Docket No. 2016-2613 (IPR2015-00650)
NEWMAN, DYK, TARANTO
October 11, 2017
Brief summary: Board decision that Owens did not show obviousness during IPR reversed (not remanded) under a corrected claim construction.
Summary: Fast Felt sued Owens for infringement of its US 8,137,757 relating to “methods for printing nail tabs or reinforcement strips on roofing or building cover material”, and Owens petitioned for IPR which was granted. In its Final Written Decision (Aug. 11, 2016), the PTAB concluded that Owens had failed to show obviousness of any challenged claims, and Owens appealed. The FC panel opinion explains that “[a]ll of the challenged claims contain the claim term ‘roofing or building cover material’” (e.g., claim 1: “method…comprising the steps of: depositing tab material onto the surface of said roofing or building cover material”). The PTAB found “all of the elements of independent claims are disclosed in Lassiter when combined with either Hefele or Eaton” but that Owens “failed to show that a skilled artisan would have combined” the references. Owens argued that “when evaluating obviousness in light of the prior art”, the PTAB “at least implicitly adopted an erroneous claim construction”. The FC panel agreed, writing that the PTAB “simply did not address roofing or building cover materials that would never be coated in asphalt” and “[t]he exclusion of such materials from the scope of the claims is mistaken” and “not reasonable” under the broadest reasonable construction determined “in light of the specification of the patent in which it appears” (37 CFR § 42.100(b); In re Cuozzo, FC 2015/US 2016). This is so, even though “the preferred embodiments…focus on roofing materials that are or will be coated or saturated with asphalt or asphalt mix”, because neither the claims nor the specification are “so limited” (e.g., the claims “are not even limited to ‘roofing materials’” and “all expressly include ‘building cover material’ as well as roofing material”). The FC panel explained that “it is not necessary or appropriate to remand for the Board to reassess the evidence in light of the correct claim construction” since “when the correct construction is employed”, its conclusion “is not supported by substantial evidence” (Belden, FC 2015). In addition, the FC panel noted that Fast Felt “in its responsive brief did not ask for a remand if this court adopted a claim interpretation not limited by any requirement of asphalt coating or saturation” or “respond that this was a late-arising interpretation and it had lacked an opportunity in the Board proceedings to introduce evidence relevant under this interpretation”. In cases like this, the FC panel wrote, “where only one answer is supported by substantial evidence” (i.e., obviousness under the correct claim construction) “and there is neither a request nor an apparent reason to grant a second record-making opportunity, reversal is warranted.”