PTAB

IPR2015-01161

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 ’876 patent describes an asphalt roofing shingle comprising a base mat coated with asphalt and granules (a "first thickness layer") and a separate, substantially thinner reinforcement layer ("a second thickness layer") adhered to an exterior surface of the shingle to improve strength and durability.

3. Grounds for Unpatentability

Ground 1: Obviousness over Venrick and Frankoski - Claims 1-22 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 Venrick disclosed the basic asphalt shingle structure recited in the preamble and elements (a)-(d) of independent claim 1, including a base shingle with a reinforcing strip to strengthen the shingle and reduce tearing. Venrick taught that this strip could be applied to the rear surface of the shingle in a post-manufacturing step using cement. Frankoski disclosed using a thin "scrim" material as reinforcement in laminated shingles, providing data showing it improved strength and nail pull-through resistance. Petitioner asserted that combining these teachings rendered all limitations of the independent claims obvious. For example, Venrick’s reinforcing strip met the limitation of a "reinforcement second thickness layer" that is adhered to an exterior surface and located within the fastening zone.
    • Motivation to Combine: A POSITA would combine Venrick and Frankoski to replace the older reinforcing materials taught by Venrick (e.g., roofing tape) with the lighter, stronger, and more modern scrim material taught by Frankoski. The motivation was to gain the known benefits of Frankoski’s scrim—improved strength and resistance to wind forces—in the shingle configuration disclosed by Venrick.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because both references address the same technical problem of reinforcing asphalt shingles. Applying a known reinforcing material (Frankoski's scrim) to a known shingle structure (Venrick's) was a predictable modification.

Ground 2: Obviousness over Venrick and Kiik - Claims 1-22 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: Petitioner contended that Venrick, as in Ground 1, taught the foundational asphalt shingle with an adhered reinforcing strip on the rear surface. Kiik disclosed a thin "backing material" made of materials like polyester fibers that is adhered to the back of a shingle specifically for reinforcement. Kiik taught that this backing material improved tear strength and nail holding ability and could provide partial or full coverage of the shingle’s rear surface. The combination of Venrick’s base shingle and Kiik’s thin, modern reinforcing backing material allegedly met all limitations of the challenged claims.
    • Motivation to Combine: A POSITA, recognizing that the materials in Venrick were old, would have been motivated to substitute them with the newer, lighter, and thinner backing materials disclosed in Kiik. This modification would achieve the same reinforcement purpose with improved performance, as demonstrated by the strength data in Kiik.
    • Expectation of Success: The combination was argued to be a simple substitution of one known reinforcing material for another to achieve a predictable improvement in shingle performance. The Board had previously instituted review on related patents for this same combination, confirming a reasonable expectation of success.

4. Key Claim Construction Positions

  • "adhered to an exterior surface of said shingle": Petitioner argued this term required construction based on distinctions made during prosecution of related patents. The patent specification distinguished between a layer that is "embedded" in the asphalt and one that is "adhered" via a "post-applied" adhesive. Therefore, Petitioner proposed that "adhered" should be construed as "attached to the rear exterior surface of the first thickness layer by means of glue, cement, or some other chemical interaction." This construction was critical to distinguish the claims from prior art like Frankoski, which the Patent Owner had previously argued disclosed an "embedded" layer.
  • "shingle": Petitioner asserted that the term "shingle" was used inconsistently in claim 1. In the preamble, it referred to the final product including the reinforcement layer. However, in element (e), the phrase "adhered to an exterior surface of said shingle" would be illogical if "shingle" already included the reinforcement layer. To resolve this, Petitioner argued that "said shingle" in element (e) must be construed to mean the "first thickness layer" (the base shingle before the reinforcement is added).

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that inter partes review should be instituted because the claims of the ’876 patent were substantially identical to the claims of related patents for which the Board had already instituted IPRs based on the same prior art combinations (Venrick/Frankoski and Venrick/Kiik). Petitioner noted that at the time the earlier petitions were filed, the ’876 patent had not yet issued. Given the substantive similarity in claims and identity of prior art, Petitioner contended that institution was warranted for the same reasons provided in the Board's prior institution decisions.

6. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1-22 of the ’876 patent as unpatentable.