Johns Manville Corporationv.Knauf Insulation, Inc.

Patent Trial and Appeal Board

Dec 17, 2015

13341542 (P.T.A.B. Dec. 17, 2015)

Trials@uspto.gov Paper 17
571-272-7822 Entered: 17 December 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

JOHNS MANVILLE CORPORATION,
Petitioner,
v.
KNAUF INSULATION, INC.,
Patent Owner.
__________

Case IPR2015-01527
Patent 8,940,089 B2

Before FRED E. McKELVEY, JAMES T. MOORE, and
KRISTINA M. KALAN, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION
Declining to Institute an Inter Partes Review
37 C.F.R. § 42.108(a)

I. Introduction
Pending before the Board is Petitioner’s “Petition for Inter Partes
Review of U.S. Patent No. 8,940,089.” Paper 1.
Patent Owner timely filed a Preliminary Response. Paper 12.
Petitioner was invited to file a Reply. Paper 13.

IPR2015-01527
Patent 8,940,089 B2

2

Petitioner timely filed a Reply. Paper 14.
II. Background
A. Parties
Petitioner is Johns Manville Corporation and Johns Manville, Inc.
Paper 1, page 1.
Patent Owner is Knauf Insulation, Inc. and Knauf Insulation SPRL.
Paper 5, page 1; Paper 7, page 1.
B. Involved Patent
The involved patent is U.S. Patent 8,940,089 B2 (“the ʼ089 patent”),
issued 27 January 2015 based on an application filed 30 December 2011.
Ex. 1001, page 1.
The ʼ089 patent contains claims 1–74. Ex. 1001, cols. 14–18.
In this IPR, Petitioner challenges the patentability of claims 1, 2, 4–15,
23–26, 28–31, 35–41, 50, 57, 62, 64–67, and 70–72. Paper 1, pages 1 and 5.
C. Litigation
The ʼ089 patent is involved in Knauf Insulation, LLC v.
Johns Manville Corp., Civil Action No. 1:15-cv-00111-WTL-MJD
(S.D. Ind. filed Jan. 27, 2015). Paper 7, page 1.
D. Related PTO Matters
The parties are involved in two other IPRs involving the ʼ089 patent:
(1) IPR2015-01569 where Petitioner challenges claims 3, 27,
32–34, 42–49, 51–55, 58–61, 63, 68, 69, and 73, and
(2) IPR2015-01598, where Petitioner challenges claims 3,
16–22, 27, 34, 43, 45–49, 51–56, 63, 73, and 74.

IPR2015-01527
Patent 8,940,089 B2

3

As Table 1 demonstrates (where X means challenged), Petitioner
ultimately seeks cancellation of all claims of the ʼ089 patent.

Table 1
Claim IPR2015-01527 IPR2015-01568 IPR2015-01598
1 X
2 X
3 X X
4 X
5 X
6 X
7 X
8 X
9 X
10 X
11 X
12 X
13 X
14 X
15 X
16 X
17 X
18 X

IPR2015-01527
Patent 8,940,089 B2

4

19 X
20 X
21 X
22 X
23 X
24 X
25 X
26 X
27 X X
28 X
29 X
30 X
31 X
32 X
33 X
34 X X
35 X
36 X
37 X
38 X
39 X
40 X
41 X

IPR2015-01527
Patent 8,940,089 B2

5

42 X
43 X X
44 X
45 X X
46 X X
47 X X
48 X X
49 X X
50 X
51 X X
52 X X
53 X X
54 X X
55 X X
56 X
57 X
58 X
59 X
60 X
61 X
62 X
63 X X
64 X

IPR2015-01527
Patent 8,940,089 B2

6

65 X
66 X
67 X
68 X
69 X
70 X
71 X
72 X
73 X X
74 X

E. Prior Art
Petitioner relies on the following prior art.
Name Document Date Exhibit
Gogek U.S. Patent 2,965,504 20 Dec. 1960 1003

Gogek is prior art under 35 U.S.C. § 102(b).
F. Challenge
There is one (1) challenge (“Ground”). Paper 1, pages 5–6
Ground Claims Pre-AIA
35 U.S.C.
Prior Art

1
1, 2, 4–15, 23–26,
28–31, 35–41, 50, 57,
62, 64–67, and 70–72

§ 102(b)

Gogek

IPR2015-01527
Patent 8,940,089 B2

7

III. Ground 1
A. Claim 1
Independent claim 1, reproduced from the ʼ089 patent, reads (matter
in brackets and some indentation added):
A [1] finished material comprising

[2] a collection of nonwoven mineral fibers
maintained together by a cured, substantially
formaldehyde free melanoidin containing binder,

[3] wherein the finished material comprises
[i] residual levels of more than 500 mg of ionic species
per kg of finished material, [ii] said species selected from
the group consisting of sulfates, phosphates, nitrates,
carbonates, and combinations thereof [iii] in which the
residual levels are assessed in a leach test.

Ex. 1001, col. 14:34–41.
The other challenged claims depend from independent claim 1.
B. Challenge
According to Petitioner, the challenged claims “are invalid under
35 U.S.C. § 102(b) as anticipated by Gogek.” Paper 1, page 9.
In the context of an IPR, what Petitioner means is that the challenged
claims “are unpatentable under 35 U.S.C. § 102(b) as anticipated by Gogek.”
Why parties insist on using the language “invalid” as opposed to
“unpatentable” in IPR proceedings escapes us. The language of the
applicable statute is “cancel as unpatentable.” 35 U.S.C. § 311(b).
See Markey, Semantic Antics in Patent Cases, 88 F.R.D. 103 (1980).

IPR2015-01527
Patent 8,940,089 B2

8

Petitioner alleges that Gogek inherently describes the subject matter
of challenged independent claim 1.
The evidence said to support a finding that Gogek inherently
describes the subject matter of claim 1 is based on three declarations
outlining experimental work undertaken by Dr. Elam Leed (Ex. 1006) and
Dr. Jonathan Vickers (Ex. 1007) under the supervision of Dr. Frederick J.
Hirsekorn (Ex. 1004).
Specifically, “[t]o determine the inherent levels of residual ionic
species in . . . finished [Gogek] insulating blocks, I [Dr. Hirsekorn]
conducted and/or directed . . . experiments in which insulating blocks made
according to Example 3 of Gogek [col. 2:62–72] were reproduced.”
Ex. 1004, page 18, ¶ 46. Test samples were prepared by Dr. Leed, assisted
by Dr. Hirsekorn. Ex. 1006, page 1, ¶ 3. Analysis of test samples was
undertaken by Dr. Vickers. Ex. 1007, page 1, ¶ 3.
C. Anticipation—Inherency
The applicable principles are set out in In re Robertson, 169 F.3d 743
(Fed. Cir. 1999):
If the prior art reference does not expressly set
forth a particular element of the claim, that reference still
may anticipate if that element is “inherent” in its
disclosure. To establish inherency, the extrinsic evidence
“must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference,
and that it would be so recognized by persons of ordinary
skill.” Continental Can Co. v. Monsanto Co., 948 F.2d
1264, 1268 . . . (Fed. Cir. 1991). “Inherency, however,
may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given

IPR2015-01527
Patent 8,940,089 B2

9

set of circumstances is not sufficient.” Id. at 1269 . . .
(quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).

Id. at 745 (italics, except for case citations, added; USPQ citations omitted).
The burden of showing something by a preponderance of the evidence
simply requires the trier of fact to believe that the existence of a fact is more
probable than its nonexistence before the trier of fact may find in favor of
the party who has the burden to persuade the trier of fact of the fact’s
existence. Concrete Pipe & Products of California, Inc. v. Construction
Laborers Pension Trust for Southern California, 508 U.S. 602, 622 (1993).
At first blush one might conclude that there is a tension between
Robertson’s probabilities and Concrete Pipe’s probable. The tension is
resolved if one considers Robertson’s probabilities to mean “may” and
Concrete Pipe’s probable to mean “likely.”
D. The Example 3 Experiments
Gogek Example 3 describes a refractory block made from the
following elements:
Element Parts by weight
Rock wool 100
Asbestos fines 3
Bentonite 3
Molasses 6
Ammonium sulfate 0.8
Iron oxide 1

IPR2015-01527
Patent 8,940,089 B2

10

Ex. 1003, col. 2:60–72; Ex. 1004, page 18, ¶ 47.
In its experiments, Petitioner did not use asbestos fines. Rather, it
used Superwool 607 in place of asbestos fines.
Dr. Hirsekorn explains:
I did not use asbestos fines because asbestos, which has
carcinogenic properties, is no longer commercially
available in the United States. Instead of asbestos fines,
I used Superwool 607, which I understand was sourced
from Thermal Ceramics. Superwool 607 was designed to
replace asbestos and is equivalent to asbestos for
purposes of the insulating blocks made according to
Example 3 of Gogek. Using Superwool 607 instead of
asbestos would not materially alter the physical
properties of the insulating block and would not affect
the amounts of residual ionic species of sulfates,
phosphates, nitrates, carbonates, and combinations
thereof that are assessed in a leach test.

Ex. 1004, page 19, ¶ 48 (italics added).
E. Preliminary Response
In its Preliminary Response, Patent Owner addresses the use of
Superwool 607 in place of asbestos fines:
[Petitioner] replaced Gogek’s asbestos with Superwool
607 (using glass wool). Even if [Petitioner] was
motivated by laudable safety goals of avoiding the
dangers of asbestos sources—Superwool 607 is not
asbestos fines. By [its] own admission, [Petitioner] did
not follow Gogek’s [Example 3] teachings.

Paper 12, page 13.

IPR2015-01527
Patent 8,940,089 B2

11

F. Reply
In its Reply, Petitioner states:
On page 13, lines 14-17 of the Preliminary
Response, Patent Owner argues that “JM [i.e.,
Petitioner,] replaced Gogek’s asbestos with Superwool
607 (using glass wool)” and “[b]y their own admission,
JM did not follow Gogek’s teachings.” The response is:
JM could not use actual asbestos because, for obvious
reasons, it is no longer available. Superwool 607,
however, is equivalent to asbestos for purposes of the
refractory insulation blocks made according to Example
3 of Gogek. As Dr. Hirsekorn fully explained in his
declaration, asbestos is no longer commercially available
in the United States due to its carcinogenic properties and,
because of that, Dr. Hirsekorn was forced to use a
surrogate for asbestos. Exhibit 1004 at ¶ 48.
Dr. Hirsekorn selected Superwool 607 because it “was
designed to replace asbestos and is equivalent to asbestos
for purposes of the insulating blocks made according to
Example 3 of Gogek.” Id. Dr. Hirsekorn further
explained that “[u]sing Superwool 607 instead of
asbestos would not materially alter the physical
properties of the insulating block and would not affect
the amounts of residual ionic species of sulfates,
phosphates, nitrates, carbonates, and combinations
thereof that are assessed in a leach test.” Id. In the
Preliminary Response, Patent Owner did not challenge
Dr. Hirsekorn’s analysis and determination that
Superwool 607 is equivalent to asbestos for purposes of
the Gogek process. Nor did Patent Owner dispute
Dr. Hirsekorn’s determination that the use of Superwool
607 would not materially alter the properties of the
resulting insulating block. In other words, Patent
Owner’s argument regarding the use of Superwool 607
instead of asbestos is a red herring, as the substitution of

IPR2015-01527
Patent 8,940,089 B2

12

Superwool 607 for asbestos has no bearing whatsoever
on the determination of the inherent characteristics of
insulating blocks made according to Example 3 of Gogek.
See id.

Paper 14, page 8:5–page 9:8 (italics added).
G. Discussion
Dr. Hirsekorn states that Superwool 607 was substituted for “asbestos
fines.” Ex. 1004 ¶ 48.
However, Dr. Hirsekorn does not explain what one skilled in the art
would have understood “fines” to mean in the phrase “asbestos fines” as of
the filing date (1 April 1958) or issue date (20 December 1960) of Gogek.
Dr. Hirsekorn states that “Superwool 607 was designed to replace
asbestos and is equivalent to asbestos for purposes of the insulating blocks
made according to Example 3 of Gogek.” No contemporaneous
documentation was offered by Petitioner in support of Dr. Hirsekorn’s
statement. Id. For example, no literature supporting Dr. Hirsekorn’s belief
that Superwool 607 was designed to replace asbestos has been called to our
attention. No literature is cited to show that Superwool 607 is considered by
those skilled in the art to be “equivalent to asbestos” for making insulating
blocks. Certainly nothing in Gogek confirms the “equivalency” alleged by
Petitioner. Nor is there any testimony that Superwool 607 is “fines” having
particles sizes consistent with the meaning of “fines” as described in the
Gogek patent.
Dr. Hirsekorn also states an opinion that “[u]sing Superwool 607
instead of asbestos [fines] would not materially alter the physical properties

IPR2015-01527
Patent 8,940,089 B2

13

of the insulating block and would not affect the amounts of residual ionic
species of sulfates, phosphates, nitrates, carbonates, and combinations
thereof that are assessed in a leach test.” Ex. 1004 ¶ 48 (last sentence). No
explanation is given as to why Dr. Hirsekorn is able to state his opinion,
particularly since Dr. Hirsekorn does not address the differences, if any,
between Gogek’s “asbestos fines” and Superwool 607.
We have broad discretion to assign weight to be accorded witness
testimony. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose
the underlying facts or data on which the opinion is based is entitled to little
or no weight.”); In re American Academy of Sci. Tech. Ctr., 367 F.3d 1359,
1368 (Fed. Cir. 2004); Velander v. Garner, 348 F.3d 1359, 1370–71 (Fed.
Cir. 2003); Bronshtein v. Roser, 61 USPQ2d 1745, 1756 (BPAI 2002)
(opinion testimony given little weight where underlying basis has not been
provided). Section 42.62(a) is applicable at any stage, including during a
“preliminary proceeding” which (1) begins with the filing of a petition and
(2) ends with a written decision as to whether a trial will be instituted.
Nothing in the Federal Rules of Evidence, which are applicable to
IPRs (37 C.F.R. § 42.62(a)), or Federal Circuit jurisprudence, requires a fact
finder to credit unsupported assertions of an expert witness. Rohm and Haas
Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). See also
Ashland Oil, Inc. v. Delta Resins and Refractories, Inc., 776 F.2d 281, 294
(Fed. Cir. 1985) (lack of factual support for expert opinion may render the
testimony of little probative value in a validity determination).

IPR2015-01527
Patent 8,940,089 B2

14

Petitioner seems to argue that, at least at this stage, we should not
doubt Dr. Hirsekorn’s statement. But, Petitioner’s argument cannot justify a
lack of credible underlying support for its expert’s opinions. A lack of
credible underlying support is no justification to put a patent owner to the
expense of defending an inter partes review trial. 37 C.F.R. § 42.1(b) (“This
part shall be construed to secure the just, speedy, and inexpensive resolution
of every proceeding.”).
We have not overlooked Petitioner’s reply argument that “Patent
Owner did not challenge Dr. Hirsekorn’s analysis and determination that
Superwool 607 is equivalent to asbestos for purposes of the Gogek process.”
Paper 14, pages 8–9. The answer is that Patent Owner had no reason to
mount a detailed challenge in its Preliminary Response given the lack of
underlying support for Dr. Hirsekorn’s opinions. In IPR proceedings, it is
up to the petitioner to make out its case; it is not the responsibility of a
patent owner to challenge a case which has not been made. Petitioner’s
failure to include documentary support for Dr. Hirsekorn’s opinions is a
self-imposed hardship created by Petitioner.
For the reasons given, we find that Petitioner has not made out a case
that, after a trial on the merits, there is a reasonable likelihood that it will
prevail with respect to claim 1. 35 U.S.C. § 314(a).
In view of our basis for declining to institute an inter partes review
trial, it is not necessary for us to address other responsive arguments
addressed in Patent Owner’s Preliminary Response.

IPR2015-01527
Patent 8,940,089 B2

15

H. Other Challenged Claims
In addition to claim 1, Petitioner challenges other claims, viz., claims
2, 4–15, 23–26, 28–31, 35–41, 50, 57, 62, 64–67, and 70–72.
Since these claims depend from claim 1, and Petitioner has not made
out its case with respect to claim 1, it follows that Petitioner likewise has not
made out its case with respect to the remaining challenged claims.
IV. Order
Upon consideration of the Petition (Paper 1), the Preliminary
Response (Paper 12), the Reply (Paper 14), and the evidence presently
before us, and for the reasons given, it is
ORDERED that the Petition (Paper 1) is denied.

IPR2015-01527
Patent 8,940,089 B2

16

FOR PETITIONER:

Kristopher L. Reed
Jeffrey M. Connor
KILPATRICK TOWNSEND & STOCKTON LLP
jmipr@kilpatricktownsend.com
jmconnoor@kilpatricktownsend.com

FOR PATENT OWNER:

James R. Sweeney II
Joshua P. Larsen
Daniel Lueders
BARNES & THORNBURG LLP
james.sweeney@btlaw.com
joshua.larsen@btlaw.com
dlueders@uspatent.com