`Tel: 571-272-7822
`
`Paper 32
`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 IPR2017-01647
`Patent 6,814,921 B1
`
`
`
`
`
`
`
`
`
`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
`
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`IPR2017-01647
`Patent 6,814,921 B1
`
`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 1–5, 8, and 9 of U.S. Patent No. 6,814,921 B1 (Ex. 1001,
`“the ’921 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 21), and Patent Owner filed a Sur-
`Reply (Paper 26). We held a hearing, the transcript of which has been
`entered into the record. Paper 31 (“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 not established by a preponderance of the
`evidence that any of claims 1–5, 8, and 9 of the ’921 patent is unpatentable.
`
`B. Related Matters
`The parties note that the ’921 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.
`
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`2
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`Patent 6,814,921 B1
`C. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–5, 8, and 9 of the ’921 patent are
`unpatentable based on the following grounds (Pet. 12–49):1
`Statutory
`Ground
`§ 103
`
`Challenged Claim(s)
`1–5, 8, and 9
`
`Basis
`Kasugai2 and Kagitani3
`
`PFC4 and Kagitani
`
`
`§ 103
`
`1–5, 8, and 9
`
`A. The ’921 Patent
`The ’921 patent, titled “Method for Making a Fuel Tank in Plastic
`Material,” issued on November 9, 2004. Ex. 1001, at [45], [54]. “Plastic
`fuel tanks on board vehicles of various kinds must generally meet sealing
`and permeability standards.” Id. at 1:6–7. “One means sometimes used has
`been to incorporate certain accessories and pipes inside the tanks, thus
`eliminating their interface with the external environment.” Id. at 1:17–20.
`A stated purpose of the ’921 patent is “to provide a process for producing a
`plastic fuel tank with excellent control of the reproducibility and accuracy of
`the dimensions, which . . . is well suited to the incorporation of accessories
`before the molding phase.” Id. at 1:47–52.
`
`
`1 Petitioner also relies on a declaration from Dr. David O. Kazmer.
`Ex. 1009.
`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 A, published Aug. 9, 1994 (English translation and Japanese original
`both provided) (Ex. 1004, “Kagitani”).
`4 Plastic Forming Company, U.K. Patent Publication No. 1,410,215,
`published Oct. 15, 1975 (Ex. 1005, “PFC”).
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`3
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`Patent 6,814,921 B1
`One embodiment of the invention is illustrated in the sole figure of the
`’921 patent, reproduced below:
`
`
`The figure depicts “an extrusion-blow-molding installation with
`continuous extrusion used to produce automobile gas tanks.” Id. at 5:17–21.
`The circular die of extrusion head 2 produces tubular extrudate 1 of circular
`cross section. Id. at 5:21–27. As the tubular material leaves the extrusion
`head, it “is cut along a generatrix using . . . steel blade” 3. Id. at 5:24–27.
`The cut extrudate “is bent back to form a sheet” that is guided into mold 5.
`Id. at 5:28–30. Mold 5 is closed around the sheet, causing the sheet “to be
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`IPR2017-01647
`Patent 6,814,921 B1
`compression-molded” in region 10 of mold 5. Id. at 5:30–34. Pressurized
`air is supplied through line 6 to one side of the sheet, and air is evacuated
`from the other side of the sheet via lines 7. Id. at 5:34–38.
`
`B. Illustrative Claim
`Claims 1–5, 8, and 9 of the ’921 patent are challenged. Claim 1 is
`illustrative; it recites:
`1. A process for manufacturing plastic hollow bodies from two
`shells formed by molding, which are joined together,
`at least one shell being produced by compression-molding a
`portion of a plastic sheet between a mold and a punch and
`by the remaining portion of the sheet being blow-molded in
`the region not compression-molded,
`characterized in that it is applied to the manufacture of a fuel
`tank
`and in the sheet is obtained in the same manufacturing line as
`the shell which will be produced from this sheet, by the
`cutting and opening an extruded parison of closed cross
`section.
`Ex. 1001, 5:44–6:5 (paragraphing added for clarity).
`
`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);5 see Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144 (2016)
`
`
`5 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See “Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
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`Patent 6,814,921 B1
`(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 five terms: “shell,” “punch,”
`“parison,” “stacked double molds (sandwich molds or stack molds),” and
`“accessory.” Pet. 8–11. Patent Owner discusses these terms as well. PO
`Resp. 13–19. We conclude that we need only construe “punch” in order to
`resolve this case. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (“only those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy”).
`Petitioner proposes construing “punch” as “a device that compresses
`material against a portion of the mold to shape the material.” Pet. 9–10;
`Reply 2–4. Patent Owner argues that “punch” should be construed as
`“another mold portion that cooperates with the mold to clamp the sheet.”
`PO Resp. 14–17; Sur-Reply 3–5. We are not persuaded that either party
`proposes the correct broadest reasonable interpretation of the term “punch.”
`Two of the challenged claims recite the term “punch.” In claim 1, “at
`least one shell” is “produced by compression-molding a portion of a plastic
`sheet between a mold and a punch,” with the remainder of the sheet being
`blow molded. Ex. 1001, 5:44–6:1. This claim language requires that the
`punch be separate from at least one portion of the mold, with the plastic
`sheet that is being formed located between the punch and that mold portion.
`
`
`the Patent Trial and Appeal Board,” 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to
`be codified at 37 C.F.R. pt. 42).
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`In claim 8, “at least one device” is “placed on the punch side or on the die
`side of the mold.” Id. at 6:30–32. This language makes clear that the punch
`must be associated somehow with one portion of the mold, making it
`possible to distinguish that mold portion (the punch side of the mold) from
`the opposing mold portion (the die side of the mold). See Tr. 36:10–19,
`53:1–12, 89:23–90:7.
`Thus, the claims of the ’921 patent place some requirements on a
`“punch.” The punch must be separated from one portion of the mold, with
`the plastic sheet that is being formed located between the punch and that
`mold portion, and the punch must be associated with the other portion of the
`mold, making it possible to distinguish a “punch side” and a “die side” of the
`mold. Thus, the proper construction of “punch” cannot be as broad as
`Petitioner suggests, encompassing any “device that compresses material
`against a portion of the mold to shape the material.”
`The written description of the ’921 patent makes clear that the punch
`may be “fastened to [a] mold portion.” Ex. 1001, 2:48–51. Thus, the term
`“punch” must encompass at least some bodies that are separate from the
`mold itself, and it cannot be limited to covering only portions of the mold
`itself, as Patent Owner suggests. Of course, the punch may be part of the
`punch side of the mold. Id. at 5:31–33, Fig. 1 (depicting punch 5a as part of
`one portion of mold 5). The written description also makes clear that the
`sheet of material being formed is compression molded “in a region located
`between the punch . . . and the die.” Id.
`Based on the foregoing, we determine that the construction that is
`consistent with both the language of the claims and the written description
`and sole figure of the ’921 patent is that a “punch” is “a device that is part
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`Patent 6,814,921 B1
`of, fastened to, or otherwise associated with one portion of the mold—the
`punch side of the mold—and, upon mold closure, acts to compress material
`against another portion of the mold—the die side of the mold—to shape the
`material.”
`
`B. Asserted Obviousness over Kasugai and Kagitani
`Petitioner argues that the subject matter of claims 1–5, 8, and 9 would
`have been obvious to a person of ordinary skill in the art given the teachings
`of Kasugai and Kagitani. Pet. 12–34.
`
`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
`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.
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`¶ 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 1–5, 8, and 9. Pet. 12–34.
`Patent Owner argues, inter alia, that the combination of Kasugai and
`Kagitani fails to teach either a “punch” or “compression-molding a portion
`of a plastic sheet between a mold and a punch.” PO Resp. 19–24.
`
`a. Claim 1
`As Petitioner argues, Pet. 13–27, claim 1 recites a preamble and four
`limitations: “[a] process for manufacturing plastic hollow bodies from two
`shells formed by molding, which are joined together,” “at least one shell
`being produced by compression-molding a portion of a plastic sheet between
`a mold and a punch and by the remaining portion of the sheet being blow-
`molded in the region not compression-molded,” “characterized in that it is
`applied to the manufacture of a fuel tank,” and characterized “in [that] the
`sheet is obtained in the same manufacturing line as the shell which will be
`produced from this sheet, by the cutting and opening an extruded parison of
`closed cross section.” Ex. 1001, 5:44–6:5.
`With respect to the limitation requiring that the “at least one shell” be
`“produced by compression-molding a portion of a plastic sheet between a
`mold and a punch,” Petitioner argues that Kasugai’s “insert member,” which
`is made of a holding plate and attached accessories, acts as the required
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`“punch,” as well as that the pressing of plastic material against the insert
`member by the mold in Kasugai is the required compression molding
`between a mold and a punch. Pet. 15–19. Patent Owner opposes this
`argument, arguing that a person of ordinary skill in the art would not
`consider Kasugai’s “insert member” to be a “punch.” PO Resp. 19–24.
`As discussed above, we construe “punch” as “a device that is part of,
`fastened to, or otherwise associated with one portion of the mold—the punch
`side of the mold—and, upon mold closure, acts to compress material against
`another portion of the mold—the die side of the mold—to shape the
`material.” Under this construction, it must be possible to identify one side of
`the mold as the “punch side” of the mold, because that side of the mold has a
`punch as part of its structure, or fastened to its structure, or in some other
`way associated with its structure. It is not possible to make such an
`identification in Kasugai. Kasugai’s mold has two mold halves, identified in
`Kasugai’s figures as items 22 and 23. Ex. 1003, 4:23–30, Fig. 1, Fig. 2.
`Kasugai does not refer to its insert member 7, or to any other item it
`discloses, as a “punch.” Id. at 1:1–12:36. And the insert member is not part
`of or fastened to either half of Kasugai’s mold. Id. at Fig. 1, Fig. 2. Both
`halves of Kasugai’s mold contain recessed portions into which the plastic
`material being formed is pressed by insert member 7. Id. Because
`Kasugai’s insert member 7 is not part of, attached to, or otherwise associated
`with either mold half to a greater extent than to the other half, it is not
`possible to identify either mold half 22 or mold half 23 as the “punch side”
`of the mold in Kasugai. Accordingly, we find that Kasugai does not teach or
`suggest the “punch” recited in claim 1 of the ’921 patent.
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`Because Petitioner relies on Kasugai to teach or suggest the recited
`“punch,” Pet. 19, and because Kasugai does not teach or suggest a “punch,”
`we determine that Petitioner has not shown by a preponderance of the
`evidence that the combination of Kasugai and Kagitani teaches or suggests
`all the limitations of claim 1.
`
`b. Claims 2–5, 8, and 9
`Claims 2–5, 8, and 9 each depend, directly or indirectly, from claim 1.
`Ex. 1001, 6:6–40. Accordingly, each of these claims includes all the
`limitations of claim 1. 37 C.F.R. § 1.75(c). As discussed above, Petitioner
`has not shown by a preponderance of the evidence that the combination of
`Kasugai and Kagitani teaches or suggests all the limitations of claim 1.
`Thus, Petitioner also has not shown by a preponderance of the evidence that
`the combination of Kasugai and Kagitani teaches or suggests all the
`limitations of claims 2–5, 8, and 9.
`
`C. Asserted Obviousness over PFC and Kagitani
`Petitioner argues that the subject matter of claims 1–5, 8, and 9 would
`have been obvious to a person of ordinary skill in the art given the teachings
`of PFC and Kagitani. Pet. 34–49.
`
`1. PFC
`PFC relates to “a new and useful method of and apparatus for molding
`hollow articles of thermoplastic material.” Ex. 1005, 1:12–16. In PFC, two
`molded plastic shells are joined to form a hollow body. Id. at 3:69–84,
`Figs. 3, 4. The shells are created by placing an intermediate plate between
`the two halves of a mold, with a plastic sheet between each of the mold
`halves and the intermediate plate, then closing the mold. Id. at 2:46–56,
`2:119–125, 3:36–49, Figs. 1, 2. Once the mold is closed, the two sheets are
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`caused to conform to the surfaces of the mold halves by blow molding. Id.
`at 1:73–2:11, 3:57–63.
`
`2. Analysis
`Petitioner argues that a person of ordinary skill in the art would have
`had reason to combine the teachings of PFC with the teachings of Kagitani
`and that those combined teachings teach or suggest every limitation of
`claims 1–5, 8, and 9. Pet. 34–49.
`Patent Owner argues, inter alia, that the combination of PFC and
`Kagitani fails to teach either a “punch” or “compression-molding a portion
`of a plastic sheet between a mold and a punch.” PO Resp. 33–37.
`
`a. Claim 1
`As Petitioner argues, Pet. 35–43, claim 1 recites a preamble and four
`limitations: “[a] process for manufacturing plastic hollow bodies from two
`shells formed by molding, which are joined together,” “at least one shell
`being produced by compression-molding a portion of a plastic sheet between
`a mold and a punch and by the remaining portion of the sheet being blow-
`molded in the region not compression-molded,” “characterized in that it is
`applied to the manufacture of a fuel tank,” and characterized “in [that] the
`sheet is obtained in the same manufacturing line as the shell which will be
`produced from this sheet, by the cutting and opening an extruded parison of
`closed cross section.” Ex. 1001, 5:44–6:5.
`With respect to the limitation requiring that the “at least one shell” be
`“produced by compression-molding a portion of a plastic sheet between a
`mold and a punch,” Petitioner argues that PFC’s intermediate mold plate,
`which is placed between the mold halves during some forming operations,
`acts as the required “punch,” as well as that the pressing of plastic material
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`against the intermediate mold plate by the mold in PFC is the required
`compression molding between a mold and a punch. Pet. 37–38. Patent
`Owner opposes this argument, arguing that a person of ordinary skill in the
`art would not consider PFC’s intermediate mold plate to be a “punch.” PO
`Resp. 33–37.
`As discussed above, we construe “punch” as “a device that is part of,
`fastened to, or otherwise associated with one portion of the mold—the punch
`side of the mold—and, upon mold closure, acts to compress material against
`another portion of the mold—the die side of the mold—to shape the
`material.” Under this construction, it must be possible to identify one side of
`the mold as the “punch side” of the mold, because that side of the mold has a
`punch as part of its structure, or fastened to its structure, or in some other
`way associated with its structure. It is not possible to make such an
`identification in PFC. PFC’s mold has two mold halves, identified in PFC’s
`figures as items 3 and 4. Ex. 1005, 2:107–116, Fig. 1, Fig. 2. PFC does not
`refer to its intermediate mold plate 5, or to any other item it discloses, as a
`“punch.” Id. at 1:1–7:117. And the intermediate mold plate is not part of or
`fastened to either half of PFC’s mold. Id. at Fig. 1, Fig. 2. Both halves of
`PFC’s mold contain recessed portions into which the plastic material being
`formed is pressed by intermediate mold plate 5. Id. Because PFC’s
`intermediate mold plate 5 is not part of, attached to, or otherwise associated
`with either mold half to a greater extent than to the other, it is not possible to
`identify either mold half 3 or mold half 4 as the “punch side” of the mold in
`PFC. Accordingly, we find that PFC does not teach or suggest the “punch”
`recited in claim 1 of the ’921 patent.
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`Because Petitioner relies on PFC to teach or suggest the recited
`“punch,” Pet. 39, and because PFC does not teach or suggest a “punch,” we
`determine that Petitioner has not shown by a preponderance of the evidence
`that the combination of PFC and Kagitani teaches or suggests all the
`limitations of claim 1.
`
`b. Claims 2–5, 8, and 9
`Claims 2–5, 8, and 9 each depend, directly or indirectly, from claim 1.
`Ex. 1001, 6:6–40. Accordingly, each of these claims includes all the
`limitations of claim 1. 37 C.F.R. § 1.75(c). As discussed above, Petitioner
`has not shown by a preponderance of the evidence that the combination of
`PFC and Kagitani teaches or suggests all the limitations of claim 1. Thus,
`Petitioner also has not shown by a preponderance of the evidence that the
`combination of PFC and Kagitani teaches or suggests all the limitations of
`claims 2–5, 8, and 9.
`
`CONCLUSION
`Upon consideration of the Petition, Response, Reply, Sur-Reply, and
`the evidence before us, we determine that Petitioner has not proven by a
`preponderance of the evidence that any of claims 1–5, 8, and 9 would have
`been obvious over either the combination of Kasugai and Kagitani or the
`combination of PFC and Kagitani.
`
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`ORDER
`
`It is hereby
`ORDERED that Petitioner has not proven by a preponderance of the
`evidence that claims 1–5, 8, and 9 of U.S. Patent No. 6,814,921 B1 are
`unpatentable;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 318(b), upon
`expiration of the time for appeal of this decision, or the termination of any
`such appeal, a certificate shall issue confirming the patentability of claims
`1–5, 8, and 9 of U.S. Patent No. 6,814,921 B1; and
`FURTHER ORDERED that, because this is a Final Written Decision,
`parties to the proceeding seeking judicial review of the decision must
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
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`PETITIONER:
`Alyssa Caridis
`Bas de Blank
`Don Daybell
`Vickie L. Freema
`ORRICK, HERRINGTON, & SUTCLIFFE LLP
`a8cptabdocket@orrick.com
`M2BPTABDocket@orrick.com
`D2DPTABDocket@orrick.com
`PTABDocketVF4@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
`
`
`
`16
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