Johns Manville Corp v. Knauf Insulation Inc

1. Case Identification

• Case #: IPR2015-01453
• Patent #: D631,670
• Filed: June 19, 2015
• Petitioner(s): Johns Manville Corporation and Johns Manville, Inc.
• Patent Owner(s): Knauf Insulation, LLC and Knauf Insulation SPRL.
• Challenged Claims: The sole claim

2. Patent Overview

• Title: Insulation Material
• Brief Description: The ’670 patent claims the ornamental design for insulation material. The design is embodied in a single color photograph depicting light-density fiberglass insulation with a cloud-like appearance, swirl patterns, and variations in color.

3. Grounds for Unpatentability

Ground 1: Anticipation over Owens Corning Brochure - The sole claim is anticipated under 35 U.S.C. §102(b) by OC PROPINK.

• Prior Art Relied Upon: OC PROPINK (an Owens Corning PROPINK Smartperm™ Vapor Retarder brochure, published August 2004).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that OC PROPINK discloses a design with the same overall visual appearance as the ’670 patent. It asserted that both designs depict (1) insulation material, (2) with a cloud-like appearance, and (3) variations in a swirl pattern. Petitioner further contended that a “waffle pattern” is inherent in all light-density fiberglass insulation due to the manufacturing process and is also visibly present in the OC PROPINK image. Finally, using spectrophotometric analysis, Petitioner alleged that the OC PROPINK image contains a variation of hue angles (55.7 degrees) that meets and exceeds the variation in the patented design (36.3 degrees), thus disclosing the claimed “variation of distinct hues.”
  • Key Aspects: The argument relies on an ordinary observer finding the designs substantially similar, supported by a quantitative, scientific analysis of the claimed color variation feature.

Ground 2: Anticipation/Obviousness over Johns Manville Brochure - The sole claim is anticipated under §102(b) or obvious under §103 by JM Spin-Glas, optionally in view of one of three secondary references.

• Prior Art Relied Upon: JM Spin-Glas (a Johns Manville SG Series Spin-Glas® brochure, published September 1997) as the primary reference. Secondary references include OC PROPINK, JM Microlite Blankets (a Johns Manville brochure, March 2002), and Knauf Crown Floor Slab (a Knauf brochure, 2006).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that JM Spin-Glas alone anticipates the claim. It argued the reference shows insulation with a cloud-like appearance, swirl patterns, and, per spectrophotometric analysis, a greater variation of distinct hues (62.1 degrees) than the claimed design. In the alternative, if the “waffle pattern” is considered a required claim element and not inherent in JM Spin-Glas, Petitioner argued the design is obvious.
  • Motivation to Combine (for §103 grounds): A POSITA would combine JM Spin-Glas with any of the secondary references (OC PROPINK, JM Microlite Blankets, or Knauf Crown Floor Slab), all of which explicitly depict a waffle pattern. The motivation arose because all references were highly related, depicting similar insulation products from direct competitors in the industry. Adding a known, common surface feature from a competitor’s product to another would have been a simple and predictable design choice.
  • Expectation of Success (for §103 grounds): A designer would have had a high expectation of success, as combining the visual features involved applying a known surface pattern to a visually similar product, resulting in a predictable overall appearance.

Ground 3: Anticipation/Obviousness over Magazine Article - The sole claim is anticipated under §102(b) or obvious under §103 by Soundproofing, optionally in view of the same three secondary references.

• Prior Art Relied Upon: Soundproofing (an article titled “Soundproofing Your Walls” from The Family Handyman Magazine, published June 1998) as the primary reference, with the same secondary references as Ground 2.

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that images in the Soundproofing article anticipate the claimed design by showing insulation with a cloud-like appearance and swirl patterns. Spectrophotometric analysis of multiple images from the article allegedly showed a variation of hue angles (e.g., 49.7, 40.9, and 41.9 degrees) greater than that of the claimed design.
  • Motivation to Combine (for §103 grounds): The motivation to add a waffle pattern from the secondary references was the same as in Ground 2. A POSITA viewing the common insulation depicted in the magazine article would have found it obvious to incorporate a well-known manufacturing artifact like a waffle pattern, which was shown on similar commercial products made by industry competitors. The combination would have yielded a design virtually identical to the claimed design.
  • Expectation of Success (for §103 grounds): Success was expected because the modification involved adding a common, predictable surface texture to a standard insulation design.

• Additional Grounds: Petitioner asserted additional anticipation and obviousness challenges based on other primary references, including Knauf: Timber Frame External Walls (a 2005 booklet) and an Owens Corning 2007 Progress Report, combined with the same secondary references and relying on similar mapping and motivation arguments. Further grounds were asserted in the event that specific "brown and cream" colors were deemed a claim element.

4. Key Claim Construction Positions

• Petitioner argued that based on the prosecution history, the ornamental design of the ’670 patent consists of five potential elements: (1) insulation material, (2) a cloud-like appearance, (3) variations in a swirl pattern, (4) a waffle pattern, and (5) a variation of distinct hues.
• "Waffle Pattern": Petitioner contended the "waffle pattern" should not be considered part of the ornamental design. It argued this feature is a non-ornamental, functional artifact of the manufacturing process, where conveyor belts imprint a pattern on the insulation, a fact noted by the Examiner during prosecution.
• "Variation of Distinct Hues": Petitioner argued the claim is not limited to any specific colors (e.g., "brown and cream") but rather to the broader concept of a "variation of distinct hues." This was the key feature the applicant used to overcome prior art rejections, distinguishing its design from prior art that allegedly had a single, uniform hue.

5. Key Technical Contentions (Beyond Claim Construction)

• Spectrophotometric Analysis: Petitioner’s core technical argument rested on the use of spectrophotometry to scientifically quantify the “variation of distinct hues” limitation. By measuring the "hue angle" in degrees at multiple points on the patented design and the prior art images, Petitioner sought to prove objectively that the prior art references met or exceeded the degree of hue variation present in the claimed design. This transformed a subjective visual feature into a quantitative metric.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of the sole claim of the ’670 patent as unpatentable.