PTAB

IPR2015-01160

Owens Corning v. CertainTeed Corp

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Petition
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1. Case Identification

2. Patent Overview

  • Title: SHINGLE WITH REINFORCEMENT LAYER
  • Brief Description: The ’875 patent relates to an asphalt shingle that includes a separate, externally visible reinforcement layer adhered to an exterior surface of the shingle to improve strength and durability, particularly against wind uplift.

3. Grounds for Unpatentability

Ground 1: Claims 1-23 are obvious over Venrick in view of Frankoski.

  • Prior Art Relied Upon: Venrick (Patent 2,161,440) and Frankoski (Patent 5,822,943).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the preamble and elements (a)-(d) of claim 1 describe a basic, conventional asphalt shingle, the features of which are taught by both Venrick and Frankoski. The novel feature, element (e), recites a "reinforcement second thickness layer... adhered to an exterior surface of said shingle." Petitioner asserted that Venrick taught applying a reinforcing strip to either the front or rear exterior surface of a shingle to strengthen it and reduce tearing, specifically teaching that the strip could be "cemented" to the shingle's granular surface. Frankoski was cited for its teaching of using a thin, strong scrim material as reinforcement within a laminated shingle to provide superior strength and nail pull-through resistance.
    • Motivation to Combine: A POSITA would combine these references to improve the known shingle design. Petitioner argued that since the purpose of both Venrick’s strip and Frankoski’s scrim is reinforcement, a POSITA would find it obvious to modify the shingle disclosed in Venrick by substituting Venrick's reinforcing material with the lighter and stronger scrim material taught by Frankoski. This modification was presented as a predictable adaptation to gain the commonly understood benefits of a superior reinforcing material.
    • Expectation of Success: A POSITA would have a reasonable expectation of success, as Frankoski provided data demonstrating that its scrim material improved the strength of asphalt shingles.

Ground 2: Claims 1-23 are obvious over Venrick in view of Kiik.

  • Prior Art Relied Upon: Venrick (Patent 2,161,440) and Kiik (Application # 2001/0055680).
  • Core Argument for this Ground:
    • Prior Art Mapping: Similar to the first ground, Petitioner contended that Venrick disclosed the basic asphalt shingle and the concept of adhering a reinforcing strip to its rear exterior surface. Kiik was presented as teaching a modern alternative for the reinforcing material. Kiik disclosed a thin, lightweight "backing material," made from materials like woven polyester, that is "adhered to the face of the back of the shingle" for reinforcement. Kiik’s backing material was shown to provide better tear strength and increased nail holding ability.
    • Motivation to Combine: A POSITA would be motivated to modify the asphalt shingle disclosed in Venrick by replacing its older reinforcing material with the newer, lighter, and stronger backing material taught by Kiik. Petitioner asserted this was an obvious substitution of one known reinforcing material for another to improve performance. The combination would simply apply a known improvement (Kiik's material) to a known product (Venrick's shingle).
    • Expectation of Success: A POSITA would reasonably expect the combination to be successful. Kiik provided test data showing its backing material improved shingle strength, and the concept of adhering reinforcing layers to the back of shingles was well-established in the art.

4. Key Claim Construction Positions

  • "adhered to an exterior surface of said shingle": Petitioner argued for a construction where this phrase requires two distinct interpretations.
    • First, to resolve a logical inconsistency in the claim language, "said shingle" must refer to the "first thickness layer" (the base shingle without the reinforcement layer), not the finished product as a whole.
    • Second, based on the specification and prosecution history, "adhered" must mean attached via a separate, post-applied adhesive (e.g., glue or cement). This construction was intended to distinguish the claimed invention from prior art like Frankoski, where the reinforcing layer was "embedded" directly into the surrounding asphalt mass during manufacturing, a distinction the Patent Owner emphasized during prosecution of related applications.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-23 of the ’875 patent as unpatentable.