from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2015-00650.
Constantine L. Trela, Jr., Sidley Austin LLP, Chicago, IL,
argued for appellant. Also represented by Thomas D. Rein,
Steven J. Horowitz, Stephanie P. Koh, Bryan C. Mulder; Peter
S. Choi, Anna Mayergoyz Weinberg, Washington, DC.
A. Brister, Andrews Kurth Kenyon LLP, Austin, TX, argued for
appellee. Also represented by Gregory Lawrence Porter,
Houston, TX; James D. Petruzzi, The Petruzzi Law Firm,
Newman, Dyk, and Taranto, Circuit Judges.
Taranto, Circuit Judge.
Felt Corporation owns U.S. Patent No. 8, 137, 757, which
describes and claims methods for printing nail tabs or
reinforcement strips on roofing or building cover material.
Fast Felt sued Owens Corning for infringement, and Owens
Corning then filed a petition with the Patent and Trademark
Office (PTO) seeking an inter partes review of
claims 1, 2, 4, 6, and 7 under 35 U.S.C. §§ 311-19.
The Patent Trial and Appeal Board, acting as the delegate of
the PTO's Director under 37 C.F.R. § 42.4(a),
instituted a review of all of the challenged claims on
grounds of obviousness. Institution of Inter Partes Review at
26, Owens Corning v. Fast Felt Corp., No.
IPR2015-00650 (P.T.A.B. Aug. 13, 2015), Paper No. 9
(Institution Decision). After conducting the review,
the Board concluded that Owens Corning had failed to show
obviousness of any of the challenged claims. Final Written
Decision, Owens Corning v. Fast Felt Corp., No.
IPR2015-00650, 2016 WL 8999740, at *23 (P.T.A.B. Aug. 11,
2016) (Final Decision).
Corning appeals from the Board's decision. It contends
that, once the key claim term is given its broadest
reasonable interpretation, the record conclusively
establishes obviousness. We agree, and we reverse the
'757 patent addresses applying polymer "nail
tabs" on "roofing and building cover
material." '757 patent, abstract; id., col.
1, lines 29-34 ("The invention relates generally to
roofing materials or other building materials normally
employed as cover materials over a wood roof deck or stud
wall and more specifically to such cover materials and
methods for incorporating therein a plurality of integrally
formed nail tabs or a continuous reinforcing strip.").
The specification explains that nail tabs have been used to
reinforce specific locations on roofing or building cover
material at which nails will be driven through the material
to attach it to a wood roof deck or a building stud wall.
See id., col. 1, lines 29-34. Such reinforcement
helps prevent the nails from tearing through the cover
material. See id., col. 2, lines 20-26. Commonly,
the specification observes, separate washers or tabs are
applied with every nail to provide reinforcement, but that
practice is expensive, inefficient, and dangerous.
Id., col. 2, lines 44-63.
'757 patent proposes an asserted improvement: use of an
"automated" process to "permanently and
reliably" affix or bond "tab material that quickly
solidifies and adheres or bonds to the surface."
Id., col. 5, line 63-col. 6, line 2. The surface to
which the tab material is affixed or bonded can be
"either dry felt, saturated felt, a fiberglass,
polyester or other inorganic substrate roofing material
whether or not coated with asphalt or an asphalt mix, or roll
roofing material or shingles." Id., col. 5,
lines 64-67. The automated process can be "gravure,
rotogravure or gravure-like transfer printing (the
'gravure process') or offset printing."
Id., col. 3, lines 24-26.
is one of two independent claims. It reads:
A method of making a roofing or building cover material,
which comprises treating an extended length of substrate,
comprising the steps of:
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 ...