Owens Corning v. Fast Felt Corp (Fed. Cir. 2017)
After being sued for infringing Fast Felt’s U.S. Patent No. 8,137,757, Owens Corning retaliated with a petition for inter partes review. Although the PTO instituted the IPR, the PTAB eventually determined that the claims were not obvious — i.e., that “Owens Corning had failed to show obviousness of any of the challenged claims.” On appeal, the Federal Circuit has reversed — holding that under a proper BRI claim construction, that the claims are obvious.
Representative Claim 1 is directed to a method of making roofing materials with reinforced nail tabs. Particularly, the claim requires:
depositing tab material onto the surface of said roofing or building cover material at a plurality of nail tabs from a lamination roll, said tab material bonding to the surface of said roofing or building cover material by pressure between said roll and said surface.
Basically, the reinforcement tab material comes from a laminate roll and is stuck onto the building material using pressure.
The closest prior art (Lassiter) taught creating reinforced tabs on roofing material by injecting a liquid that later solidifies. U.S. Patent No. 6,451,409. Those were combined with other non-roofing references taught adding reinforcement material to a substrate from a lamination roll.
The PTAB rejected the combination of these references — finding that Lassiter appears to teach away from using pressure or heat to add the reinforcement because it destabilizes asphalt roofing materials – and thus is not easily modifiable.
On appeal, the Federal Circuit rejected the analysis – finding that the claims do not require “asphalt roofing materials” but rather extend to cover any “roofing or building cover material.”
It is true that the preferred embodiments in the ’757 patent focus on roofing materials that are or will be coated or saturated with asphalt or asphalt mix. . . . [However] The claims are plainly not so limited. Indeed, they are not even limited to “roofing materials,” as they all expressly include “building cover material” as well as roofing material. Moreover, even the specification, when not discussing preferred embodiments, is not limited to roofing materials: it speaks of “roofing materials or other building materials normally employed as cover materials over a wood roof deck or stud wall.”
Thus, although Lassiter may teach-away is focused on asphalt materials, it does not teach away from all embodiments covered by the full-scope of the claims.
Following the Supreme Court’s lead in KSR, the Federal Circuit offered a full reversal and held the claims unpatentable.
Based on the record before us, there is only one permissible factual finding—a skilled artisan would be motivated to combine the prior-art references to print nail tabs on building cover materials that are not (already or to be) asphalt coated or saturated Lassiter’s nozzle-based printing technique and Hefele’s and Eaton’s gravurebased printing processes were known substitutes, with success predictable as to materials covered by the claims. There is no substantial evidence to the contrary.