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Further Guidance on Claim Construction in Owens Corning v. Fast Felt Corp.

Remands and reversals of the Board are relatively rare.  Nonetheless, the Federal Circuit has vacated or reversed PTAB decisions every so often for adopting an erroneous claim construction.[1]  Most recently, in Owens Corning v. Fast Felt Corp., 2016-2613 (Fed. Cir. Oct. 11, 2017), the Federal Circuit reversed the PTAB’s decision upholding the challenged claims of U.S. Patent No. 8,137,757 (“the ’757 patent”) owned by Fast Felt Corporation (“Fast Felt”) due to erroneous claim construction by the Board.  While the Federal Circuit has cautioned the Board against adopting a claim construction that is unreasonably broad (see our previous article regarding In re Smith Int’l, Inc.), here the Federal Circuit overturned the PTAB’s decision for applying an unreasonably narrow view of a claim term in its analysis of the prior art.

Background

After being sued by Fast Felt for infringement, Owens Corning filed an IPR petition challenging claims 1, 2, 4, 6, and 7 of the ’757 patent on several grounds of obviousness.  The Board instituted a review based on all asserted grounds.

The ’757 patent relates to a method for printing nail tabs on roofing or building cover materials.  Slip op. at 2.  Representative claim 1 requires:

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 material by pressure between said roll and said surface.

In challenging the claims, Owens Corning relied on U.S. Patent No. 6,451,409 (“Lassiter”), which is directed to a process of using nozzles to deposit polymer nail tabs on roofing and building cover materials, as the primary reference for each asserted ground of obviousness.  Slip Op. at 4.  Owens Corning cited other prior art references, including U.S. Patent No. 5,101,759 (“Hefele”) and U.S. Patent No. 6,875,710 (“Eaton”), to teach the use of a “lamination roll” for printing polymer tabs on a wide range of substrates and materials.  Slip Op. at 5.  Although Hefel and Eaton are not specifically directed to roofing materials, Owens Corning asserted that it would have been obvious to substitute the nozzle-based process of Lassiter with the roll-based printing process of Hefele or Eaton as simply substituting one well-known process for another.  Final Written Decision at 12, 19-20.

PTAB Decision

In its Final Written Decision, the Board found that all of the elements of the independent claims were disclosed in Lassiter when combined with either Hefele or Eaton.  Final Written Decision at 12-13, 20-21.  However, the Board found that one would not have been motivated to combine Lassiter with Hefele or Eaton.  Final Written Decision at 14-15, 21-22.  Specifically, the Board found that Lassiter teaches away from Hefele and Eaton because the process of Lassiter is directed to asphalt-saturated substrates while the processes of Hefle and Eaton are directed to other various materials that are never coated with an asphalt mix.  Id.  The Board reached its decision by limiting the scope of the term “roofing or building cover material” to a material that is coated or eventually would be coated with an asphalt mix.  Id.

Appeal

Owens Corning appealed the Board’s decision based on two arguments.  Slip Op. at 6.  First, Owens Corning argued that the Board adopted an erroneous claim construction in its analysis of the prior art by limiting the term “roofing or building cover material” to a material that either has been or would be coated with asphalt.  Id.  Second, Owens Corning contended that the Board’s construction is “legally incorrect under the broadest-reasonable-interpretation standard applicable in the IPR.”  Id.

The Federal Circuit agreed with both of Owens Corning’s arguments and held that the Board erred in effectively construing the claims to exclude “materials that neither have been nor are to be coated … with asphalt.”  Slip op. at 8.  In construing the claims in light of the specification, the Federal Circuit explained that the scope of the term “roofing or building cover material” cannot be limited exclusively to the asphalt-coated materials of the preferred embodiment when the specification explicitly discloses that the claimed invention may apply to other building materials that are not coated with asphalt.  Slip op. at 7-8.

Under the correct claim construction, the Federal Circuit reasoned that “there is only one permissible factual finding — a skilled artisan would be motivated to combine the prior-art references to print nail tabs on building cover materials that are not … asphalt coated or saturated.”  Slip op. at 11.  Accordingly, the Federal Circuit held that “Board’s rejection of Owens Corning’s challenge … is not supported by substantial evidence” and invalidated the challenged claims of the ’757 patent as obvious.  Id.

Future Implications

This case reinforces that the Federal Circuit is more inclined to reverse a PTAB decision when determining that the Board has adopted an erroneous claim construction.  Accordingly, during PTAB proceedings, practitioners should consider providing evidence and expert testimony supporting their patentability position under alternative claim constructions.  This way, if there is any dispute over the claim construction adopted by the Board, the Federal Circuit may be more likely to issue a remand than completely reverse the PTAB’s decision.

In addition, this case counterbalances a string of decisions[2] where the Federal Circuit rejected the PTAB’s claim construction for being unreasonably broad.  Here, this opinion demonstrates that restricting the scope of claims exclusively to the features of the preferred embodiment may be unreasonably narrow.  Therefore, practitioners should consider all embodiments disclosed in the challenged patent when proposing claim constructions in a PTAB proceeding.

 

[1] See, e.g., In re Smith Int’l, Inc., 871 F.3d 1375 (Fed. Cir. 2017); D’Agostino v. MasterCard Int’l, Inc., 844 F.3d 945 (Fed. Circ. 2016); PPC Broadband, Inc. v. Corning Optical Commc’n., 815 F.3d 747 (Fed. Cir. 2016); and Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015).

[2] In re Smith Int’l, Inc., 871 F.3d at 1375; PPC Broadband, Inc., 815 F.3d at 756; and Proxyconn, Inc., 789 F.3d at 1299.