`
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DONGHEE AMERICA INC., and
`DONGHEE ALABAMA LLC.,
`Petitioners,
`
`v.
`
`PLASTIC OMNIUM ADVANCED INNOVATION AND RESEARCH,
`Patent Owner.
`____________
`
`IPR2017-01654 (Patent 9,079,490 B2)
`IPR2017-01890 (Patent 9,399,327 B2)
`IPR2017-01945 (Patent 9,399,326 B2)
`____________
`
`Record of Oral Hearing
`Held: November 5, 2018
`____________
`
`
`
`
`Before MITCHELL G. WEATHERLY, CHRISTOPHER M. KAISER, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2017-01654 (Patent 9,079,490 B2)
`IPR2017-01890 (Patent 9,399,327 B2)
`IPR2017-01945 (Patent 9,399,326 B2)
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`ALYSSA CARIDIS, ESQUIRE
`VANN PEARCE, ESQUIRE
`Orrick, Herrington & Sutcliffe, LLP
`777 South Figueroa Street
`Suite 3200
`Los Angeles, CA 90017
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`VINCENT SHIER, ESQUIRE
`CHRISTOPHER RICCIUTI, ESQUIRE
`Oblon, McClelland, Maier & Neustadt, LLP
`1940 Duke Street
`Alexandria, VA 22314
`
`
`
`
`The above-entitled matter came on for hearing on Monday, November
`
`5, 2018, commencing at 1:00 p.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
`
`
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`2
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`IPR2017-01654 (Patent 9,079,490 B2)
`IPR2017-01890 (Patent 9,399,327 B2)
`IPR2017-01945 (Patent 9,399,326 B2)
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE WEATHERLY: All right. Thank you for bearing with
`
`
`us while we get our electronic systems in order. So I've already said good
`afternoon, I'll say it again. This is a hearing for three proceedings, IPR
`2017-01654, IPR 2017-01890 and IPR 2017-01945 relating to U.S. patent
`numbers 9,079,490, 9,399,327 and 9,399,326 respectively.
`
`
`Petitioner is Donghee America Inc., and Donghee Alabama
`LLC., and Patent Owner is Plastic Omnium Advanced Innovation and
`Research. I'm Judge Weatherly and I'm joined to my left by Judge Kinder
`and Judge Kaiser of our Denver Regional Office is joining us remotely.
`Because the camera through which Judge Kaiser is viewing the proceedings
`is located up behind my head you may want to look at that camera when
`you're addressing him, it may make him feel a little more part of the
`proceedings here. Please also while you're making your presentation be sure
`to identify the slide number that you're using if there is one so that it helps
`Judge Kaiser follow along and it also makes the transcript easier for us to
`use after the fact.
`
`
`Pursuant to our Hearing Order each party has 60 minutes to
`present their argument for all three cases. They can divide it among the three
`proceedings as they see fit. Petitioner will proceed first because you bear
`the burden of proving unpatentability followed by the Patent Owner.
`Petitioner you can reserve rebuttal time, Patent Owner you can reserve
`rebuttal time also and you'll have the last word today during the proceeding.
`Before we begin, I recognize Mr. Ricciuti on the Patent Owner's side but I
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`IPR2017-01654 (Patent 9,079,490 B2)
`IPR2017-01890 (Patent 9,399,327 B2)
`IPR2017-01945 (Patent 9,399,326 B2)
`
`think we have new counsel appearing, at least for the argument today for
`Donghee, so if you could stand and introduce yourselves and anyone you've
`brought with -- oh, I see that no one has brought anyone with them today so.
`
`
`MS. CARIDIS: Good afternoon, Your Honors. Alyssa Caridis
`on behalf of Petitioners from Orrick, Herrington & Sutcliffe and with me is
`my partner, Vann Pearce, also from Orrick.
`
`
`JUDGE WEATHERLY: Okay. And who will be making the
`presentation?
`
`
`MS. CARIDIS: I will be.
`
`
`JUDGE WEATHERLY: And pardon me for asking, but your
`name again?
`
`
`MS. CARIDIS: Alyssa Caridis.
`
`
`JUDGE WEATHERLY: Caridis.
`
`
`MS. CARIDIS: Yes.
`
`
`JUDGE WEATHERLY: All right, great. Thank you very
`much. How much time would you like to reserve for rebuttal?
`
`
`MS. CARIDIS: Fifteen minutes, Your Honor.
`
`
`JUDGE WEATHERLY: Fifteen minutes. And for Patent
`Owner?
`MR. SHIER: Vincent Shier from Oblon representing the Patent
`
`
`Owner Plastic Omnium. With me today is Mr. Chris Ricciuti who will be
`arguing on behalf of the Patent Owner.
`
`
`JUDGE WEATHERLY: All right. Thank you very much. So
`how much time would Patent Owner like to reserve for surrebuttal, do you
`know?
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`IPR2017-01654 (Patent 9,079,490 B2)
`IPR2017-01890 (Patent 9,399,327 B2)
`IPR2017-01945 (Patent 9,399,326 B2)
`
`MR. SHIER: Ten minutes, Your Honor.
`
`
`JUDGE WEATHERLY: Ten minutes. All right. Petitioner,
`
`
`whenver you're ready you can come to the podium and after everything is set
`up and just let us know --
`
`
`MS. CARIDIS: May I pass up physical exhibits, Your Honor?
`
`
`JUDGE WEATHERLY: Absolutely.
`
`
`JUDGE KINDER: All 178 pages of them?
`
`
`MS. CARIDIS: Yes. I promise not to talk about all of them.
`
`
`JUDGE WEATHERLY: Whenever you're ready.
`
`
`MS. CARIDIS: May it please the Board. Again, my name is
`Alyssa Caridis and I will be arguing today on behalf of the Donghee
`Petitioners. Throughout my time this afternoon I will attempt to address
`what I believe to be the areas of dispute between the parties and the three
`IPRs that we are here to discuss. Of course, if there are any elements or
`questions that Your Honors have that I do not address I will be happy to
`address those.
`
`
`The subject of the three IPRs that we're here today to discuss
`relate to the concept of snap-riveting or stake fastening accessories to fuel
`tank walls. Of course, the parties have had prior oral arguments before Your
`Honors. Those patents in those IPRs dealt with how to make the fuel tank
`shells themselves. These IPRs, these patents, discuss how to attach
`accessories to the fuel tank so there's a little bit of a spin on the focus of
`these patents.
`
`
`So let's take a step back and remind ourselves with snap-
`riveting is and here I'm looking at slide 6, the 490 patent gives a description
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`IPR2017-01654 (Patent 9,079,490 B2)
`IPR2017-01890 (Patent 9,399,327 B2)
`IPR2017-01945 (Patent 9,399,326 B2)
`
`of what is snap-riveting and I'll preface before I begin that snap-riveting and
`stake fastening are two terms for the same process that are used
`interchangeably throughout these patents and throughout the parties'
`briefing, so I'll try to stick with one but if I flip back and forth there's no
`substantive distinction between the two.
`
`
`So the 490 patent teaches us that snap-riveting is a common
`technique in the field of metallurgy and it's where a rivet is formed from
`molten material pushing through an orifice in a component that you're trying
`to attach to another component. So the patents at issue today purport to
`claim a specific type of snap-riveting, the specific materials and the specific
`application.
`So with that in mind and staying with the 490 patent, there are
`
`
`five different grounds of unpatentability that the Petitioners have presented
`here and I believe those are on slide 3. You can see that each of these
`grounds rely on the Borchert prior art reference and while there are some
`claim construction disputes between the parties, none of those have any
`material impact on the parties' arguments so let's talk about what's actually
`in dispute.
`On slide 8 we see a visualization that summarizes the
`
`
`unpatentability arguments for Borchert. On the left you have an annotated
`version of figure 3 of the 490 patent. The green line represents a cross-
`section of an accessory that's to be attached to a fuel tank. There are a few
`structural features to note here. The accessory itself has a concave shape or
`a cup shape. At the bottom of the cup there is a hole through which the
`stake fastening is going to occur.
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`IPR2017-01654 (Patent 9,079,490 B2)
`IPR2017-01890 (Patent 9,399,327 B2)
`IPR2017-01945 (Patent 9,399,326 B2)
`
`The other part of this figure 3, again staying on the left hand
`
`
`side of slide 8, is there is a blue outline of a tool that is pressed into the
`concave cup in order to assist with the stake fastening. An analogy for this
`particular geometry, you can think of a piston and a cylinder in an engine.
`You have a concave portion fitting into a cup, or a convex portion fitting
`into a cup or a concave portion.
`
`
`So staying on this slide 8, on the right hand side we have an
`annotated figure 1 of Borchert and we see the same structural features that
`we had in figure 3 of the 490 patent. The accessory, which Borchert refers
`to a fitment component, is highlighted in green and is a cup or convex shape
`and a tool fits into that portion is highlighted in blue and is a convex shape.
`
`
`So for grounds 1, 2, 3 and 5 which cover all of the challenged
`claims, the only question that the Board really needs to consider here is
`whether figure 1 of Borchert shows a convex tool. It's because Patent
`Owner's only argument for grounds 1, 2, 3 and 5 is that the center portion
`that's highlighted here in blue in figure 1 is not actually a tool but is instead
`part of the accessory, part of the fitment component.
`
`
`So I could walk through all the elements of all the claims and
`all the slides, but instead with the Board's indulgence I think we'll just stick
`with --
`JUDGE WEATHERLY: I think you've correctly identified
`
`
`where the dispute is --
`
`
`MS. CARIDIS: -- this dispute.
`
`
`JUDGE WEATHERLY: -- in this IPR.
`
`
`MS. CARIDIS: Fantastic.
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`IPR2017-01654 (Patent 9,079,490 B2)
`IPR2017-01890 (Patent 9,399,327 B2)
`IPR2017-01945 (Patent 9,399,326 B2)
`
`JUDGE WEATHERLY: So I'm happy to discuss just that.
`
`
`MS. CARIDIS: Okay. So turning to slide 13. We have the
`
`
`figure on the left hand side is figure 1 of Borchert and we have the accessory
`moving towards the fuel tank wall which is labeled 4. On the right hand
`side, we have kind of the after picture. You have the accessory that has been
`attached to the fuel tank wall and you have a rivet which is labeled element
`5. Patent Owner argues that the tool that we can see in figure 1 is really just
`part of the accessory which is labeled element 1 in the figure and there are
`several reasons why this is wrong.
`
`
`First, focusing on figure 1 we see that the accessory which is
`labeled element 1 is -- we see the profile of the accessory that is hatched.
`CFR tells us that hatching means it's a cross-section. CFR tells us that parts
`of the same item that are cross-sectioned need to be hatched consistently. So
`in this particular case element 1 is hatched. Element 1 is the accessory. The
`center tool is shaded differently. The center tool is shaded under the CFR as
`if it was a cylinder. In addition, and to underscore this point, paragraph 26
`of Borchert explains that "built-in fitment component 1 is shown in section."
`That tool in the middle is not shown in section.
`
`
`JUDGE WEATHERLY: Right.
`
`
`JUDGE KINDER: Is the drawing proper from a patent drawing
`standpoint? If that is truly a tool and it's meant to show the shape, shouldn't
`it also show the cross-section in a different hatch?
`
`
`MS. CARIDIS: Your Honor, I believe that that would be a way
`to illustrate the fact that the center tool and the wall are different, or the
`center tool and the accessory are different components. I don't believe that
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`

`

`IPR2017-01654 (Patent 9,079,490 B2)
`IPR2017-01890 (Patent 9,399,327 B2)
`IPR2017-01945 (Patent 9,399,326 B2)
`
`there is a mandate that if you're showing a cross-section that all elements
`have to be cross-sectioned. Here there is a clear design convention that
`shows that that center tool is shaded as a cylinder, therefore indicating that it
`is just a separate component. It is not shown in cross-section, it is not
`hatched
`JUDGE KINDER: Okay.
`
`
`MS. CARIDIS: We can also see on figure 1 that the tool and
`
`
`the accessory are cut off at different portions on the right hand side of the
`figure indicating again different components. We see a gap around the tool
`and the accessory, and then of course comparing figure 1 with figure 2 once
`the accessory has been pushed against the wall and a rivet has been formed,
`the tool is no longer shown because the accessory, the stake fastening has
`been completed. So for at least these reasons one of ordinary skill in the art
`looking at figure 1 and 2 would understand that figure 1 shows a convex tool
`pushing into the concave portion of the accessory.
`
`
`Patent Owner has two main arguments to rebut this conclusion.
`First, looking at slide 14. Patent Owner argues that the cut out portion
`which is labeled 7 in figure 1 is described as an "undercut" and Patent
`Owner asserts that because it's described as an undercut there must be some
`portion of the accessory that exists to the right of that region 7. Patent
`Owner is mistaken. First, an undercut depends on your point of view. If
`you were standing at the wall looking towards the accessory, the region 7 is
`undercut. It is cut out from the person's point of view standing at that wall
`looking over.
`
`
`In addition, Borchert doesn't just talk about region 7 as
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`

`

`IPR2017-01654 (Patent 9,079,490 B2)
`IPR2017-01890 (Patent 9,399,327 B2)
`IPR2017-01945 (Patent 9,399,326 B2)
`
`undercut. It says it's beveled or undercut. Patent Owner's assertion is that
`region 7 is basically a cave that it insists that there are portions of the
`accessory that exist to the right of it but a bevel is essentially lopping a
`corner off of an edge which means that there must be an edge to lop off.
`
`
`So for both of these reasons, undercut does not mean that
`there's something on the right hand side. In addition of course the patent is
`consistent that where there are solid walls of the fitment component 1 that is
`shown in hatch, there are no solid walls to the right of undercut 7.
`
`
`Patent Owner's second argument focuses on the remaining
`figures of Borchert. Now before we get to those figures there should be no
`question that a single illustration or a single figure in a prior art reference
`can anticipate and that's what we have in figure 1 and figure 2. In addition,
`Borchert describes figures 1 and 2 as being views of how the fitment
`components are joined to the wall, so those figures are intended to show how
`the joining happens. In contrast, the remaining figures in Borchert show the
`overall process of mold openings and closings, sheet formation and
`component movement. So they show the overall process as opposed to how
`the things are actually attached to the wall.
`
`
`So Patent Owner would have us take figures 3 through 12
`literally, discarding the structure that is clearly set forth in figures 1 and 2.
`This of course is improper particularly because the Borchert patent
`specifically says even in figures 3 through 12 the component is of the
`configuration of figures 1 and 2. So put simply, we just can't ignore what
`figures 1 and 2 would teach a person of ordinary skill.
`
`
`So if the Board agrees that figure 1 shows a convex relief of a
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`

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`IPR2017-01654 (Patent 9,079,490 B2)
`IPR2017-01890 (Patent 9,399,327 B2)
`IPR2017-01945 (Patent 9,399,326 B2)
`
`tool, all challenged claims of the 490 patent should be found unpatentable.
`For grounds 1, 2, 3 and 5 again which cover all challenged claims that is the
`only argument that Patent Owner is making.
`
`
`JUDGE WEATHERLY: I know that you make arguments in
`your reply about the status of Jannot --
`
`
`MS. CARIDIS: Yes.
`
`
`JUDGE WEATHERLY: -- and whether it is or isn't prior art
`and your contention to this day really is still that it is?
`
`
`MS. CARIDIS: So our contention to this day that it is, that
`Patent Owner has not --
`
`
`JUDGE WEATHERLY: What?
`
`
`MS. CARIDIS: -- met its burden.
`
`
`JUDGE WEATHERLY: We have unrebutted testimony from
`the inventors themselves on the point about their obligation to assign
`inventions, right?
`
`
`MS. CARIDIS: We have declarations from the Patent Owners,
`you're correct, from the --
`
`
`JUDGE WEATHERLY: I know your reply tries to make
`something out of the failure of the Patent Owner to produce a written
`agreement but a written agreement's probably not necessary is it?
`
`
`MS. CARIDIS: I think that there are --
`
`
`JUDGE WEATHERLY: I mean it's not like a statute of frauds
`kind of situation with a transfer of real property where if you don't have it in
`writing it doesn't exist, right?
`
`
`MS. CARIDIS: You're correct, Your Honor. I believe that
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`IPR2017-01654 (Patent 9,079,490 B2)
`IPR2017-01890 (Patent 9,399,327 B2)
`IPR2017-01945 (Patent 9,399,326 B2)
`
`there are case law saying that their assertions without the underlying
`assignment agreements --
`
`
`JUDGE WEATHERLY: Uh-huh.
`
`
`MS. CARIDIS: -- should be called into question, but I don't
`think we need to even get to that issue, Your Honor, because the Jannot prior
`art reference is only used as an obviousness combination --
`
`
`JUDGE WEATHERLY: No, I understand that.
`
`
`MS. CARIDIS: -- to claim 2.
`
`
`JUDGE WEATHERLY: And I also understand your argument
`that the Patent Owner hasn't addressed your allegations that Borchert
`anticipates claim 2.
`
`
`MS. CARIDIS: Correct, Your Honor.
`
`
`JUDGE WEATHERLY: So this is one of those circumstances
`in which I wish that you'd been a little more, you're making an argument
`that's kind of a weak argument.
`
`
`MS. CARIDIS: No, and that's fair, Your Honor, and that's why,
`you know, I wasn't --
`
`
`JUDGE WEATHERLY: I guess it's the only argument you
`could make.
`MS. CARIDIS: Sure.
`
`
`JUDGE WEATHERLY: But there's no cross-examination of
`
`
`Mr. Jannot, correct?
`
`
`MS. CARIDIS: No, there's not.
`
`
`JUDGE WEATHERLY: So really his testimony does stand
`unrebutted --
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`IPR2017-01654 (Patent 9,079,490 B2)
`IPR2017-01890 (Patent 9,399,327 B2)
`IPR2017-01945 (Patent 9,399,326 B2)
`
`MS. CARIDIS: Correct, Your Honor.
`
`
`JUDGE WEATHERLY: -- on the point of whether he had an
`
`
`obligation to assign inventions before the inventions claimed in the patent at
`issue, the 490 patent.
`
`
`MS. CARIDIS: That is correct, Your Honor.
`
`
`JUDGE WEATHERLY: Okay.
`
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`MS. CARIDIS: His testimony is unrebutted.
`
`
`JUDGE WEATHERLY: Okay.
`
`
`MS. CARIDIS: So unless there are any questions on the 490
`patent, I think we can turn to the 326.
`
`
`JUDGE WEATHERLY: I don't have any further questions.
`Judge Kaiser, do you have any questions?
`
`
`JUDGE KAISER: No, thank you.
`
`
`JUDGE WEATHERLY: All right. Great. We have about 31
`minutes left for you.
`
`
`MS. CARIDIS: Thank you, Your Honor.
`
`
`JUDGE WEATHERLY: Of your original 45.
`
`
`MS. CARIDIS: So Petitioners have presented three grounds in
`the IPR relating to the 326 patent and those are on slide 43. I'm going to go
`through the 326 patent and I will address this again at the end, but many of
`the arguments for the 326 patent are the same as the 327 patent so I'll be
`spending the bulk of the remainder of my time on the 326 and then I'll just
`point out how the same arguments are mirrored in the 327 IPR.
`
`
`So in the original Institution decision this Board rejected
`ground 1 because it found that Petitioners had not established that Ishimaru
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`

`IPR2017-01654 (Patent 9,079,490 B2)
`IPR2017-01890 (Patent 9,399,327 B2)
`IPR2017-01945 (Patent 9,399,326 B2)
`
`disclosed molten plastic in the way that the 326 patent claims. Post SAS that
`ground was reintroduced into the IPR and at this point there's no dispute
`between the parties or their experts that Ishimaru discloses the molten plastic
`as it's required by the 326 claims, and I can go into that if Your Honors
`would like or I can go to the next element that's in dispute between the
`parties.
`So looking at slide 47. Ground 1 covers obviousness in light of
`
`
`the Ishimaru reference. On slide 47 we can see the demonstrative Kazmer 1
`which includes figure 14 of Ishimaru. That figure shows a plastic fuel tank
`with several accessories attached into it. One of those accessories is subtank
`21 and the specification explains, and this is at the right hand slide of this
`slide 47, that the bottom portion of subtank includes a through- hole 25 in
`reverse taper shape. The specification goes on to explain that with this
`shape a part of the preform 14 or a part of the fuel tank wall can be caused to
`penetrate through the through-hole 25 during the press molding and, as a
`result, the subtank can be more securely attached to the outer wall.
`Petitioner's expert created the blow-up that is seen on the right hand side of
`Kazmer 1 in order to illustrate exactly what's described in the text. So this
`disclosure shows that Ishimaru teaches a stake fastening process.
`
`
`So this leads us to the first real question in dispute on Ishimaru.
`Patent Owner argues that Ishimaru does not teach stake fastening because
`according to Patent Owner, stake fastening requires attaching by a rivet and
`by no other means, and Patent Owner argues that Ishimaru teaches welding
`in addition to this mechanical stake fastening component and therefore
`cannot serve as the basis for obviousness.
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`IPR2017-01654 (Patent 9,079,490 B2)
`IPR2017-01890 (Patent 9,399,327 B2)
`IPR2017-01945 (Patent 9,399,326 B2)
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`So turning to slide 49. Now Patent Owner never offered a
`
`
`claim construction for stake fastening. It simply contends that stake
`fastening must mean attaching an accessory to a fuel tank wall in lieu of any
`other means of attaching. So, in other words, Patent Owner is effectively
`asking this Board to read a negative limitation into these claims, to read a
`negative limitation of what it's claimed as stake fastening and accessory and
`there is no other way that the accessory can be attached to a fuel tank wall.
`Reading negative limitations into claims is of course incredibly disfavored.
`There's no basis to do so here and particularly given that these are
`“comprising” claims, so there are obviously other elements that could be
`included in a prior art process or in an accused infringing process that don't
`follow the exact strictures of this claim. “Comprising” means you can do
`some other stuff.
`
`
`So even if Patent Owner is correct that the reference also
`teaches welding, it should be undisputed that the reverse taper hole of
`Ishimaru is meant to create a mechanical attachment between the accessory
`and the fuel tank. That's the express purpose of the through-hole as
`described in paragraph 34 of Ishimaru and again it's confirmed by the Patent
`Owner's experts. The Patent Owner's expert does contend that the Ishimaru
`reference discloses welding but he has to acknowledge that there's this hole
`that creates a mechanical attachment. So again, even if the reference
`discloses both welding and a mechanical attachment by a self-formed rivet,
`it cannot be disputed that it teaches the self-formed rivet.
`
`
`So turning to the next limitation in dispute, looking at slide 51.
`Each of the challenged claims in the 326 patent require that the orifice has a
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`IPR2017-01654 (Patent 9,079,490 B2)
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`variation along a plane perpendicular to the wall of the accessory and that
`that variation is tailored to make it easier to force molten plastic through the
`hole, or the orifice. Now at the very least such a limitation would have been
`obvious to one of ordinary skill in the art. It is undisputed that a person of
`ordinary skill would know that rounding corners or chamfering which are
`both examples of a variation perpendicular to the plane here, would make it
`easier to force molten plastic through. Petitioner's expert explained this in
`his declaration even including contemporaneous technical literature and
`teaching materials that we see here on slide 51 to confirm the point, and
`importantly Patent Owner does not dispute this fact. So it is undisputed that
`the state of the art at this relevant time frame included the knowledge that
`chamfering or rounding corners promoted plastic flow. So despite this,
`Patent Owner argues that Ishimaru teaches away from rounded or chamfered
`corners.
`To support this argument, and I'll turn to slide 52, Patent Owner
`
`
`points to the same paragraph 34 that we were looking at earlier and claims
`that because Ishimaru describes the shape of the through-hole as having "the
`diameter becoming smaller in the direction of the outer wall" a person of
`ordinary skill in the art would think that this reference is teaching away from
`rounded or chamfered corners edges. But paragraph 34 of Ishimaru justifies
`the general shape of the through-hole. The proposed combination rounding
`the edges of that through-hole would not alter its fundamental shape of a
`reverse taper. Much the same way that we call a soccer ball round even
`though there are grooves or valleys where the various hexagonal leather
`pieces are sown together, or we call a baseball round even though there are
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`raised red stitches around a ragged surface, it is still round. The reverse
`taper --
`JUDGE KAISER: Those are -- sorry, those are examples
`
`
`where the departure from the overall shape is really small. How do we know
`-- I mean, is there anything that suggests that the rounding of the corners is
`always going to be much smaller than the depth of the sort of V shaped
`orifice that's described in Ishimaru?
`
`
`MS. CARIDIS: Sure. Your Honor, I think we can look back at
`slide 51 and we see that it's a -- it's on a sliding scale. The more you round
`the corners, the easier it is to make plastic flow through. If you round the
`corners a little bit, it's going to be easier to make the plastic flow through
`and so one of ordinary skill in the art would know that rounding the corners
`somewhat while keeping the reverse taper shape in order to form a self-
`formed plastic rivet would be advantageous here.
`
`
`In addition, teaching away in the context of obviousness of
`course requires a reference to criticize, discredit or otherwise disparage the
`solution claimed and it can hardly be said that a description of a general
`shape of a hole criticizes the possibility of rounding corners and again
`particularly here where it's undisputed that a person of ordinary skill in the
`art would know that rounding corners would make it easier for plastic to
`flow around that corner into that hole.
`
`
`So the next limitation at issue I believe is the shaping step
`which is on slide 58 of Petitioner's demonstratives. Patent Owner argues at
`page 24 of its response that Ishimaru describes no structure that would stop
`the flow of plastic. This is an erroneous argument because Patent Owner
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`itself concedes that the rivet may be shaped by the natural flow of plastic.
`That's at page 16 of Patent Owner's response. In other words, there's no
`requirement for a tool or counterform of any shape to actively, or of any sort
`to actively shape the rivet. In light of this admission there's no need for
`Ishimaru to describe or disclose any structure that stops the flow of plastic.
`Instead, the rivet is shaped by the reverse taper shape of the hole and it's
`unrebutted that with rounded corners a person of ordinary skill in the art
`would understand how to design the process such that a sufficient amount of
`plastic enters the Ishimaru through-hole to shape and form a rivet.
`
`
`JUDGE KAISER: This gets close to a concern I had that
`doesn't seem to be covered terribly well in either party's set of briefs and
`that's the definition you put up at the very beginning of your argument about
`snap-riveting talks about preferably forming something like a head on a
`rivet. There isn't one obviously in Ishimaru or in Dr. Kazmer's drawings
`based on Ishimaru. Do you need a rivet head in order to have a snap-rivet or
`a stake fastener, or is this sort of conical shaped hole plugged with hardened
`plastic going to be enough? If so, where's the evidence?
`
`
`MS. CARIDIS: Your Honor, you noted properly that the 326
`patent does say that the rivet shape or the plateau is preferable and it's not a
`requirement. I can tell you that in the underlying District Court litigation,
`Patent Owner has taken the position that a reverse taper or conical shape
`without an actual rivet formation is sufficient to meet the claims of these
`patents, and I'm sure that Mr. Ricciuti will correct me if I'm wrong, but I
`believe that there are some at least descriptions of embodiments in the patent
`that don't have an actual rivet formed by a counterform, at least in the 326
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`patent.
`So the final limitation that I have on my list to discuss in this
`
`
`ground is the closing limitation of claim 1 of the 326 patent and we can see
`that here on slide 59. The claim element in relevant part reads closing the
`multilayer plastic fuel tank with the stake fastened accessory therein and the
`issue here is really whether this claim dictates an order of steps. Patent
`Owner asserts that the accessories must be stake fastened inside of the tank
`prior to the tank being closed. But the language of the claim does not dictate
`an order of steps as much as it describes what's achieved. You close the tank
`and once you close it, you have the accessories stake fastened inside. The
`claim language doesn't say closing after attaching.
`
`
`Patent Owner would have us focus on the "ed" that follows the
`phrase stake fasten, stake fastened, and argues that that indicates a past
`tense, that the accessories must be stake fastened prior to closing. But stake
`fastened in this context is an adjectival phrase. It's not being used as a verb
`to denote any sort of timing. It's describing the accessories that are inside
`the tank after it's closed which is the exact point of the 326 patent. The
`specification talks about the need to be able to attach accessories inside a
`fuel tank while the fuel tank is being manufactured. There's no emphasis or
`teaching that the accessory must be attached before the tank is fully closed.
`There's no teaching that riveting before a tank closure is of any sort of
`importance, let alone a key concept in this patent.
`
`
`The key concept in these patents, and you can see this at the
`bottom of column 1 and the top of column 2 of the 326, is that the riveting
`happens at the same time that the tank is being manufactured so that you
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`don't have to apply localized heating after the fact or cut into the tank after
`the fact. That's what