary in prior art references,” which permits a “finding that one skilled
`
`in the art would have known how to implement the features of the references
`
`and would have concluded that the reference disclosures would have been
`
`enabling.” In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994). This is
`
`because, when a patent specification does not “specifically describe” any
`
`“equipment or techniques to be used,” it may be deduced “that all of the
`
`equipment and technical knowledge required to perform the claimed
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`method” is known to one of ordinary skill in the art. In re Fox, 471 F.2d
`
`1405, 1407 (CCPA 1973); see also Southwire Co. v. Cerro Wire LLC, 870
`
`F.3d 1306, 1312 (Fed. Cir. 2017) (without proof to the contrary, when there
`
`is no focus on a disputed claim limitation in the specification, the limitation
`
`is merely “an observed result of an old process”).
`
`Patent Owner argues that this reliance on the disclosure of the
`
`’812 patent amounts to using the patent’s own disclosure against it.
`
`Paper 28, 4–5 (citing Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc.,
`
`73 F.3d 1085, 1087 (Fed. Cir. 1996) (“obviousness may not be established
`
`using hindsight, or in view of the teachings or suggestions of the inventor”)).
`
`We are not persuaded by this argument. This is not a case of using the
`
`inventor’s own disclosure of how to make or use an invention as a way to
`
`establish that a person of ordinary skill in the art somehow would have been
`
`aware of how to make or use the invention. Instead, we use the fact that the
`
`’812 patent fails to provide a description of how to seal the seam between
`
`two sheets with an interposed “film[], sheet[] or plate[]” as evidence that a
`
`person of ordinary skill in the art would have had the ability to determine,
`
`without undue experimentation, how to accomplish that task. See Epstein,
`
`32 F.3d at 1568. Thus, that knowledge would have been available to a
`
`person of ordinary skill in the art attempting to carry out Kasugai’s method
`
`of making a fuel tank in which a support plate was pinched by a parison
`
`composed of two plates being joined together in a mold.
`
`For these reasons, we are satisfied that the combination of Kasugai
`
`and Kagitani, together with the background knowledge available to one of
`
`ordinary skill in the art, “as a whole . . . enable[s] one skilled in the art to
`
`make and use the” invention of the ’812 patent. Therasense, Inc. v. Becton,
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`Dickinson & Co., 593 F.3d 1289, 1297 (Fed. Cir. 2010) (vacated on other
`
`grounds) (citing Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d
`
`1547, 1551 (Fed. Cir. 1989)).
`
`Thus, the evidence of record provides a reason for a person of
`
`ordinary skill in the art to have combined the teachings of Kasugai with
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`those of Kagitani. We are not persuaded by Patent Owner’s arguments that
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`a person of ordinary skill in the art would have avoided modifying Kasugai’s
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`cylindrical parison embodiment to use a two-sheet parison instead of a
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`cylindrical parison or that the combination of Kasugai and Kagitani
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`insufficiently explains how to join the two sheets together during the
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`manufacture of a fuel tank. Accordingly, Petitioner has shown by a
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`preponderance of the evidence that a person of ordinary skill in the art would
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`have had reason to combine the teachings of Kasugai and Kagitani.
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`b. Claim 38
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`Claim 38 depends from claim 32 and adds a limitation requiring that
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`the “step of molding comprise[] a step of holding apart said two portions of
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`said parison and a subsequent step [of bringing] said two portions together.”
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`Ex. 1001, 8:7–9.
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`Petitioner argues that the additional limitation of claim 38 is taught or
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`suggested by Kasugai. Pet. 25–26 (citing Ex. 1003, 4:59–66, 5:42–45,
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`8:23–26, 10:13–17, 12:9–13, Fig. 11). We agree. Before the closure of the
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`mold around the two sheets, Kasugai depicts its two-sheet embodiment with
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`the two plastic sheets separated by a space that contains the holding plate
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`and the accessories attached thereto. Ex. 1003, Fig. 7, Fig. 17. Kasugai also
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`discloses a “[m]ethod of manufacturing a fuel tank” in which “the parison
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`used . . . includes two sheets with the holding plate arranged therebetween
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`and opposed in parallel to the base portion of the holding plate.” Id.
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`at 10:13–17, 12:9–13. In this method, Kasugai discloses “tightening the
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`mold and thereby pressing the parison against the outer periphery of the
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`holding plate.” Id. at 9:37–38, 10:66–67. The step of arranging the two
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`sheets with the holding plate between them teaches “holding apart [the] two
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`portions of [the] parison,” and the step of pressing the parison against the
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`holding plate teaches bringing the “two portions [of the parison] together.”
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`Ex. 1001, 8:7–9.
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`Against this evidence, Patent Owner argues that Kasugai fails to
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`explain “how its alleged two-sheet embodiment would work” and does not
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`describe “holding apart the two portions of said parison as claimed.” PO
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`Resp. 19. As just discussed, however, Kasugai discloses both arranging its
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`two sheets in a fashion where they are separated by enough distance to place
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`the holding plate and its attached accessories between them and pressing its
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`two sheets together. Ex. 1003, 9:37–38, 10:13–17, 10:66–67, 12:9–13,
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`Fig. 7, Fig. 17. Patent Owner also argues that a person of ordinary skill in
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`the art “would not attempt to practice Kasugai’s process with two sheets.”
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`PO Resp. 19. As discussed above, however, Kasugai expressly discloses
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`practicing its method of fuel tank manufacture with a parison made of two
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`plastic sheets. Ex. 1003, 10:13–17, 12:9–13, 5:42–45, 8:23–26, Fig. 7,
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`Fig. 17. Accordingly, we find that the combination of Kasugai and Kagitani
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`teaches the subject matter of claim 38.
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`c. Claim 39
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`Claim 39 depends from claim 38 and adds a limitation requiring that
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`the “process” of claim 32 include “a step of inserting an object in said
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`parison during said step of holding [apart] said two portions.” Ex. 1001,
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`8:10–12.
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`Petitioner argues that the additional limitation of claim 39 is taught or
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`suggested by Kasugai. Pet. 26–27 (citing Ex. 1003, 2:17–25, 4:59–5:1,
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`Fig. 1). We agree. As discussed above, before the closure of the mold
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`around the two sheets, Kasugai teaches separating its two plastic sheets by a
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`space that contains holding plate 6 and the accessories attached thereto, and
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`Kasugai teaches pressing the two sheets around and against the holding plate
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`by closing the mold. Ex. 1003, 9:37–38, 10:13–17, 10:66–67, 12:9–13, Fig.
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`7, Fig. 17. Either the holding plate or any of the accessories attached thereto
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`qualifies as “an object.”
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`Patent Owner repeats its argument that Kasugai does not teach
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`holding apart the two sheets of its two-sheet embodiment. PO Resp. 19–20.
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`We find this argument unpersuasive for the same reasons discussed above
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`with respect to claim 38. Accordingly, we find that the combination of
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`Kasugai and Kagitani teaches the subject matter of claim 39.
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`d. Claim 40
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`Claim 40 depends from claim 39 and adds a limitation requiring that
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`the object inserted in claim 39 be “a preassembled structure.” Ex. 1001,
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`8:13–14. Petitioner argues that Kasugai teaches this limitation. Pet. 27–28
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`(citing Ex. 1003, 2:17–25, Fig. 3, Fig. 4). Patent Owner does not dispute
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`Petitioner’s argument or evidence with respect to claim 40. PO Resp. 15–
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`24. We agree with Petitioner. As Figures 3 and 4 of Kasugai show, the
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`various accessories that are attached to holding plate 6 are all attached
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`before the plate is placed in the mold. Ex. 1003, Fig. 3, Fig. 4; see also
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`Ex. 1003, 2:17–20 (“component parts are previously fixed to a holding plate
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`of synthetic resin being used as an insert member”). Accordingly, we find
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`that the combination of Kasugai and Kagitani teaches the subject matter of
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`claim 40.
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`e. Claim 41
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`Claim 41 depends from claim 40 and adds a limitation requiring that
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`the preassembled structure of claim 40 be “configured to anchor to an
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`internal wall of said fuel tank.” Ex. 1001, 8:15–17. Petitioner argues that
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`“Kasugai discloses that the components and holding plate of the insert
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`member are pressed onto the internal tank wall and welded or fixed in
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`place.” Pet. 28–29 (citing Ex. 1003, 4:66–5:1, 5:16–22; Ex. 1010 ¶¶ 76–78).
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`Petitioner is correct that Kasugai teaches forming a pocket in its side
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`walls, at the point where the two shells are pinched together to form a seam,
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`and placing the edge of its holding plate within that pocket as a way of
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`attaching the holding plate to the wall. Ex. 1003, 4:66–5:1 (describing the
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`attachment as “melting bonding” whose “strength becomes good”), Fig. 1
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`(depicting the parison pressed against the edge of the holding plate), Fig. 5
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`(same), Fig. 7 (depicting two-sheet parison).
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`Patent Owner argues that Kasugai’s teaching of attaching its holding
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`plate to the “circumferential pinch or seam” instead of to a flat portion of the
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`upper or lower wall of the tank does not satisfy the requirement of claim 41
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`that the preassembled structure be “configured to anchor to an internal wall.”
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`PO Resp. 20–23 (citing Ex. 1001, 4:1–3, Fig. 1; Ex. 2001 ¶ 60).
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`Specifically, according to Patent Owner, a person of ordinary skill in the art
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`would interpret claim 41 such that all preassembled structures that are
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`“configured to anchor to an internal wall” are configured to attach to a flat
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`wall, not pinched within a pocket formed within the wall. Id.
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`We are not persuaded that the scope of “an internal wall of the fuel
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`tank” is as narrow as Patent Owner argues it is. Patent Owner’s argument
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`relies chiefly on structure not depicted in the only figure of the ’812 patent.
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`Specifically, the figure includes illustrative structure 5, which supports
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`accessories that are not themselves depicted in the figure. According to
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`Patent Owner, these accessories are supposedly attached to the flat inner
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`surface of one of the sheets that will make a fuel tank, and, in fact, the figure
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`depicts illustrative structure 5 being attached to a flat portion of an interior
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`wall of the fuel tank. Ex. 1001, 5:31–42, Fig. 1; see PO Resp. 20–23.
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`Because the attachment process in the prior art combination would occur on
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`a curved side wall, but the only figure of the patent shows a flat side wall,
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`Patent Owner contends the proposed combination is improper. PO Resp. 21.
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`But the figure of the ’812 patent “is given for the purpose of illustrating a
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`specific embodiment of the inventions without in any way wishing to restrict
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`the scope thereof.” Ex. 1001, 2:41–43. Accordingly, the specification
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`precludes limiting the claims to only the flat side wall embodiment depicted
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`in the figure. Moreover, “the claims of a patent are not limited to the
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`preferred embodiment, unless by their own language.” Karlin Tech., Inc. v.
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`Surgical Dynamics, Inc., 177 F.3d 968, 973 (Fed. Cir. 1999). Here, the
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`language of claim 41 does not state that the wall in question must be flat or
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`that the method of attachment of the preassembled structure must be of some
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`form other than insertion into a pocket in the wall. Ex. 1001, 8:15–17.
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`There also is evidence that a person of ordinary skill in the art would not
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`have limited a “wall” to a completely flat surface. Ex. 1003, 5:38 (referring
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`to “outside wall 2”), Fig. 5 (depicting outside wall 2 as including all of flat
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`top surface 3, flat bottom surface 5, four-sided side wall 4, and connections
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