Case: 19-1733   Document: 39     Page: 1   Filed: 05/07/2020




        NOTE: This disposition is nonprecedential.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
                 ______________________

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

    ROBERT CARTER MATTSON, Oblon, McClelland, Maier &
 Neustadt, Alexandria, VA, for appellee. Also represented
Case: 19-1733     Document: 39       Page: 2    Filed: 05/07/2020




 2       DONGHEE AMERICA, INC.      v. PLASTIC OMNIUM ADVANCED



 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
Case: 19-1733     Document: 39      Page: 3     Filed: 05/07/2020




 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:
Case: 19-1733    Document: 39      Page: 4    Filed: 05/07/2020




 4       DONGHEE AMERICA, INC.   v. PLASTIC OMNIUM ADVANCED



       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,
Case: 19-1733     Document: 39      Page: 5   Filed: 05/07/2020




 DONGHEE AMERICA, INC.   v. PLASTIC OMNIUM ADVANCED          5



 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-
Case: 19-1733    Document: 39      Page: 6    Filed: 05/07/2020




 6       DONGHEE AMERICA, INC.   v. PLASTIC OMNIUM ADVANCED



 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
Case: 19-1733     Document: 39      Page: 7    Filed: 05/07/2020




 DONGHEE AMERICA, INC.   v. PLASTIC OMNIUM ADVANCED           7



 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.
Case: 19-1733     Document: 39      Page: 8    Filed: 05/07/2020




 8       DONGHEE AMERICA, INC.    v. PLASTIC OMNIUM ADVANCED



     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.
Case: 19-1733    Document: 39       Page: 9   Filed: 05/07/2020




 DONGHEE AMERICA, INC.   v. PLASTIC OMNIUM ADVANCED         9



 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
