By Michael D. Stein
The Federal Circuit in Owens Corning v. Fast Felt Corporation, 2016-2613 (Fed. Cir. 2017) reversed the Patent Trial and Appeal Board’s (PTAB) final written decision in IPR2015-00650, providing additional guidance on claim construction. In the Final Written Decision, the Board found that all of the elements of the independent claims of US Patent 8,137,757 are disclosed in Lassiter when combined with either Hefele or Eaton, contrary to Fast Felt’s assertions. But the Board also found that Owens Corning failed to show that a skilled artisan would have combined Lassiter with Hefele or Eaton. Thus, the Board rejected Owen’s challenges to claims 1, 2, 4, 6 and 7. The Final Written Decision hinged on the scope of the phrase “roofing or building cover material.”
In the claim construction analysis, the Board construed the claim term “roofing or building cover material” to mean base substrate materials such as dry felt, fiberglass mat, and/or polyester mat, before coating or saturation with asphalt or asphalt mix, and asphalt coated or saturated substrates such as tar paper and saturated felt.” The Board performed its claim construction analysis according to the broadest reasonable interpretation standard. The Board noted that this construction “does not require an asphalt-coated substrate.” The Board made clear when evaluating Owens Corning’s arguments regarding motivation to combine and reasonable expectation of success, that in view of its construction, the claims required materials that would eventually be coated with asphalt even if they had not already been coated with asphalt.
The preferred embodiments in the ‘757 patent focus on roofing materials that are or will be coated or saturated with asphalt or asphalt mix. The Federal Circuit however held that the claims were not so limited, and they are not even limited to “roofing materials” as they expressly include “building cover material also.
The Federal Circuit stated that the broadest reasonable construction of “roofing or building cover material” would include materials that neither have been nor are to be coated or saturated with asphalt, and thus the Board erred in construing the claims. According to the court, Lassiter teaches using building cover materials that are not and will not be asphalt coated. Under that claim construction, the Federal Circuit held that the claims are obvious in view of the cited references, stating that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Fast Felt’s expert witness did not provide any meaningful evidence using the above-noted claim construction.
Patent practitioners should be aware that the Federal Circuit may overturn a PTAB decision if it determines that the PTAB has adopted an incorrect claim construction analysis, and that evidence, arguments and expert testimony should be provided by a party under different claim constructions. Plus, the court will not necessarily limit the scope of the claims to preferred embodiments disclosed in the specification. Practitioners should also consider that the claims may be interpreted by the PTAB using a broadest reasonable construction analysis. And still further, practitioners should consider adding claims of narrower scope or dependent claims which limit the scope of the independent claim so that these claims can provide