PTAB

IPR2022-00416

IKO Industries Inc v. Kirsch Research Development LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Reinforced Roof Underlayment
  • Brief Description: The ’482 patent discloses a synthetic multi-layer membrane for use as a roofing underlayment positioned between a roof support structure and an outer overlayment (e.g., shingles). The technology centers on a tear-resistant and waterproof laminate comprising a reinforcing scrim of interwoven strands with at least one layer of thermoplastic material affixed by extrusion lamination.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 4-12, 15, and 18 under 35 U.S.C. §102 by Smith

  • Prior Art Relied Upon: Smith (Australian Patent No. 665445).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Smith’s disclosure of a "laminate material" for use as a "sarking membrane" anticipates every element of the challenged claims. For independent claim 1, Smith taught a roofing underlayment comprising a reinforcing scrim (a "woven fabric of polymeric fibres" such as polypropylene) and at least one layer of thermoplastic material (an extruded "polypropylene coating") that provides a "water resistant" barrier. Petitioner asserted this mapped directly to the limitations of claim 1. For dependent claims, Smith’s "highly reflective" aluminum foil layer was argued to be the claimed "radiant barrier layer" (claim 4), and its disclosure of a thermoplastic adhesive on one side of the scrim and an extruded polypropylene coating on the other met the limitation of having thermoplastic material on both sides (claims 7 and 15).

Ground 2: Obviousness of Claims 2-3 over Smith in view of Ashford

  • Prior Art Relied Upon: Smith (Australian Patent No. 665445) and Ashford (Australian Patent No. 696175).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Smith teaches the base reinforced underlayment of claim 1 but does not explicitly disclose the "layer of slip-resistant material" recited in claim 2. Ashford was argued to remedy this deficiency by teaching the application of an anti-slip layer, such as a "woven mesh of... polypropylene," to roofing underlayments to enhance worker safety during installation.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA), recognizing the safety focus of Smith's underlayment (designed to be strong enough to support a person), would have been motivated to improve upon it. Petitioner argued that a natural extension of safety improvements is to prevent a roofer from slipping in the first place, a problem directly addressed by Ashford. Since both references aimed to make underlayments safer, combining Ashford's slip-prevention feature with Smith's fall-protection underlayment was presented as an obvious design choice.
    • Expectation of Success: Ashford specifically teaches applying its anti-slip coating over slippery surfaces like aluminum foil, a material also disclosed in Smith's underlayment. This direct technical guidance would have provided a POSITA with a reasonable expectation of successfully creating a safer, slip-resistant product.

Ground 3: Obviousness of Claims 16, 21, and 24-33 over Goodacre in view of Howells

  • Prior Art Relied Upon: Goodacre (Patent 4,656,082) and Howells (Patent 6,054,178).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Goodacre discloses the fundamental structure of a multi-layer underlayment with a woven fibrous scrim (e.g., polypropylene weave) and thermoplastic layers (a polypropylene film and a flame-retardant adhesive) on both sides. However, Goodacre does not teach co-extruding these layers as required by claim 16. Howells was argued to supply this missing element, describing a co-extrusion process where molten thermoplastic is simultaneously extruded onto both sides of a fabric mesh to create a unified roofing membrane.
    • Motivation to Combine: A POSITA would combine Howells' manufacturing process with Goodacre's material structure to achieve significant and known advantages. Petitioner asserted the motivation would be to gain the single-step efficiency, improved delamination resistance, superior strength, and reduced rippling explicitly touted by Howells. These benefits would have been particularly desirable for improving the multi-step lamination processes implied in Goodacre.
    • Expectation of Success: The combination was asserted to be predictable because Howells teaches that its co-extrusion process is compatible with "[v]irtually any type of thermoplastic," including the polypropylene materials central to Goodacre's invention. This compatibility ensured a high likelihood of successfully producing a superior underlayment.

  • Additional Grounds: Petitioner asserted several other obviousness challenges, including combinations of Smith with Goodacre (for oriented or cross-laminated strands), Smith with Visqueen (for micro-perforations for ventilation), and Goodacre with Ashford and Visqueen for similar modifications.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-34 of the ’482 patent as unpatentable.