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.

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