PTAB

IPR2024-00084

Structural Wrap LLC v. System Stormseal Pty Ltd

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Protective Covering for Roofs
  • Brief Description: The ’484 patent relates to a method for providing a protective covering over storm-damaged roofs using a heat-shrinkable film. The method involves wrapping the film's edges around battens, attaching the battens to the structure's eaves or fascia, and applying heat to shrink the film tightly over the roof.

3. Grounds for Unpatentability

Ground 1: Obviousness over Crook, Kelly, Inzeo, and Best - Claim 1 is obvious over Crook in view of Kelly, Inzeo, and Best.

  • Prior Art Relied Upon: Crook (Application # 2005/0217202), Kelly (Patent 8,407,958), Inzeo (Patent 6,851,229), and Best (Patent 7,951,873).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Crook taught the foundational method of applying a heat-shrinkable film cover to a damaged roof. The key limitation of "batten-wrapping," which the Examiner believed was novel during the original prosecution, was explicitly taught by Kelly for securing a waterproof membrane to a building. Inzeo further taught attaching a membrane directly to the fascia of a roof. Finally, Best disclosed the specific material composition required by claim 1: a heat-shrinkable film made of low-density polyethylene (LDPE) including shrinking resins for use as housewrap.
    • Motivation to Combine (for 35 U.S.C. §103 grounds): A person of ordinary skill in the art (POSITA) would combine Kelly’s batten-wrapping technique with Crook’s general method to create a more robust and tear-resistant seal, as wrapping distributes stress more evenly than direct fastening. A POSITA would look to Inzeo for an obvious and advantageous attachment location (the fascia). Finally, it would have been a simple and obvious substitution to use the specific, well-known LDPE shrink film described in Best to implement Crook's method.
    • Expectation of Success (for §103 grounds): Each reference described a conventional technique or material used for its intended purpose, leading to a predictable and successful combination.
    • Key Aspects: Petitioner highlighted that the Examiner who allowed the ’484 patent later rejected claims of identical scope in a child application over the combination of Crook, Kelly, and Inzeo, after which the Patent Owner abandoned the application.

Ground 2: Obviousness over Crook, Lowe's, and Americover - Claim 1 is obvious over Crook in view of Lowe's and Americover.

  • Prior Art Relied Upon: Crook (Application # 2005/0217202), Lowe's (a 2006 YouTube video), and Americover (a 2006 commercial webpage).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presented an alternative combination to achieve the same result. Crook again provided the base method. Lowe's, a publicly available "how-to" video for tarping a roof, taught the core concepts of both wrapping a cover's edge around a wooden batten (a "two-by-four") and attaching the wrapped batten to the fascia or under the eave. This single reference supplied the teachings of Kelly and Inzeo from Ground 1. Americover, a commercial supplier, offered for sale the specific heat-shrinkable LDPE film for protecting storm-damaged structures, meeting the material limitations of the claim.
    • Motivation to Combine (for §103 grounds): A POSITA would implement Crook's shrinkable roof covering using the well-known and publicly demonstrated attachment techniques from Lowe's to improve security and durability. Sourcing the required material from a known supplier of protective building wrap like Americover would be a routine and obvious design choice.
    • Expectation of Success (for §103 grounds): Combining these known elements—a base method, a common attachment technique, and a commercially available material—would predictably result in a functional roof covering.

  • Additional Grounds: Petitioner asserted that claims 2-3 are obvious over combinations of Crook, Kelly, and Inzeo, as well as combinations of Crook and Lowe’s. Additional grounds for all claims were asserted that include Vanderzee (Patent 4,715,915) to explicitly teach the off-roof assembly of a wider sheet from narrower strips, addressing Petitioner's proposed construction of the term "sheet."

4. Key Claim Construction Positions

  • "sheet": Petitioner argued that based on the patent's specification and prosecution history, the term "sheet" should be construed as an "assembly of at least two lengths of film." Petitioner noted that in parallel litigation, the Patent Owner asserted a broader interpretation where a "sheet" can be a single strip of film. Petitioner contended that all challenged claims are obvious under either construction.

5. Arguments Regarding Discretionary Denial

  • §314(a) (Fintiv): Petitioner argued that discretionary denial under Fintiv is unwarranted because it provided a Sotera stipulation, agreeing not to pursue in district court litigation the same grounds or any grounds that could have reasonably been raised in the petition.
  • §325(d) (Same or Substantially Same Art or Arguments): Petitioner argued against denial under §325(d), asserting that its grounds were not previously presented and considered. The primary references teaching the critical batten-wrapping limitation (e.g., Kelly, Lowe's) were never before the Examiner during the prosecution of the ’484 patent. Petitioner contended that the Office's error in allowing the patent is demonstrated by the fact that when the Examiner was later presented with Kelly and Inzeo in a child application, the Examiner rejected claims of identical scope as obvious, leading the Patent Owner to abandon the application rather than overcome the rejection.

6. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-3 of the ’484 patent as unpatentable.