Donghee America Inc v. Plastic Omnium Advanced Innovation Research

1. Case Identification

• Case #: Unassigned
• Patent #: 9,399,327
• Filed: July 28, 2017
• Petitioner(s): Donghee America, Inc. and Donghee Alabama, LLC
• Patent Owner(s): Plastic Omnium Advanced Innovation and Research
• Challenged Claims: 1, 7, 9, 15

2. Patent Overview

• Title: Method for Fastening an Accessory in a Plastic Fuel Tank
• Brief Description: The ’327 patent discloses a method for mechanically fastening an accessory, which may be made of a dissimilar material like metal, inside a plastic fuel tank during the molding process. The method involves forcing molten plastic from the tank wall through an orifice in the accessory, which then solidifies to form a self-formed plastic rivet.

3. Grounds for Unpatentability

Ground 1: Obviousness over Van Schaftingen and Ishimaru - Claims 1, 7, 9, and 15 are obvious over Van Schaftingen in view of Ishimaru.

• Prior Art Relied Upon: Van Schaftingen (Application # 2001/0015513) and Ishimaru (Japanese Laid-open Patent Publication No. 2003-291208).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Van Schaftingen, a reference by one of the ’327 patent’s inventors, discloses all limitations of the challenged claims except for the specific stake-fastening method. Van Schaftingen teaches fastening accessories inside a plastic fuel tank during molding using a welding process. Petitioner asserted that Ishimaru supplies the missing element by teaching a method of stake-fastening an accessory to the wall of a fuel tank by forcing molten plastic from the tank’s preform through a through-hole (orifice) in the accessory to securely attach it. Ishimaru also discloses that this process occurs during molding, uses materials like those claimed, and can be applied to multi-layer tanks (for claim 9) and ventilation devices (for claims 7 and 15).
  • Motivation to Combine (for §103 grounds): A Person of Ordinary Skill in the Art (POSITA) would combine these references to gain a manufacturing advantage. Van Schaftingen’s welding method is unsuitable for joining dissimilar materials (e.g., a metal accessory to a plastic tank), whereas Ishimaru’s mechanical stake-fastening technique is designed for this purpose. Combining the methods would predictably result in a process for mechanically fastening accessories made of dissimilar materials into a fuel tank during its manufacture.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because both references operate in the same field (plastic fuel tank manufacturing) and address the same problem (attaching internal accessories), making the integration of Ishimaru’s well-known stake-fastening technique into Van Schaftingen’s manufacturing process straightforward.

Ground 2: Obviousness over Van Schaftingen, Ishimaru, and Harvey - Claims 1, 7, 9, and 15 are obvious over Van Schaftingen in view of Ishimaru and further in view of Harvey.

• Prior Art Relied Upon: Van Schaftingen (Application # 2001/0015513), Ishimaru (Japanese Laid-open Patent Publication No. 2003-291208), and Harvey (Patent 3,387,481).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented in the alternative, in case the limitation "shaping the protruding molten plastic" is construed narrowly to require a counterform rather than just natural flow. While the combination of Van Schaftingen and Ishimaru teaches all other elements, Harvey was asserted to explicitly disclose using a tool to shape the rivet. Harvey teaches a method for stake-fastening objects to a plastic sheet by forcing softened plastic through an orifice and then using a tool to compress and flatten the protruding plastic to form a rivet head.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to add Harvey's technique to the Van Schaftingen/Ishimaru combination to create a stronger, more secure attachment. Using a tool as taught by Harvey to flatten the rivet head would create a greater surface area, improving the mechanical bond between the accessory and the tank wall, which is a predictable improvement.
  • Expectation of Success (for §103 grounds): Harvey is analogous art as it pertains to the problem of attaching components to plastic articles, and its method of using a tool to form a rivet is a well-understood mechanical principle that would be expected to work as intended when applied to the process of the primary references.

Ground 3: Obviousness over Van Schaftingen and Staargaard - Claims 1, 7, 9, and 15 are obvious over Van Schaftingen in view of Staargaard.

• Prior Art Relied Upon: Van Schaftingen (Application # 2001/0015513) and Staargaard (Application # 2004/0072006).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground offered Staargaard as an alternative to Ishimaru for teaching the missing stake-fastening element. Staargaard discloses a method of attaching a metal component to a plastic component by molding plastic through an opening in the metal part to form a flange (rivet). Staargaard explicitly states its method is applicable to various molding processes, including the blow molding used in Van Schaftingen, and for attaching vehicle components.
  • Motivation to Combine (for §103 grounds): The motivation is identical to that in Ground 1. A POSITA would combine Van Schaftingen’s fuel tank manufacturing process with Staargaard’s method for joining dissimilar materials to achieve a manufacturing advantage. Staargaard’s express disclosure of its applicability to blow molding and vehicle components makes the combination particularly straightforward and logical.
  • Expectation of Success (for §103 grounds): A POSITA would expect success because both references are analogous art aimed at attaching components to molded plastic articles. Applying Staargaard’s stake-fastening method within Van Schaftingen’s process would be a predictable combination of known techniques.

4. Key Claim Construction Positions

• "shaping the protruding molten plastic": Petitioner proposed this term means "manipulating or allowing the protruding molten plastic to form a shape." This construction is central to the petition's strategy. It is argued to be broad enough to cover both shaping by natural flow (as taught by Ishimaru) and shaping with a counterform/tool (as taught by Harvey), allowing the invalidity arguments to succeed under either interpretation.
• "self-formed plastic rivet": Petitioner proposed this term means "a protrusion formed in-situ from molten plastic from the wall of the tank." This construction supports the argument that the basic structures taught by Ishimaru and Staargaard meet the claim limitation without requiring a specific, pre-defined rivet shape beyond the functional fastening protrusion.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 1, 7, 9, and 15 of the ’327 patent as unpatentable under 35 U.S.C. §103.