Owens Corning v. Fast Felt Corporation
873 F.3d 896
Fed. Cir.2017Background
- Fast Felt owns U.S. Patent No. 8,137,757 claiming automated methods for depositing polymer nail tabs on "roofing or building cover material."
- Owens Corning petitioned for inter partes review (IPR) challenging claims 1, 2, 4, 6, and 7 as obvious; the PTAB instituted review on obviousness grounds combining Lassiter with Hefele or Eaton.
- The Board found the prior art disclosed the claim elements but concluded Owens Corning failed to show a skilled artisan would have combined the references (motivation/expectation of success), relying on a construction that treated the claimed substrates as limited to materials that are or will be asphalt-coated/saturated.
- Owens Corning appealed, arguing the Board implicitly adopted an improperly narrow claim construction and that, under the correct (broadest reasonable) construction, the claims are obvious.
- The Federal Circuit held the Board erred by effectively limiting "roofing or building cover material" to asphalt-coated/saturated materials, and found that, under the correct broader construction, the prior-art combinations rendered the claims obvious.
Issues
| Issue | Fast Felt's Argument | Owens Corning's Argument | Held |
|---|---|---|---|
| Proper claim construction of "roofing or building cover material" in IPR | Claims should be read to encompass materials that are or will be asphalt-coated/saturated (based on specification emphasis) | Claims are broader; include materials that are not and will not be asphalt-coated/saturated; BRI applies | Court: Board erred; BRI includes materials not coated or to be coated with asphalt |
| Obviousness over Lassiter combined with Hefele or Eaton | No motivation/expectation to combine because gravure processes were not shown to apply to heavily asphalt-saturated roofing substrates | Skilled artisan would substitute known gravure/offset techniques for nozzle-based printing to print tabs on a range of substrates (including non-asphalt materials); predictable success | Court: Under correct construction, substantial evidence supports motivation/expectation of success; claims 1,2,4,6,7 are unpatentable as obvious |
| Whether remand to the Board is required | (Fast Felt implicitly) requested remand if claim construction changed | Owens Corning sought reversal on the merits | Court: No remand—record supports only one outcome (reversal) and Fast Felt did not request remand |
Key Cases Cited
- Cuozzo Speed Techs., LLC v. Lee, 793 F.3d 1268 (Fed. Cir. 2015) (BRI standard in IPRs; claim construction review de novo)
- Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015) (reversal of PTAB where record supports only one outcome)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (U.S. 2007) (combining familiar elements using known methods is obvious when it yields predictable results)
- Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013) (legal standard for obviousness and required factual inquiries)
- L.A. Biomedical Research Inst. v. Eli Lilly & Co., 849 F.3d 1049 (Fed. Cir. 2017) (motivation to combine and reasonable expectation of success are key factual inquiries in obviousness analysis)