No reinforcement for leaky PTAB decision
Owens Corning v. Fast Felt Corp.
Decided: October 11, 2017
Case Summary by Frederick Hadidi
When constructing a house or other wooden structure, building cover/waterproofing materials such as tar paper or Tyvek® brand polyethylene wrap are often nailed to the structure’s outer layer of plywood. These building materials may be reinforced with nail tabs or reinforcement strips to help prevent nails from ripping or tearing them.
Fast Felt Corporation’s Patent No. 8,137,757 broadly discloses methods for printing nail tabs or reinforcement strips onto a wide variety of roofing or building cover materials, “whether or not coated with asphalt or an asphalt mix.” Given the specification’s broad disclosure, was it proper for the PTAB to narrowly construe the phrase “roofing or building material” to only cover materials that are coated or saturated with asphalt? In an appeal from an IPR decision rejecting an obviousness challenge, the United States Court of Appeal for the Federal Circuit (Federal Circuit) said no.
In its IPR petition, Owens Corning challenged the ‘757 patent’s claims as obvious over a base reference (Lassiter) in view of one of two supplemental references (Hefele or Eaton). These references taught methods for printing reinforcement strips or nail tabs on to building cover materials, but not onto asphalt coated materials.
In its final written decision, the PTAB found the challenged claims’ elements to be disclosed in the asserted references; but because it narrowly construed the claimed “roofing or building material” to require an asphalt coating, it rejected Owens Corning’s obviousness challenge as failing to take into account the differences in the building cover materials (asphalt-coated in the claimed invention, not asphalt-coated in the prior art).
On appeal, the Federal Circuit rejected the PTAB’s claim construction, explaining that although the patent’s preferred embodiments focus on asphalt-coated or -saturated roofing materials, other portions of the specification explain that the claimed printing process may be used on a wide variety of roofing or building cover materials, “whether or not coated with asphalt or an asphalt mix.” Therefore, under the broadest reasonable interpretation standard required in an IPR, the Board erred in requiring the claimed material to include asphalt.
In PTAB appeals that turn on claim construction, the Federal Circuit will frequently remand cases in which it has arrived at a different construction. But in this case, there was no need for additional fact finding because the PTAB had already found the asserted prior art references to disclose all of the elements of the challenged claims; the only remaining question was whether a “skilled artisan would have been led to make the combinations [printing nail reinforcement tabs onto building cover materials] with a reasonable expectation of success.” The panel answered this question in the affirmative, reasoning that the asserted prior art references disclose known-substitute techniques for printing nail reinforcement tabs onto building cover materials.