Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 38
`Entered: January 16, 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 IPR2017-01654
`Patent 9,079,490 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, CHRISTOPHER M. KAISER, and
`ROBERT L. KINDER, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a), 37 C.F.R. § 42.73
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`Donghee America, Inc. and Donghee Alabama, LLC (collectively
`“Petitioner”) filed a petition (Paper 1, “Pet.”) to institute an inter partes
`review of claims 1, 2, 7–9, and 12–14 of U.S. Patent No. 9,079,490 B2
`(Ex. 1001, “the ’490 patent”). 35 U.S.C. § 311. Petitioner supported the
`Petition with a Declaration from David O. Kazmer, Ph.D. (Ex. 1007).
`
`
`Tel: 571-272-7822
`
`Paper 38
`Entered: January 16, 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 IPR2017-01654
`Patent 9,079,490 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, CHRISTOPHER M. KAISER, and
`ROBERT L. KINDER, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a), 37 C.F.R. § 42.73
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`Donghee America, Inc. and Donghee Alabama, LLC (collectively
`“Petitioner”) filed a petition (Paper 1, “Pet.”) to institute an inter partes
`review of claims 1, 2, 7–9, and 12–14 of U.S. Patent No. 9,079,490 B2
`(Ex. 1001, “the ’490 patent”). 35 U.S.C. § 311. Petitioner supported the
`Petition with a Declaration from David O. Kazmer, Ph.D. (Ex. 1007).
`
`
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`IPR2017-01654
`Patent 9,079,490 B2
`Plastic Omnium Advanced Innovation and Research (“Patent Owner”)
`timely filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). On January
`19, 2018, based on the record before us at the time, we instituted an inter
`partes review of all challenged claims on all asserted grounds of
`unpatentability. Paper 9 (“Institution Decision” or “Dec.”). We instituted
`the review on the following challenges to the claims:
`
`References
`U.S. Patent Pub. No. 2008/0006625 A1 (Ex. 1003,
`“Borchert”)
`
`Claim(s)
`Basis
`§ 102(e) 1, 2, 8, and
`12–14
`
`Borchert
`
`Borchert and U.S. Patent 6,866,812 B2 (Ex. 1004,
`“Van Schaftingen”)
`
`Borchert and U.S. Patent 8,122,604 B2 (Ex. 1005,
`“Jannot”)
`
`Borchert and U.S. Patent 6,699,413 B2 (Ex. 1006,
`“Kachnic”)
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`7
`
`7
`
`2
`
`9
`
`After we instituted this review, Patent Owner filed a Patent Owner
`Response in opposition to the Petition (Paper 15, “PO Resp.”) that was
`supported by a Declaration from Tim Osswald, Ph.D. (Ex. 2002). Petitioner
`filed a Reply in support of the Petition (Paper 28, “Reply”) that was
`supported by a second Declaration from Dr. Kazmer (Ex. 1011). With our
`authorization, Patent Owner filed a Sur-reply to Petitioner’s Reply
`(Paper 30, “Surreply”). Patent Owner did not move to amend any claim of
`the ’490 patent.
`We heard oral argument on November 5, 2018. A transcript of the
`argument has been entered in the record (Paper 37, “Tr.”).
`
`2
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`IPR2017-01654
`Patent 9,079,490 B2
`We have jurisdiction under 35 U.S.C. § 6. The evidentiary standard is
`a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R.
`§ 42.1(d). This Final Written Decision is issued pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73.
`For the reasons expressed below, we conclude that Petitioner has
`demonstrated by a preponderance of evidence that claims 1, 2, 7–9, and 12–
`14 are unpatentable.
`B. RELATED PROCEEDINGS
`The parties have identified as a related proceeding the co-pending
`district court proceeding of Plastic Omnium Advanced Innovation &
`Research v. Donghee America, Inc. et al., Civil Action No. 16-cv-00187-
`LPS-CJB (D. Del.). Pet. 2; Paper 3, 1.
`C. THE ’490 PATENT
`The ’490 patent is directed to “a method for fastening an accessory to
`a wall of a plastic fuel tank.” Ex. 1001, 1:16–17. More specifically, the
`’490 patent is directed to a process for snap-riveting accessories to the wall
`of a plastic fuel tank during molding of the tank. Id. at 1:60–2:5. Snap-
`riveting involves forcing molten plastic from the tank wall through an orifice
`in the accessory and allowing the protruding plastic to solidify to form the
`head of a rivet. Id. at 3:40–47. The ’490 patent describes snap-riveting as a
`“common technique in the field of metallurgy,” id. at 3:43, that has been
`used in the prior art to fasten accessories to plastic fuel tanks, id. at 1:35–41.
`The Specification further describes “an improved geometry of the snap-
`riveting zone that makes it possible to ensure [self-centering] of the
`accessory with respect to the tool which will carry out the snap-riveting and
`that makes it possible to obtain a better distribution of the stress during this
`
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`IPR2017-01654
`Patent 9,079,490 B2
`process.” Id. at 1:60–65. In particular, the snap-riveting orifice is
`surrounded by a concave relief. Id. at 3:61–62.
`Figure 2 of the ’490 patent,
`reproduced right, illustrates accessory 1
`having tab 2 with central orifice 4 through
`which molten plastic flows to form a snap
`rivet connecting accessory 1 to the wall of
`the tank. The Specification states:
`In FIG. 2, the geometry of the fastening tabs (2) of the
`accessory (1) appears more clearly: the curved end (3) of these
`tabs is provided with a central orifice (4) and with several slots
`(5) positioned over a circumference surrounding this orifice (4).
`This curved end (3) is extended by a cylindrical wall (6) in the
`shape of a cup provided with two recesses (7) that confer a
`certain mobility
`to
`the end of
`the
`tab—necessary for
`accompanying the shrinkage of the material during cooling of the
`tank—and a wider window (8) that allows visual inspection of
`the snap-rivet once the accessory is fastened to the wall of a tank.
`Id. at 7:1–11.
`We reproduce at right the pertinent portion of
`Figure 3 of the ’490 patent with our annotations and
`coloring, which depicts a cross section of tab 2
`(colorized yellow) with the head of a snap rivet
`above orifice 5 and within concave portion 10′ of
`tool 10 (colorized red), which is formed of plastic
`used to form the wall of the tank (colorized blue).
`Id. at 7:14–25. The reproduced portion of Figure 3
`also illustrates the lower portion of snap rivet being
`formed between mould 11 with excressence 11′, tool 10 and tab 2. Id.
`
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`IPR2017-01654
`Patent 9,079,490 B2
`Claims 1 and 12, which are the only independent claims among the
`challenged claims, recite:
`1. A method for fastening an accessory to a wall of a plastic fuel
`tank, comprising:
`[a] fastening by snap-riveting using a tool, at the same time as
`said tank is manufactured by moulding with a mould, the
`accessory including at least one orifice through which the
`snap-riveting is carried out by material of the tank protruding
`from the orifice and being deformed to mould the rivet,
`[b] wherein the snap-riveting orifice is at least partially
`surrounded by a concave relief that protrudes towards an
`inside of the tank into which a convex relief of the tool presses
`in order to force the material through the orifice, the convex
`relief of the tool comprising a counterform to mould an upper
`part of the rivet.
`Id. at 7:26–40 (with Petitioner’s enumerations for clarity added in brackets);
`see Pet. 16–20 (for Petitioner’s enumerations).
`12. A method for fastening an accessory to a wall of a plastic fuel
`tank, comprising:
`[a] fastening by snap-riveting using a tool, at the same time as
`said tank is manufactured by moulding with a mould, the
`accessory including at least one orifice through which the
`snap-riveting is carried out by material of the tank protruding
`from the orifice and being deformed to mould the rivet,
`[b] wherein the snap-riveting orifice extends through a base
`portion of a concave relief formed in the accessory,
`[c] wherein the concave relief is formed by the base portion and
`a wall portion that protrudes away from the base portion
`towards an inside of the tank,
`[d] wherein an area of the base portion surrounds the orifice and
`faces towards the inside of the tank,
`[e] wherein the wall portion at least partially surrounds the area
`of the base portion that surrounds the orifice such that the wall
`
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`IPR2017-01654
`Patent 9,079,490 B2
`portion is spaced apart from the orifice by the area of the base
`portion that surrounds the orifice, and
`[f] wherein a convex relief of the tool presses into the concave
`relief in order to force the material through the orifice, the
`convex relief of the tool comprising a counterform to mould
`an upper part of the rivet, which upper part contacts the area
`of the base portion that surrounds the orifice.
`Id. at 8:22–47 (with Petitioner’s enumerations for clarity added in brackets);
`see Pet. 31–34 (for Petitioner’s enumerations).
`II. ANALYSIS
`A. CLAIM INTERPRETATION
`“A claim in an unexpired patent shall be given its broadest reasonable
`construction in light of the specification of the patent in which it appears.”
`37 C.F.R. § 42.100(b) (2016);1 see also Cuozzo Speed Techs., LLC v. Lee,
`136 S.Ct. 2131, 2142 (2016) (affirming that USPTO has statutory authority
`to construe claims according to Rule 42.100(b)). When applying that
`standard, we interpret the claim language as it would be understood by one
`of ordinary skill in the art in light of the specification, and absent any special
`definition, we give claim terms their ordinary and customary meaning. See
`In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary
`and customary meaning is the meaning that the term would have to a person
`
`
`1 Our recently changed version of this Rule, which requires that we interpret
`claims in the same manner used 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 new 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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`IPR2017-01654
`Patent 9,079,490 B2
`of ordinary skill in the art in question.” (internal quotation marks omitted)).
`Only terms that are in controversy need to be construed, and then only to the
`extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Petitioner notes and accepts for purposes of its analysis that the
`Specification expressly defines the following three terms: “accessory,”
`“parison,” and “concave relief.” Pet. 12–14 (citing Ex. 1001, 3:11–21
`(defining “accessory”), 4:63–5:2 (defining “parison”), 3:61–66 (defining
`“concave relief”)). When an inventor defines specific terms used to describe
`an invention, we will give effect to those definitions, as long as they are set
`out “with reasonable clarity, deliberateness, and precision,” “so as to give
`one of ordinary skill in the art notice of the change” in meaning. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Each of the cited express
`definitions in the Specification indicates what the phrase is “understood to
`mean.” Ex. 1001, 3:11–21 (defining “accessory”), 4:63–5:2 (defining
`“parison”), 3:61–66 (defining “concave relief”). On the final record before
`us, “understood to mean” provides notice of a reasonably clear, deliberate,
`and precise definition of each claim term. Accordingly, we interpret each
`claim term according to the definition set forth in the Specification. Other
`phrases addressed by the parties follow.
`1. convex relief
`Petitioner proposes that “convex relief” means “a positive or
`outwardly projecting relief.” Pet. 14 (citing Ex. 1001, 6:4–8). The cited
`portion of the Specification refers to “convex relief” as an “excrescence,”
`Ex. 1001, 6:4–8, which is defined by Merriam Webster’s Collegiate
`Dictionary as “a projection or growth,” Ex. 1008. For the purposes of the
`
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`IPR2017-01654
`Patent 9,079,490 B2
`Institution Decision, we preliminarily interpreted “convex relief” as
`commonly suggested by the parties to mean a “projection.” Dec. 7. Patent
`Owner agreed with our preliminary interpretation, PO Resp. 20, and we
`maintain that interpretation for this Decision.
`2. counterform
`Petitioner proposes that “counterform” means “a portion of the
`convex relief of the tool that is used to shape the upper part of the rivet.”
`Pet. 14–15 (citing Ex. 1001, 6:1–11). The Specification identifies the
`“counterform” as being “intended for moulding the upper part of the rivet
`(snap rivet).” Ex. 1001, 6:1–11. For the purposes of the Institution
`Decision, we preliminarily interpreted “counterform” to mean “a portion of
`the convex relief of the tool that is used to shape the upper part of the rivet.”
`Dec. 7. Relying upon Dr. Osswald’s testimony, Patent Owner contends that
`“counterform” refers to “a portion of the convex relief that shapes or molds
`an upper part of the rivet.” PO Resp. 21 (quoting Ex. 2002 ¶ 47 (citing
`Ex. 1001, 6:1–23, 7:1–25, Figures 2, 3)). Although Patent Owner argues
`that its interpretation of “counterform” includes the notion of “shapes or
`molds” rather than simply “shapes,” the difference does not affect our
`analysis. Id. Upon consideration of both parties’ positions and the evidence,
`we adopt Patent Owner’s slightly broader interpretation because it is more
`consistent with the Specification. Accordingly, we interpret “counterform”
`to refer to “a portion of the convex relief that shapes or molds an upper part
`of the rivet.”
`
`B. THE PARTIES’ POST-INSTITUTION ARGUMENTS
`In our Institution Decision, we concluded that the argument and
`evidence adduced by Petitioner demonstrated a reasonable likelihood that
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`IPR2017-01654
`Patent 9,079,490 B2
`claims 1, 2, 7–9, and 12–14 were unpatentable as anticipated or obvious
`based on the challenges identified in the table in Part I.A above.
`Dec. 19–20. We must now determine whether Petitioner has established by
`a preponderance of the evidence that the specified claims are unpatentable
`over the cited prior art. 35 U.S.C. § 316(e). We previously instructed Patent
`Owner that “any arguments for patentability not raised in the [Patent Owner
`Response] will be deemed waived.” Paper 10, 3; see also In re Nuvasive,
`Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (holding that patent owner’s
`failure to proffer argument at trial as instructed in scheduling order
`constitutes waiver). Additionally, the Board’s Trial Practice Guide states
`that the Patent Owner Response “should identify all the involved claims that
`are believed to be patentable and state the basis for that belief.” Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`C. LEGAL STANDARDS
`Petitioner challenges the patentability of claims on the grounds that
`the claims are either anticipated or obvious in light of various references. To
`prevail in its challenges to the patentability of the claims, Petitioner must
`establish facts supporting its challenges by a preponderance of the evidence.
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes review], the
`petitioner has the burden from the onset to show with particularity why the
`patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815
`F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring
`inter partes review petitions to identify “with particularity . . . the evidence
`that supports the grounds for the challenge to each claim”)). This burden
`never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing
`
`9
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`IPR2017-01654
`Patent 9,079,490 B2
`Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008))
`(discussing the burden of proof in inter partes review).
`“A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`631 (Fed. Cir. 1987). The Supreme Court in KSR International Co. v.
`Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the framework for
`determining obviousness as set forth in Graham v. John Deere Co., 383
`U.S. 1 (1966). The KSR Court summarized the four factual inquiries set
`forth in Graham that we apply in determining whether a claim is reasonably
`likely to be unpatentable as obvious under 35 U.S.C. § 103(a) as follows:
`(1) determining the scope and content of the prior art, (2) ascertaining the
`differences between the prior art and the claims at issue, (3) resolving the
`level of ordinary skill in the pertinent art, and (4) considering objective
`evidence indicating obviousness or nonobviousness. KSR, 550 U.S. at 406
`(citing Graham, 383 U.S. at 17–18). In an inter partes review, Petitioner
`cannot satisfy its burden of proving obviousness by employing “mere
`conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
`1380 (Fed. Cir. 2016). Thus, to prevail Petitioner must explain how the
`proposed combinations of prior art would have rendered the challenged
`claims unpatentable. With these standards in mind, we address each
`challenge below.
`D. CLAIMS 1, 2, 8, AND 12–14: ANTICIPATION BY BORCHERT
`The dispute over whether Borchert anticipates claims 1, 2, 8, and 12–
`14 tightly focuses on whether Borchert describes using a tool with a
`counterform on a convex relief of the tool to form the upper part of the rivet
`
`10
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`IPR2017-01654
`Patent 9,079,490 B2
`that fastens an accessory to the wall of a fuel tank. Based upon our
`consideration of the entire record and the parties’ arguments, we determine
`that Borchert not only describes using such a tool, but also describes all
`other elements of claims 1, 2, 8, and 12–14 and thus anticipates these claims.
`1. Independent Claims 1 and 12
`Petitioner contends that Borchert anticipates claims 1, 2, 8, and 12–14.
`Pet. 16–36. Petitioner identifies the manner in which Borchert describes
`each step of the claimed methods and cites portions of Borchert to support
`its contentions. Id. (citing Ex. 1003 ¶¶ 8, 10, 19, 26–28, 33, 37, Figures 1, 2,
`4, 7, 12). Petitioner also supports its contentions with Dr. Kazmer’s
`testimony. Id. (citing Ex. 1007 ¶¶ 41–58, 70–73, 80–96). Dr. Kazmer
`testifies that an ordinarily skilled artisan would understand an unnumbered
`element shown in Borchert’s Figure 1 to constitute the “convex relief of the
`tool” that forces material through orifice to form the snap-rivet as required in
`independent claims 1 and 12. Ex. 1007 ¶¶ 52–54.
`Dr. Kazmer provides a colorized
`and annotated version of Borchert’s
`Figure 1, which we reproduce at right, and
`which Dr. Kazmer labels as Kazmer-4.
`Ex. 1007 ¶ 52. Borchert’s Figure 1
`illustrates accessory 1 with foot element 2
`through which orifice 3 extends. Ex. 1003
`¶ 28. Dr. Kazmer testifies as follows:
`“Borchert provides a concave relief
`surrounding the orifice that protrudes towards an inside of the tank
`(highlighted in green). As indicated in Kazmer-4, a POSITA would
`
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`understand that Borchert provides a convex relief (i.e. excrescence at 6:4 of
`the ‘490 specification) of the tool highlighted in blue.” Ex. 1007 ¶ 52.
`Dr. Kazmer also provides a revised
`version of Borchert’s Figure 2, which he
`labels Kazmer-5, and we reproduce at
`right. Id. ¶ 53. Dr. Kazmer testifies that
`Kazmer-5 supports his view that an
`ordinarily skilled artisan would understand
`the unnumbered element in Figure 1 to be
`a convex relief of the tool (blue) including
`a counterform portion that molds the upper part of rivet head 5 (yellow). Id.
`Dr. Kazmer testifies:
`[Borchert’s] FIG. 2, highlighted and enlarged . . . in [the]
`demonstrative Kazmer-5, illustrates how the rivet (colored
`yellow) is molded by the counterform of the convex relief tool
`(colored blue) to form a flat head (colored red) that is level with
`the interior surface of the accessory. As shown, the upper part
`of rivet head 5 is flat and level with the interior surface of the
`accessory because it has been formed by the tool pressed into the
`accessory. A POSITA would thus understand that the convex
`relief of the tool in Borchert comprises a counterform that molds
`the upper part of the rivet.
`
`Id.
`
`In our Institution Decision, we noted that Patent Owner’s expert,
`Dr. Osswald, testified that an ordinarily skilled artisan would not understand
`the unnumbered element in Borchert’s Figure 1 to be a tool. Dec. 10–11.
`However, we viewed the conflicting testimony on this factual issue in
`Petitioner’s favor as required under 37 C.F.R. § 42.108(c), and we instituted
`trial to resolve this factual dispute. Id. at 11–12.
`
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`At trial, Patent Owner reasserted its prior position and supported that
`position with a second declaration from Dr. Osswald and cross-examination
`of Dr. Kazmer. PO Resp. 21–33 (citing Ex. 2002 ¶¶ 53–58, 63–73, 75, 76;
`Ex. 2003, 41:18–42:9, 45:20–63:14). Petitioner responded to Patent
`Owner’s arguments and relied upon a second declaration from Dr. Kazmer
`and other portions of his cross-examination testimony to bolster its position
`that Borchert describes using a tool that included a counterform portion.
`Reply 2–10 (citing Ex. 1011 ¶¶ 13–16; Ex. 2003, 44:9–13, 48:12–16).
`Patent Owner cross-examined Dr. Kazmer a second time and relied upon
`portions of that cross-examination in a Sur-reply when arguing that Borchert
`failed to describe the use of a tool to form the rivet. Surreply 2–10 (citing
`Ex. 2009, 22:4–21, 26:9–14, 29:25–31:16, 35:23–36:9). Based on our
`review of this extensive record, Petitioner persuades us that the unnumbered
`element shown in Borchert’s Figure 1 is a tool with a counterform as recited
`in claims 1 and 12.
`Patent Owner’s arguments otherwise fall into two main categories.
`First, Patent Owner contends that the alleged tool is part of Borchert’s
`accessory 1. PO Resp. 21–32. Second, assuming that the alleged tool is, in
`fact, a tool, Patent Owner contends that Borchert’s tool has no counterform
`that molds the upper part of the rivet. Id. at 32–33. We disagree with Patent
`Owner on both points as explained below.
`a) Whether Borchert Describes a Tool
`Patent Owner argues that “no tooling [is] depicted” in Borchert’s
`Figure 1 and that “Petitioner’s blue highlighting . . . is simply a part of the
`fitment component” 1. Id. at 25–26. Patent Owner relies upon
`Dr. Osswald’s testimony to support its argument. Id. (citing Ex. 2002
`
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`¶¶ 65–68). Dr. Osswald testifies that Borchert’s Figures 1 and 2 merely
`illustrate fitment component 1 with the unmarked center portion of
`component 1 removed in Figure 2. Ex. 2001 ¶ 68. Dr. Osswald provides his
`own colorized and annotated versions of Borchert’s Figures 1 and 2, which
`we reproduce below.
`
`
`
`Dr. Osswald’s annotated and colorized versions of Borchert’s
`Figures 1 and 2 illustrate his contention that the unnumbered
`element in Figure 1 (colored green), which is missing in Figure 2,
`is merely part of Borchert’s component 1 (also colored green).
`Id. Dr. Osswald also testifies that the blue highlighted element that
`Petitioner identifies as the claimed tool with a convex relief is “actually the
`fitment, or surge pot, itself.” Id. ¶ 67. Dr. Osswald cites no objective
`evidence to support his contention that an ordinarily skilled artisan would
`believe that the alleged tool is part of Borchert’s fitment component 1.
`Dr. Kazmer explains that an ordinarily skilled artisan would interpret:
`(1) the cross-hatching in Borchert’s Figures 1 and 2 as indicating the bounds
`of component 1 and (2) the shading on the alleged tool as indicating that the
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`tool is a separate structure with a cylindrical surface. Ex. 1011 ¶ 16. His
`testimony is consistent with Office Rules for using cross-hatching as applied
`to component 1 and shading as applied to the alleged tool in patent
`illustrations as set forth in 37 C.F.R. § 1.84(h)(3), (m), both because
`component 1 is cross-hatched and the alleged tool is not and because the
`alleged tool is shaded. See 37 C.F.R. § 1.84(h)(3) (“various parts of a cross
`section of the same item should be hatched in the same manner”), § 1.84(m)
`(indicating that shading is used to depict cylindrical surface of objects).
`Dr. Kazmer further testifies that because Figure 1 “cuts the tool and fitment
`component at different levels” the figure conveys to an ordinarily skilled
`artisan that the two items are distinct components. Id. Dr. Kazmer further
`testifies that an ordinarily skilled artisan would understand from Figure 2,
`which illustrates the cross-hatched component 1 with the alleged tool
`removed, that the alleged tool forms head 5 to attach component 1 to wall 4.
`Ex. 1011 ¶ 14. Additionally, Borchert’s Figure 1 depicts a gap between the
`alleged tool and the interior surface of component 1, which Dr. Kazmer
`testifies would convey to an ordinarily skilled artisan that the tool and
`component 1 are separate items. Id. ¶ 16.
`Patent Owner argues that Dr. Kazmer “refused to recognize that
`Borchert’s Figure 1 does not explicitly identify any tooling or that
`Borchert’s concave component holders are never described as having a
`convex relief that interfaces with the accessory to attach it to the fuel tank
`wall.” Id. at 22 (citing Ex. 2003, 45:20–63:14). We discern no requirement
`for Borchert to include text that explicitly describes the tool and component
`as separate items when Figures 1 and 2 convey precisely such a concept to
`an ordinarily skilled artisan. Ex. 1011 ¶¶ 13–16; see In re Aslanian, 590
`
`15
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`IPR2017-01654
`Patent 9,079,490 B2
`F.2d 911, 914 (CCPA 1979) (“[A] drawing in a utility patent can be cited
`against the claims of a utility patent . . . even though the feature shown in the
`drawing was . . . unexplained in the specification of the reference patent.”)
`(citing In re Meng, 492 F.2d 843 (CCPA 1974); In re Seid, 161 F.2d 229
`(CCPA 1947); In re Wagner, 63 F.2d 987 (CCPA 1933)). We consider
`Dr. Osswald’s testimony otherwise to be entitled little weight because it is
`inconsistent with mandated and well-understood conventions for using
`cross-hatching and shading in patent illustrations, like those used in
`Borchert’s Figures 1 and 2, to convey characteristics of the elements on
`which they appear.
`Patent Owner, through Dr. Osswald, further contends that Borchert’s
`Figures 4, 6, and 7 demonstrate that Borchert describes a tool as “component
`holders 12,” which are concave elements that press foot 2 of component 1
`into wall 4. Ex. 2002 ¶¶ 65–68. Petitioner persuasively responds that
`Figures 1 and 2 are more detailed depictions of Borchert’s method of
`affixing component 1 to wall 4 than Figures 3–9. Reply 7–8. Borchert
`states that Figures 3–9 are “diagrammatic views of the production process”
`that depict holders 12 for components 1. Ex. 1003 ¶¶ 24, 33. Borchert
`expressly indicates, moreover, that each of holders 12 shown in Figures 3–9
`is configured as shown in Figures 1 and 2. Id. ¶ 33. Accordingly, we
`remain persuaded that Figure 1 illustrates a tool having a convex relief,
`despite the failure to depict that tool in detail in Figures 3–9.
`For all these reasons, we determine that Petitioner has proven by a
`preponderance of evidence that Borchert describes the tool with a convex
`relief as recited in claims 1 and 12.
`
`16
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`IPR2017-01654
`Patent 9,079,490 B2
`b) Whether Borchert’s Tool Includes a Counterform
`Petitioner contends that the portion of Borchert’s tool at the interface
`highlighted in red in Kazmer-5, reproduced below right, is the claimed
`counterform because
`this red portion covers
`through opening 3 and
`forms the top of head 5
`when plastic flows
`through opening 3 into
`the undercut area
`remote from wall 4.
`Pet. 22–23 (citing
`Ex. 1007 ¶¶ 50–54);
`Reply 10 (citing
`Ex. 1011 ¶ 18).
`Patent Owner argues that undercut configuration 7 refers to a portion
`of component 1 that is cut out to make room for head 5. PO Resp. 32–33.
`First, this argument presumes that Borchert’s Figure 1 does not illustrate a
`removable tool—a presumption that we have rejected as explained above.
`Second, Patent Owner’s argument and Dr. Osswald’s supporting testimony
`are inconsisent with Borchert itself. We determine that Dr. Kazmer more
`accurately describes Borchert’s “through opening 3” as referring to an
`opening that passes all the way through component 1 rather than a hole into
`a cavity located within component 1. Ex. 1011 ¶ 18. Dr. Kazmer’s
`conclusion is more consistent with the combined teachings of Figures 1
`and 2. For example, Figure 1 illustrates the tool positioned within a cavity
`
`17
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`IPR2017-01654
`Patent 9,079,490 B2
`of component 1 before head 5 is formed and in a position to prevent plastic
`from flowing past the interface between undercut portion 7 and the tool.
`Ex. 1003, Figure 1; Ex. 1011 ¶ 18. Figure 2 illustrates component 1 secured
`to wall 4 after Borchert’s tool shapes the flat distal surface of head 5 and
`after the tool has been removed from component 1. Ex. 1003 ¶¶ 24, 28–30,
`Figure 2. Once formed as shown in Figure 2, head 5 “provides for positively
`locking anchorage” of component 1 to wall 4. Id. ¶ 18.
`We determine that Petitioner has proven by a preponderance of
`evidence that Borchert’s tool includes a portion that constitutes the
`counterform of claims 1 and 12.
`c) Remaining Elements of Claims 1 and 12
`Except as discussed above, Patent Owner presents no other argument
`that Borchert fails to anticipate independent claims 1 and 12. See PO
`Resp. 21–33 (contending only that Borchert fails to describe a tool with a
`convex relief and a counterform). As explained in Part II.B above, Patent
`Owner has waived any argument for the continued patentability of these
`claims based upon elements introduced in those claims. We determine that
`Petitioner persuasively identifies the manner in which Borchert describes
`each step of the claimed methods and cites portions of Borchert to support
`its contentions. Pet. 16–23, 31–36 (citing Ex. 1003 ¶¶ 8, 10, 19, 26–28, 33,
`37, Figures 1, 2, 4, 7, 12; Ex. 1007 ¶¶ 41–54, 80–90). We adopt Petitioner’s
`argument and evidence as our own and determine that Petitioner has proven
`by a preponderance of evidence that Borchert describes all other elements of
`claims 1 and 12.
`
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`IPR2017-01654
`Patent 9,079,490 B2
`d) Conclusion
`For the reasons expressed above, we conclude that Petitioner has
`proven that Borchert anticipates claims 1 and 12.
`2. Dependent Claims
`Petitioner also contends that Borchert anticipates dependent claims 2,
`8, 13, and 14, each of which directly depends from claim 1. Patent Owner
`presents no argument that Borchert fails to anticipate these dependent claims
`beyond its contention that Borchert fails to anticipate claim 1. See PO
`Resp. 21–33 (contending only that Borchert fails to describe a tool with a
`convex relief and a counterform). As explained in Part II.B above, Patent
`Owner has waived any such argument for the continued patentability of
`these claims based upon elements introduced in those claims.
`Petitioner persuasively identifies the manner in which Borchert
`describes each step of the claimed methods and cites portions of Borchert to
`support its contentions. Pet. 23–30 (citing Ex. 1003 ¶¶ 8, 10, 19, 26–28, 33,
`37, Figures 1, 2, 4, 7, 12; Ex. 1007 ¶¶ 77–58, 70–73, 91–96). We adopt
`Petitioner’s argument and evidence as our own and determine that Petitioner
`has proven by a preponderance of evidence that Borchert anticipates
`dependent claims 2, 8, 13, and 14.
`E. CLAIM 2: OBVIOUSNESS IN VIEW OF BORCHERT AND JANNOT
`Claim 2 depends from claim 1 and further recites: “wherein the snap-
`riveting orifice is made in a fastening tab moulded as one part with the
`accessory or attached thereto.” Ex. 1001, 7:41–43.
`Petitioner contends that Borchert describes the “fastening tab” of
`claim 2 in connection with its argument that Borchert anticipates claim 2.
`Pet. 23–25 (equating portions of Borchert’s foot 2 with the claimed
`
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`IPR2017-01654
`Patent 9,079,490 B2
`“fastening tab”). Petitioner alternatively argues that the combination of
`Borchert and Jannot renders claim 2 unpatentable as obvious. Pet. 39–41.
`Patent Owner argues that Jannot is not prior art because the named
`inventors, Hervé Lemoine and Frédéric Jannot, were obligated to assign
`their inventions, including the subject matter of both Jannot and the
`application that led to the issuance of the ’490 patent, to Patent Owner.2 PO
`Resp. 16–17. Patent Owner proffers testimony from both men that supports
`its argument. Id. (citing Ex. 2007; Ex. 2008). Messrs. Lemoine and Jannot
`
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