Donghee America, Inc., Donghee Alabama, LLC v. Plastic Omnium Advanced Innovation and Research

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________

DONGHEE AMERICA, INC., DONGHEE ALABAMA,
LLC,
Appellants

v.

PLASTIC OMNIUM ADVANCED INNOVATION AND
RESEARCH,
Appellee
______________________

2019-1733
______________________

Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2017-
01945.
______________________

Decided: May 7, 2020
______________________

E
RIC SHUMSKY, Orrick, Herrington & Sutcliffe LLP,
Washington, DC, for appellants. Also represented by
M
ELANIE L. BOSTWICK, JEREMY PETERMAN; ALYSSA
MARGARET CARIDIS, Los Angeles, CA.

ROBERT CARTER MATTSON, Oblon, McClelland, Maier &
Neustadt, Alexandria, VA, for appellee. Also represented
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DONGHEE AMERICA, INC. v. PLASTIC OMNIUM ADVANCED
2
by ALEXANDER HADJIS, CHRISTOPHER RICCIUTI, VINCENT
SHIER.
______________________

Before MOORE, O’MALLEY, and TARANTO, Circuit Judges.
TARANTO, Circuit Judge.
Plastic Omnium Advanced Innovation and Research
owns U.S. Patent No. 9,399,326, which describes and
claims a process for fastening certain accessories to the in-
side of a plastic fuel tank during manufacturing. Donghee
America, Inc., and Donghee Alabama, LLC (together,
Donghee) successfully sought from the Patent and Trade-
mark Office (PTO) an inter partes review of several claims
of the ’326 patent under 35 U.S.C. §§ 311–319. In that re-
view, the PTO’s Patent Trial and Appeal Board concluded
that Donghee had proven claims 25–27, 33–34, and 44 un-
patentable but had not proven claims 1 and 13 unpatenta-
ble. Donghee appeals the Board’s ruling on claims 1 and
13. We affirm.
I
The ’326 patent describes and claims a method of at-
taching accessories to the inside of a plastic fuel tank by
stake-fastening during manufacture. Stake-fastening in-
volves attaching the accessory at issue directly to the inside
of a fuel tank by inserting a protrusion formed from the
plastic of the tank wall. The claimed attachment method
involves neither piercing the outer wall of the tank (which
might cause leaks) nor reheating the wall once the tank is
sealed (which presents problems, at least problems of man-
ufacturing efficiency). ’326 patent, col. 1, lines 21–28; id.,
col. 1, line 66, through col. 2, line 14.
Stake-fastening itself, even without a wall-piercing
step, is not a novel concept. Id., col. 1, line 62, through col.
2, line 3. In a prior-art version of stake-fastening described
in the ’326 patent, molten plastic is extruded and split into
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DONGHEE AMERICA, INC. v. PLASTIC OMNIUM ADVANCED
3
two sheets. See id., col. 1, lines 62–66. Each molten-plastic
sheet is molded to form one half of a fuel tank, and the fuel
tank is formed by joining the halves into a single body. See
id.; id., col. 1, lines 29–38. Part of the tank wall is then
locally reheated to melt the plastic and form the stake on
the inside of the tank wall that holds the accessory. Id.,
col. 1, line 62, through col. 2, line 14. The molten plastic of
the tank wall is forced into an orifice in the accessory and
deformed so that when the plastic cools and hardens, the
accessory is fastened to the inside of the tank wall without
any break in the inner wall material. See id., col. 2, lines
21–26. The ’326 patent improves this process by forming
the stake during the molding step using the already-molten
plastic, thus avoiding the reheating step. Id., col. 2, lines
15–32; see also id., col. 3, lines 33–42; id., col. 4, lines 39–
53.
The parties agree that claim 1 of the ’326 patent is il-
lustrative of the issue on appeal:
1. A method for stake-fastening an accessory
into a multilayer plastic fuel tank comprising a
thermoplastic outer layer and either a fuel-imper-
meable inner layer or fuel-impermeable inner sur-
face treatment,
wherein the accessory has a wall portion which
is equipped with at least one orifice which
passes through the wall portion of the ac-
cessory, and
said at least one orifice has a variation along
a plane perpendicular to the wall of the
accessory that is tailored to make it easier
to force molten plastic through the orifice,
said method comprising:
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DONGHEE AMERICA, INC. v. PLASTIC OMNIUM ADVANCED
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melting at least some of the plastic of which the
wall of the tank is made to form molten plas-
tic;
forcing some of the molten plastic through the
orifice of the accessory without becoming de-
tached from the remainder of the molten
plastic and without rupturing the fuel-im-
permeable inner layer or fuel-impermeable
inner surface treatment of the multilayer
plastic fuel tank wall, thereby forming mol-
ten plastic protruding through the orifice of
the accessory;
shaping the protruding molten plastic to provide
a self-formed plastic rivet, and allowing the
molten plastic to solidify; and
closing the multilayer plastic fuel tank with the
stake-fastened accessory therein; whereby
the size and shape of the orifice and/or of the
solidified multilayer plastic are such that
the accessory is mechanically fastened to the
inside wall of the multilayer plastic fuel
tank by at least some of the solidified plastic.
Id., col. 7, lines 2–31. Claim 13 limits the accessory to a
“ventilation device.” Id., col. 8, lines 1–2.
Donghee filed a petition seeking an inter partes review
of claims 1, 13, 25–27, 33–34, and 44 of the ’326 patent.
The Board, acting as delegee of the PTO’s Director, 37
C.F.R. §§ 42.4(a), 42.108, instituted the requested review.
In its final written decision, the Board construed part of
claim 1’s final limitation—“closing the multilayer plastic
fuel tank with the stake-fastened accessory therein”—to re-
quire that the accessory be stake-fastened to the fuel tank
wall before the tank is closed. Donghee America, Inc. v.
Plastic Omnium Advanced Innovation and Research, No.
IPR2017-01945, 2019 WL 339985, *5–6 (P.T.A.B. Jan. 25,
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DONGHEE AMERICA, INC. v. PLASTIC OMNIUM ADVANCED
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2019); J.A. 11–12. Based on that construction, the Board
concluded that the prior art relevant to this claim element
does not teach the “closing” limitation because it teaches
fastening the accessory simultaneously with or just after
closing the fuel tank. Donghee, 2019 WL 339985, at *6; J.A.
13. The Board concluded that the remaining challenged
claims, besides claim 13, are unpatentable for obviousness.
Donghee, 2019 WL 339985, at *25; J.A. 62.
Donghee timely appealed the Board’s construction of
the ’326 patent’s “closing” limitation and the resulting con-
clusion that claims 1 and 13 were not proven unpatentable.
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
II
“We review the Board’s claim construction de novo and
any underlying factual findings for substantial evidence.”
Kaken Pharm. Co. v. Iancu, 952 F.3d 1346, 1350 (Fed. Cir.
2020). The parties agree that in this case, the claims must
be given their broadest reasonable interpretation. We hold
that the Board’s understanding of the “closing” limita-
tion—that the accessory must be fastened before the tank
is closed—is the broadest reasonable interpretation. Be-
cause Donghee’s opening brief presents no argument for
disturbing the Board’s decision if we agree with the Board’s
claim construction, we affirm the Board’s conclusion that
claims 1 and 13 were not proven unpatentable.
Donghee argues that, under the broadest reasonable
interpretation, the “closing” limitation “requires only that
(1) the tank is closed and (2) there is an accessory inside
the closed tank that will attach to the finished tank wall
via stake-fastening,” not that the accessory actually be at-
tached to the wall before tank closure. Appellants’ Br. 25.
In other words, under Donghee’s proposed construction,
the limitation is met if, when the tank is being closed and
even when it is fully closed, it contains an accessory that is
capable of being stake-fastened and will later be stake-
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DONGHEE AMERICA, INC. v. PLASTIC OMNIUM ADVANCED
6
fastened. We conclude, as did the Board, that Donghee’s
reading is unreasonably broad.
Donghee reads the modifier “stake-fastened” in “stake-
fastened accessory” as simply describing the strategy used
to attach the accessory to the tank wall, whenever that at-
tachment process occurs in relation to the tank closing.
Donghee invokes as an analogy one informal usage of the
modifier “hard-wired” to characterize a smoke alarm that
is capable of being hard-wired or will ultimately be hard-
wired when installed. We need not question that some-
times “hard-wired smoke alarm” might be used in that
way, but the analogy does not bear the weight Donghee
puts on it. The present context is one in which one expects
more technically precise, not informal, usage. And the
phrase does not stand alone. The claim limitation provides
a context that ties “stake-fastened” to a particular tem-
poral event—the “closing” of the tank. That context
strongly suggests that the phrase is best read, based on the
past-tense form of “fasten” in the phrase, to refer to what
has already occurred at that time. The Board’s reading ac-
counts for that context; Donghee’s does not.
The Board’s reading is reinforced by the remainder of
the claim’s language. Every other recitation of “accessory”
in claim 1 is without any descriptive modifier. ’326 patent,
col. 7, lines 2–31. The addition of the term “stake-fastened”
in this particular limitation, itself a limitation about the
temporally defined step of “closing,” points to understand-
ing the phrase as using the past participle of “stake-fas-
ten”—it describes an accessory that has already been
fastened to the tank wall. Cf. Tuna Processors, Inc. v. Ha-
waii Int’l Seafood, Inc., 327 F. App’x 204, 209 (Fed. Cir.
2009) (holding that “the produced smoke” refers to smoke
that has already been produced).
Nothing in the specification shows that Donghee’s pro-
posed construction is reasonable despite the foregoing
claim-language considerations. Indeed, the specification
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DONGHEE AMERICA, INC. v. PLASTIC OMNIUM ADVANCED
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specifically distinguishes its claimed invention from stake-
fastening methods in which the stake-fastening occurs “in
an existing (already manufactured) fuel tank.” ’326 patent,
col. 1, line 62, through col. 2, line 14. Donghee’s interpre-
tation, covering accessories that are capable of being or will
be stake-fastened after closure, requires the technique that
the specification distinguishes from the claimed invention.
Donghee points to a passage in the specification that
refers to an “advantageous” embodiment. The specification
states that, “advantageously, the stake-fastening occurs at
the time of moulding of the tank by: thermoforming sheets;
compressing/blow-moulding sheets (as described in [an in-
corporated reference]); blow-moulding a parison [a hollow
tube] comprising at least one cut-out (as described in [Eu-
ropean] Patent Application EP 1110697, the content of
which for this purpose is incorporated by reference into this
application).” ’326 patent, col. 4, lines 43–53; see J.A. 1072–
76. The ’697 application identified in the last phrase de-
scribes a method for welding accessories to a tank wall
“during closure of the mold.” J.A. 1075. Donghee argues
that incorporating the ’697 application’s disclosure into the
’326 patent’s description results in an embodiment in
which stake-fastening occurs at least simultaneously with
tank closure.
This passage does not show an embodiment of the
claim at issue in which stake-fastening has not occurred
upon closing the tank. Notably, while the Board agreed
that the ’697 application discloses attaching accessories
during mold closure, Donghee, 2019 WL 339985, at *5; J.A.
11, it is tank closure that defines the event of the claim lim-
itation at issue. And mold closure is not the same as tank
closure, as the ’326 patent specification confirms. In one
embodiment, the mold-closure step shapes the tank walls,
but the mold opens to allow for the performance of addi-
tional steps before the tank halves are finally joined into
one cohesive tank body. ’326 patent, col. 4, line 62, through
col. 5, line 19.
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DONGHEE AMERICA, INC. v. PLASTIC OMNIUM ADVANCED
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The ’326 patent specification does not treat the ’697 ap-
plication’s mold-closing process as a process of tank clo-
sure, as claimed, but instead modifies the ’697 application’s
process to ensure that the tank has a stake-fastened acces-
sory before tank closure. The ’326 patent describes a pro-
cess in which a hydraulic ram performs the accessory-
staking step during the blow-molding step, and the mold is
subsequently opened to allow “retraction of the hydraulic
ram.” Id., col. 5, lines 3–22. The embodiment specifically
includes “a device preventing the slot or the edges of the
[plastic] from welding together during the initial closing of
the mould.” Id., col. 5, lines 22–25. Stake-fastening occurs
during the molding step, and the mold is subsequently
opened—with the stake-fastened accessory attached to the
tank wall—before the tank is finally closed. Id., col. 5, lines
3–25. The specification passage on which Donghee relies
therefore does not supply an embodiment that must be cov-
ered by the claim language and yet is outside the Board’s
construction.
1

In its reply brief, Donghee appears to argue that claims
1 and 13 are unpatentable even under the Board’s con-
struction of the “closing” limitation. Appellants’ Reply Br.
19–20. Because there is no such argument in Donghee’s
opening brief, we deem the argument forfeited and do not
address it on the merits. See Bannum, Inc. v. United
States, 779 F.3d 1376, 1382 (Fed. Cir. 2015); Appellants’
Br. 40–45 (arguing unpatentability of claims 1 and 13 un-
der only Donghee’s proposed construction). Having

1
Donghee argues that in the process described by
the ’697 application, the molding step occurs simultane-
ously with the final tank-closure step. Appellants’ Reply
Br. 9–10 (citing J.A. 1076). Even if that were the case, the
modification disclosed in the ’326 patent specification de-
scribes stake-fastening after mold closure, but before final
tank closure.
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DONGHEE AMERICA, INC. v. PLASTIC OMNIUM ADVANCED
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concluded that the Board properly construed the “closing”
limitation, we therefore affirm the Board’s conclusion that
Donghee did not prove claims 1 and 13 of the ’326 patent
unpatentable.
III
For the foregoing reasons, we affirm the decision of the
Board.
AFFIRMED
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