PTAB

IPR2015-01453

Johns Manville Corporation v. Knauf Insulation, Inc.

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1. Case Identification

2. Patent Overview

  • Title: Insulation Material
  • Brief Description: The ’670 patent claims the ornamental design for insulation material. The patent consists of a single claim and a single color photocopy figure which, according to the Petitioner, depicts ordinary light-density fiberglass insulation.

3. Grounds for Unpatentability

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

  • Prior Art Relied Upon: Owens Corning PROPINK Smartperm™ Vapor Retarder brochure (Ex. 1003) (“OC PROPINK”).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that OC PROPINK, a 2004 product advertisement, discloses a design that is substantially the same as the claimed design in the ’670 patent. Petitioner asserted that both designs depict insulation material with a cloud-like appearance and variations in a swirl pattern. Furthermore, Petitioner contended that OC PROPINK also discloses the other potential design elements: a "waffle pattern" is visible on the surface, and spectrophotometric analysis demonstrated that the OC PROPINK image possesses a "variation of distinct hues" (a hue angle variation of 55.7 degrees) that is greater than that of the claimed design (36.3 degrees).
    • Key Aspects: The argument relied on an "ordinary observer" test, contending that an observer familiar with the prior art would find the designs substantially the same.

Ground 2: Anticipation or Obviousness over Johns Manville Spin-Glas - The claim is anticipated under §102(b) or obvious over §103.

  • Prior Art Relied Upon: Johns Manville SG Series Spin-Glas® & Range Spin Glas Brochure (Ex. 1004) (“JM Spin-Glas”), in view of OC PROPINK (Ex. 1003), Johns Manville Microlite® AA Blankets Brochure (Ex. 1005), or Knauf Crown Floor Slab Brochure (Ex. 1006).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the primary reference, JM Spin-Glas (a 1997 data sheet), discloses the same overall visual appearance as the claimed design, including the cloud-like look, swirl pattern, and a "variation of distinct hues" (hue angle variation of 62.1 degrees). Petitioner contended that the "waffle pattern" element, if considered part of the claim, is an inherent characteristic of fiberglass insulation manufacturing. Alternatively, it would have been obvious to add this feature.
    • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSA) would combine JM Spin-Glas with any of the secondary references (OC PROPINK, JM Microlite, or Knauf) because all references depict competing commercial insulation products. The secondary references explicitly show the waffle pattern, making it an obvious feature to incorporate into the primary design to create a virtually identical overall appearance to the ’670 patent's design.
    • Expectation of Success (for §103 grounds): Given that all references are for the same type of product (fiberglass insulation) and the waffle pattern is a common feature, a POSA would have had a high expectation of success in combining the features.

Ground 3: Anticipation or Obviousness over Soundproofing Your Walls - The claim is anticipated under §102(b) or obvious over §103.

  • Prior Art Relied Upon: Soundproofing Your Walls, The Family Handyman Magazine (Ex. 1007) (“Soundproofing”), in view of the same secondary references as Ground 2.

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that the primary reference, Soundproofing (a 1998 magazine article), discloses insulation with a cloud-like appearance, swirl pattern, and a "variation of distinct hues" greater than the claimed design. The argument for the "waffle pattern" element mirrored that of Ground 2: it is either inherent in the depicted insulation or would have been obvious to include based on the secondary references.
    • Motivation to Combine (for §103 grounds): The motivation to combine was identical to Ground 2, as all references are highly related, depicting ordinary insulation products from competing manufacturers, and the modification simply involves adding a known, common design feature (the waffle pattern).

  • Additional Grounds: Petitioner asserted additional, similar anticipation and obviousness challenges based on other primary references, including Knauf: Timber Frame External Walls (Ex. 1008), Owens Corning – 2006 at a Glance Report (Ex. 1009), and Owens Corning 2007 Progress Report (Ex. 1010). These grounds relied on the same theories regarding inherency or obviousness of the "waffle pattern" and quantitative analysis of the "variation of distinct hues."

4. Key Claim Construction Positions

  • Petitioner argued that based on the prosecution history, the claimed design comprises at most 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 that the "waffle pattern" should not be considered an ornamental element of the claim at all. It argued this pattern is a functional, non-ornamental artifact of the manufacturing process, where insulation is imprinted by the mesh conveyor belts it rests on during curing.
  • Variation of Distinct Hues: Petitioner argued that the claim is for a "variation of distinct hues" generally, not for any specific colors. During prosecution, the applicant distinguished prior art based on its lack of varied hues, providing "brown and cream" only as an example. Petitioner asserted that since color was not claimed in connection with any specific symbol or design, its patentable weight is minimal.

5. Key Technical Contentions (Beyond Claim Construction)

  • Spectrophotometric Analysis of Hue: To objectively assess the "variation of distinct hues," Petitioner’s expert used spectrophotometry to measure hue angles in different regions of the patented design and prior art images. Petitioner argued this quantitative data proved that the prior art references met or exceeded the degree of hue variation present in the claimed design.
  • Manufacturing Process Artifacts: Petitioner provided expert testimony from an engineer with decades of experience in fiberglass manufacturing. This testimony explained that a waffle-like pattern is an inherent and common byproduct of the curing process, where fiberglass batts are transported on mesh conveyor belts. This was used to argue that the feature is functional and not ornamental.

6. Relief Requested

  • Petitioner requested the Board institute an inter partes review and find the sole claim of the ’670 patent unpatentable as anticipated under 35 U.S.C. §102 and/or obvious under 35 U.S.C. §103.