PTAB Erred Finding Claims Nonobvious in IPR, Federal Circuit Reverses Without Remand

Federal CircuitOwens Corning v. Fast Felt Corp., No. 2016-2613, 2017 (Fed. Cir. Oct. 11, 2017) (Before Newman, Dyk, and Taranto, J.) (Opinion for the court, Taranto, J.)

Fast Felt 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 filed a petition with the PTO seeking inter partes review of claims 1, 2, 4, 6, and 7. All of the challenged claims contain the term “roofing or building cover material.” Owens Corning argued that the claims are obvious over Lassiter, Hefele, and Eaton. The Board concluded that Owens Corning failed to show obviousness of any of the challenged claims. Owens Corning appealed, contending that once the key claim term is given its broadest reasonable interpretation, the record conclusively establishes obviousness.

Owens Corning first argued that the Board, when evaluating obviousness in light of the prior art, at least implicitly adopted an erroneous claim construction of “roofing or building cover material.” Specifically, the Board limited the term to material that either has been or would be coated or saturated with asphalt or asphalt mix. However, in the Board’s decision, it correctly noted that the construction “does not require an asphalt-coated substrate.” In an IPR proceeding, the Board is to give a claim “its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). While the preferred embodiments in the ’757 patent focus on roofing materials that are or will be coated or saturated with asphalt or asphalt mix, this is not enough to narrow the claim scope in the IPR. The claims are not even limited to “roofing materials,” as they all expressly include “building cover material” as well as roofing material.” Here, the broadest reasonable construction of “roofing or building cover material” would include materials that neither have been nor are to be coated or saturated with asphalt or asphalt mix. The Court agreed that the Board erred in effectively construing the claims to exclude such materials.

It was not necessary to remand to the Board to reassess the evidence in light of the correct claim construction. On the evidence and arguments presented to the Board, there was only one possible evidence-supported finding: the Board’s rejection of Owens Corning’s challenge, when the correct construction was employed, was not supported by substantial evidence. Additionally, after Owens Corning sought reversal on this ground, Fast Felt in its responsive brief did not ask for a remand if the Court adopted a claim interpretation not limited by any requirement of asphalt coating or saturation. “[W]here only one answer is supported by substantial evidence and there is neither a request nor an apparent reason to grant a second record-making opportunity, reversal is warranted.”

Finally, 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. Owens Corning’s expert testified that Lassiter’s nozzle-based printing technique and Hefele’s and Eaton’s gravure-based printing processes were known substitutes, with success predictable as to materials covered by the claims. Fast Felt presented no meaningful evidence to the contrary. “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). This conclusion required reversal as to claim 1, and Fast Felt made no argument for a different result as to independent claim 7 or as to dependent claims 2, 4, and 6.

While the preferred embodiment of a claim might focus on a particular element of the claim, this is not enough to narrow the claim scope of the IPR. The Board must still give the claim its broadest reasonable interpretation in light of the specification. Where the record and a correct claim construction support only one result, reversal is warranted, without need for remand.

About Troutman Sanders and the Federal Circuit Review

Founded in 1897, Troutman Sanders LLP is an international law firm with more than 650 lawyers practicing in 16 offices located throughout the United States and Asia. Each week, partners Joe Robinson and Bob Schaffer, succinctly summarize the preceding week of Federal Circuit precedential patent opinions. They provide the pertinent facts, issues, and holdings. This Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. IPWatchdog.com is pleased to publish these summaries each week.

The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently No Comments comments. Join the discussion.

Post a Comment

Respectfully add to the discussion.

Name *
Email *
Website