In Owens Corning v. Fast Felt Corp., No. 2016-2613, 2017 U.S. App. LEXIS 19827 (Fed. Cir. October 11, 2017), the Federal Circuit reversed the Patent Trial and Appeal Board’s (PTAB) final written decision in IPR2015-00650. While the PTAB found that the petitioner had failed to show obviousness of any challenged claim, the Federal Circuit disagreed, finding that under a proper broadest reasonable interpretation of the claims, the “record conclusively establishe[d] obviousness.” Owens Corning, 2017 U.S. App. LEXIS 19827 at *2. The Federal Circuit therefore reversed the PTAB’s final written decision without remand, finding the challenged claims unpatentable as obvious.
Owens Corning petitioned for inter partes review of Fast Felt’s U.S. Patent No. 8,137,757, which claims and describes methods of “applying nail tabs to roofing and building cover materials” which cover wood roof decks and stud walls. ’757 Patent, Abstract. For example, during the construction of a roof, an underlayment (usually an asphalt saturated substrate) is typically attached directly to the wood frame of the roof, using nails or staples. Shingles or other materials are then applied atop the underlayment. One problem addressed by the ’757 Patent is that staples and nails either pull out of the wood frame when the underlayment is uplifted (for example, due to wind), or the underlayment itself tears at the stapling or nailing location. Prior methods of solving this problem were manual, and usually involved using roofing nails with large heads, or using washers or tabs secured underneath the nail head. These methods were time consuming, expensive, and potentially dangerous.
The ’757 Patent therefore proposes to use an automated process to “permanently and reliably” affix a tab material to the underlayment surface (e.g., a dry felt or fiberglass roofing material), whether or not the tab material is later coated with shingles or other roofing materials. The process can be a gravure or gravure-like process in which print material from an engraved cylinder is transferred directly onto a substrate.
The PTAB instituted trial on three obviousness grounds challenging claims 1, 2, 4, 6, and 7. Owens Corning, 2017 U.S. App. LEXIS 19827, at *4-5. Owens Corning only appealed the PTAB’s obviousness finding on two of the grounds. Id. at *4. The primary reference on appeal was U.S. Patent No. 6,451,409 to Lassiter (“Lassiter”), which teaches a process of using nozzles to deposit polymer nail tabs on roofing and building cover materials in order to solve problems similar to those disclosed in the ’757 Patent. Id. The secondary references, U.S. Patent No. 5,101,759 to Hefele (“Hefele”) and U.S. Patent No. 6,875,710 to Eaton (“Eaton”), taught an offset-gravure printing process to form coatings on flexible materials, and using a transfer roll to apply substances to reinforce substrates, respectively. Id. at *4-5.
The PTAB’s final written decision found that all elements of the independent claims were disclosed in Lassiter when combined with either Hefele or Eaton. Id. at *5. Fast Felt provided minimal argument on appeal as to these findings, and the Federal Circuit quickly disposed of its challenge. Id. However, the PTAB found that Owens Corning failed to show that a person of skilled in the art would have combined Lassiter with Hefele or Lassiter with Eaton. Thus, the PTAB found that the claim 1 was not shown to be obvious, and as claims 2, 4, 6, and 7 were not materially different, those claims were also not shown to be obvious as well. Id. at *5-6.
On appeal, Owens Corning’s argument challenged the Board’s implicit claim construction that a “roofing or building cover material” was limited to a material that either has been, or would be, coated or saturated with asphalt or an asphalt mix. Id. at *6. Owens Corning argued that such a construction was not correct under the broadest reasonable interpretation standard applicable during PTAB proceedings.
Although the PTAB construed the term “roofing or building cover material” in the final written decision, the Federal Circuit found that the PTAB’s understanding of the construction was not consistent with the construction itself. In particular, the PTAB construed the term to mean “base substrate materials such as dry felt, fiberglass mat, and/or polyester mat, before coating or saturation with asphalt or asphalt mix, and asphalt coated or saturated substrates such as tar paper and saturated felt.” The PTAB also stated that its construction did “not require an asphalt-coated substrate.” Id. at *6-7.
In the analysis of Lassiter, the Federal Circuit found that the PTAB “made clear its understanding of its construction…as requiring materials that would eventually be coated with asphalt,” and indicated that such an understanding was incorrect. Id. at *7. The court found evidence of the PTAB’s understanding from the final written decision’s finding that Lassiter would have discouraged a skilled artisan from using “high temperatures and roller pressure” to apply nail tabs to a base substrate. But the Federal Circuit noted that such statements in Lassiter were only in the context of an asphalt coating process after nail tabs have been applied. Further, the Federal Circuit found that Fast Felt’s experts considered only “heavily saturated asphalt” materials in their declarations. Id.
Likewise, the Federal Circuit perceived the PTAB’s erroneous understanding of its construction from its rejection of the petitioner’s contention that Hefele’s and Eaton’s methods were interchangeable with those of Lassiter. Id. at *7-8. The PTAB alleged that Owens Corning had not accounted for the differences in materials, relying on Fast Felt’s experts’ statement that Hefele and Eaton did not address asphalt-saturated substrates. But the Federal Circuit found that the PTAB failed to address roofing or building materials that would not be coated in asphalt, unduly limiting the claims. Id. at *8.
As a result, the Federal Circuit found the PTAB’s exclusion of materials that would not be coated in asphalt to be inconsistent with the broadest reasonable interpretation of the claims. Id. at *8. Although the preferred embodiments of the patent focused on asphalt-covered materials, that focus was insufficient to limit the claim scope. Id. at *8-9. The Federal Circuit also noted that the claims themselves are not limited to roofing materials, as each claim recited building cover material as well, and the specification likewise encompassed building cover material which would not be covered with asphalt. Id. at *9. Therefore, the Federal Circuit found that the broadest reasonable construction of “roofing or building cover material” encompassed materials that “neither have been nor are coated or saturated with asphalt or asphalt mix.” Id. at *9. On this basis, the PTAB’s construction was found to be in error. Id.
Because all of the evidence and argument of record supported a finding of obviousness under the proper broadest reasonable interpretation of the claims, the Federal Circuit simply reversed the PTAB’s final written decision, instead of remanding the case to the Board for further proceedings. Id. at *9-10.
All of Fast Felt’s argument and evidence was predicated on the narrow claim construction which excluded materials that would not be coated in asphalt. Id. at *13. The PTAB had already found that Lassiter, when combined with Hefele or Eaton, disclosed all of the elements of the claims. Id. at *5. The Federal Circuit further found that Lassiter suggested that a person of ordinary skilled in the art would have been motivated to print nail tabs on building cover materials that would not be asphalt coated, consistent with its broader interpretation. Id. at *11-12. The only expert testimony on this point was offered by Owens Corning, whereas Fast Felt “had no meaningful evidence…that was independent of its too-narrow view of what materials are covered” by the ’757 Patent. Id. at *12-14. Fast Felt also did not respond to Owens Corning’s evidence about other building cover materials, and the Federal Circuit found that Fast Felt’s expert opinions were again too narrowly focused. Id.
Thus, the Federal Circuit stated that there was only one possible finding: that a person of skill would have been 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.” Id. at *14. With no sufficient evidence to contradict that finding, the Federal Circuit reversed the PTAB’s decision as to the challenged claims, finding them unpatentable for obviousness. Id. at *14-15.
Practitioners should be sure to develop a complete record at the PTAB, including evidence and arguments to support patentability/unpatentability contentions under alternative claim constructions, to ensure that the Federal Circuit’s disagreement with the PTAB’s reasoning does not result in a reversal without remand. In particular, expert declarants should consider alternative theories and not unduly limit their analysis. Further, practitioners should be mindful of the contours of the broadest reasonable interpretation standard. In particular, this decision should serve as a reminder that preferred embodiments will not be enough to narrow claim scope at the PTAB.