PTAB

IPR2014-01397

Owens Corning v. CertainTeed Corp

Key Events

Petition

petition Intelligence

Title: SHINGLE WITH REINFORCEMENT LAYER
Brief Description: The ’046 patent discloses an asphalt roofing shingle with an added reinforcement layer. The invention is directed to adhering a "reinforcement second thickness layer" to the rear exterior surface of a conventional shingle to provide improved strength, stability, and resistance to wind uplift.

Prior Art Relied Upon: Venrick (Patent 2,161,440).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Venrick anticipates claims 1-8. The initial limitations of claim 1, describing a basic asphalt shingle with a fastening zone, were asserted to be common knowledge and fully disclosed by Venrick. The core of the invention, a "generally longitudinal reinforcement second thickness layer" that is "substantially thinner" and "adhered" to the shingle in the fastening zone, was mapped directly to Venrick’s "reinforcing strip." Petitioner contended that Venrick explicitly teaches this strip can be placed on the rear surface ("undersurface"), is cemented on after manufacture ("adhered"), extends longitudinally, overlaps the nailing zone, and is made of materials like felt or roofing tape that are thinner than the main shingle body. The dependent claims were argued to be anticipated as Venrick discloses applying the strip to the rear surface (claim 2), nailing through it (claim 3), and using materials like "roofing tape" which implies fabric or paper (claim 4). For claim 9, Petitioner argued that applying Venrick's reinforcing strip to a single-tab shingle—a common shingle type—was an obvious design choice to achieve the known benefits of reinforcement.

Prior Art Relied Upon: Venrick (Patent 2,161,440), Frankoski (Patent 5,822,943).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Venrick teaches the foundational concept: a basic asphalt shingle with a reinforcing strip adhered to its rear surface to improve strength. Frankoski was cited for its disclosure of a modern reinforcing material—a thin "scrim layer"—that provides superior strength and nail pull-through resistance.
- Motivation to Combine: A POSITA would combine these references by substituting the older reinforcement materials of Venrick (e.g., felt, metal) with the modern, lighter, and stronger scrim material taught by Frankoski. The motivation was to update an old design with a superior, state-of-the-art material to gain the commonly understood and predictable benefits of improved strength and performance.
- Expectation of Success: Petitioner argued a POSITA would have a high expectation of success. Frankoski demonstrates the effectiveness of scrim as a reinforcement layer in shingles, and Venrick establishes the method of adhering such a layer to the shingle's rear surface. Combining the two would predictably result in a shingle with the benefits described in both references.

Prior Art Relied Upon: Venrick (Patent 2,161,440), Kiik (Application # 2001/0055680).
Core Argument for this Ground:
- Prior Art Mapping: This ground presented an argument parallel to the one involving Frankoski. Venrick was again relied upon for disclosing the base shingle and the adhered rear reinforcing strip. Kiik was introduced for its teaching of a thin "backing material" (e.g., woven polyester, nylon fibers) that is adhered to the back of a shingle for reinforcement, specifically to improve tear strength and nail holding ability.
- Motivation to Combine: The motivation was again based on modernizing Venrick’s design. A POSITA would combine the references to replace Venrick's dated materials with the lighter, thinner, and stronger backing material disclosed by Kiik. This substitution would be a predictable solution to improve the physical properties of the shingle.
- Expectation of Success: Success was expected because both Venrick and Kiik aim to reinforce a shingle in the nailing zone. Kiik provides data showing its thin backing material improves strength, giving a POSITA confidence that substituting this material into Venrick’s design would function as intended and yield a stronger, more durable shingle.

"said shingle": Petitioner argued that in the context of claim 1, element (e) ("a ... reinforcement second thickness layer ... adhered to said shingle"), the term "said shingle" must be construed to mean the "first thickness layer" (i.e., the base shingle without the reinforcement layer). A broader construction would be illogical, as it would mean the reinforcement layer is adhered to a whole that already includes itself. This construction was supported by the Patent Owner's prosecution history, where it distinguished prior art by arguing its invention was applied to an exterior surface, not embedded within.
"adhered to said shingle": Building on the above, Petitioner contended that "adhered" means attached to the exterior rear surface of the "first thickness layer," typically via a post-applied adhesive like cement or bitumen. Petitioner emphasized that the specification and prosecution history draw a clear distinction between a layer that is "adhered" (externally applied) and one that is "embedded" within the shingle's asphaltic material.

Petitioner requests institution of an inter partes review and cancellation of claims 1-9 of the ’046 patent as unpatentable.