Owens Corning v. Fast Felt Corp

1. Case Identification

• Case #: IPR2015-00650
• Patent #: 8,137,757
• Filed: February 2, 2015
• Petitioner(s): Owens Corning
• Patent Owner(s): Fast Felt Corporation
• Challenged Claims: 1, 2, 4, 6, 7

2. Patent Overview

• Title: Print Methodology for Applying Polymer Materials to Roofing Materials to Form Nail Tabs or Reinforcing Strips
• Brief Description: The ’757 patent discloses gravure and offset-based methods for printing polymer nail tabs onto roofing or building cover materials. The invention focuses on a method where tab material is deposited from a "lamination roll" and bonded by pressure (claim 1) and a method comprising a sequence of first depositing tab material and subsequently pressure adhering it with a pressure roll (claim 7).

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 4, 6, and 7 are obvious over Lassiter in view of Hefele

• Prior Art Relied Upon: Lassiter (Patent 6,451,409) and Hefele (Patent 5,101,759).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lassiter taught the foundational method of printing polymer nail tabs on roofing material using a nozzle-based system but failed to disclose the use of a "lamination roll" for deposition and pressure bonding as required by claim 1. Petitioner asserted that Hefele supplied these missing elements by teaching an offset printing method that uses a transfer or lamination roll to apply polymer material to various substrates, including paper (a recognized roofing material), and subsequently bonds the material with pressure. For claim 7, Petitioner argued Hefele disclosed the required sequence of first depositing material onto a web and subsequently pressure adhering it using a nip between the lamination roll and a pressure roll.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Lassiter’s specific application with Hefele’s improved deposition method to gain the well-known benefits of offset printing. These advantages included the ability to print on irregular surfaces common to roofing materials and to achieve the result more efficiently, thereby eliminating the need for additional structures and expense.
  • Expectation of Success: The combination represented a simple substitution of one known polymer deposition technique (nozzle printing) for another (offset roll-based printing) to achieve predictable results, as both references were directed to applying polymers to similar web-like substrates.

Ground 2: Claims 1, 2, 4, and 6 are obvious over Lassiter in view of Bayer

• Prior Art Relied Upon: Lassiter (Patent 6,451,409) and Bayer (Patent 5,597,618).
• Core Argument for this Ground:
  • Prior Art Mapping: Similar to the previous ground, Petitioner contended Lassiter provided the base method but lacked a lamination roll. Bayer allegedly cured this deficiency by disclosing an offset system using an "application roller" (functioning as a lamination roll) to transfer polymer coating material onto a substrate, such as a continuous web of paper. Petitioner argued that Bayer's system bonded the material through the contact pressure created between this application roller and the substrate surface, thus teaching the limitations of claim 1.
  • Motivation to Combine: A POSITA would be motivated to substitute the nozzle system in Lassiter with the contact pressure-based lamination roll system from Bayer. The motivation stemmed from achieving the known advantages of offset printing, including its applicability to a wider range of substrates and potential for higher print quality, which were desirable for manufacturing roofing materials.
  • Expectation of Success: Success would be reasonably expected because the combination involved applying known, interchangeable polymer deposition technologies within the same technical field to achieve predictable outcomes.

Ground 3: Claim 7 is anticipated by Dagher

• Prior Art Relied Upon: Dagher (International Publication No. WO 01/62491).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Dagher disclosed every limitation of claim 7. Dagher described a method for making a wood sheathing panel (suitable for roofing) with reinforced polymer strips for nailing. The application process explicitly involved a sequence of steps: first "applying the reinforcement to the desired location," followed by "rolling the wetted reinforcement to assure good contact and to remove trapped air." Petitioner asserted this "rolling" step inherently requires a pressure roll and constituted the claimed "subsequently pressure adhering" step, performed after the initial deposition.
  • Key Aspects: This ground asserted that Dagher explicitly taught the sequential process of depositing then pressure-adhering, which was the very distinction upon which the patent examiner allowed claim 7 during prosecution.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1, 2, 4, 6, and 7 over Lassiter in view of Eaton (Patent 6,875,710), relying on similar arguments that Eaton's disclosure of a gravure-based deposition method using a lamination roll and a subsequent pressure step supplied the limitations missing from Lassiter.

4. Key Claim Construction Positions

• "lamination roll" (claim 1): Petitioner argued that under the Broadest Reasonable Interpretation (BRI) standard, the term must be construed as the structure that both deposits the tab material ("from which" it is deposited) and applies pressure to bond it to the substrate. This construction was central to mapping the functions of the rollers in the secondary prior art references (Hefele, Bayer, Eaton) to the claim limitations.
• "subsequently" (claim 7): Petitioner contended this term must mean "after first depositing." This construction was based on the prosecution history, where the Patent Owner added "first" and "subsequently" to the claim language to distinguish it from prior art that applied pressure at the same time as deposition. This temporal distinction was critical to the anticipation argument against Dagher and the obviousness arguments.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1, 2, 4, 6, and 7 of the ’757 patent as unpatentable.