Johns Manville Corporationv.Knauf Insulation, Inc.

Patent Trial and Appeal Board

Jan 4, 2016

14026394 (P.T.A.B. Jan. 4, 2016)

Trials@uspto.gov Paper 10
571-272-7822 Entered: 4 January 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

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

Case IPR2015-01633
Patent 9,039,827 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. 9,039,827.” Paper 1.
Patent Owner timely filed a Preliminary Response. Paper 9.

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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 6, page 1.
B. Involved Patent
The involved patent is U.S. Patent No. 9,039,827 B2 (“the ʼ827
patent”), issued 26 May 2015, based on an application filed 13 September
2013. Ex. 1001, page 1.
The ʼ827 patent contains claims 1–73. 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 ʼ827 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 6, page 2.
D. Related PTO Matters
The parties are involved in two other IPRs involving the ʼ827 patent:
(1) IPR2015-01673, where Petitioner challenges claims 3, 27,
32–34, 42–49, 51–55, 58–61, 63, 68, and 69, and
(2) IPR2015-01683, where Petitioner challenges claims 3,
16–22, 27, 34, 43, 45–49, 51–56, 63, and 73.

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As Table 1 demonstrates (where X means challenged), Petitioner
ultimately seeks cancellation of all claims of the ʼ827 patent.

Table 1
Claim IPR2015-01633 IPR2015-01673 IPR2015-01683
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
19 X

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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
42 X

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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
65 X

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66 X
67 X
68 X
69 X
70 X
71 X
72 X
73 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 1”). Paper 1, page 5.
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

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III. Ground 1
A. Claim 1
Independent claim 1, reproduced from the ʼ827 patent, reads (italics,
matter in brackets and some indentation added):
A [1] finished material comprising

[2] a collection of non-woven mineral fibers
maintained together by a cured, substantially
formaldehyde-free, nitrogenous polymer-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. 14:41–49.
The other challenged claims depend from independent claim 1.
Similar subject matter is involved in IPR2015-01527 (institution of
inter partes review denied (Paper 17)).
Claim 1 of U.S. Patent No. 8,940,089 B2 involved in IPR2015-01527
reads:
A [1] finished material comprising

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

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[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.

The difference is (1) claim 1 in IPR2015-01527 contains the word
“melanoidin” whereas (2) in this IPR the word “malenoidin” is replaced with
“nitrogenous polymer.”
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).
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 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]

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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 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 standard of proof is a preponderance of the evidence.
35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
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

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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 Robertson is construed to mean that one cannot prove inherency
by showing that a claimed limitation “may” occur, while Concrete Pipe
holds that proof by a preponderance of the evidence requires sufficient
evidence to establish that the claimed limitation is more likely than not
inherent in what is described by a prior art reference. See Rapoport v.
Dement, 254 F.3d 1053, 1063 (Fed. Cir. 2001) (inherency, a question of fact,
cannot be established by a preponderance of the evidence based on evidence
that a certain thing may result from a given set of circumstances).
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

Ex. 1003, col. 2:60–72; Ex. 1004, page 18, ¶ 47.

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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, pages 19–20, ¶ 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 (a form of 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 9, page 14.

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F. Discussion
Dr. Hirsekorn states that Superwool 607 was substituted for “asbestos
fines.”
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 prior art was offered by
Petitioner in support of Dr. Hirsekorn’s statement. 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 would have been considered by those
skilled in the art to be “equivalent to asbestos” for making insulating blocks
or that it would have been obvious to use Superwool 607 in place of asbestos
fines to practice the Gogek invention. 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 that “[u]sing Superwool 607 instead of
asbestos [fines] 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 20, last sentence of ¶ 48. No

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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).
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 support is no justification to put a patent owner to the expense of

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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 that the “Patent Owner Preliminary Response
did not challenge Dr. Hirsekorn’s analysis and determination that Superwool
607 is equivalent to asbestos for purposes of the Gogek process.” Paper 11,
page 8. 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.
G. 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.

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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) and the Preliminary
Response (Paper 9), and the evidence presently before us, and for the
reasons given, it is
ORDERED that the Petition (Paper 1) is denied.

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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
BARNES & THORNBURG LLP
james.sweeney@btlaw.com
joshua.larsen@btlaw.com

Daniel J. Lueders
WOODARD EMHARDT MORIARTY McNETT & HENRY LLC
dlueders@uspatent.com