Owens Corningv.CertainTeed CorporationDownload PDFPatent Trial and Appeal BoardMar 9, 201613291234 (P.T.A.B. Mar. 9, 2016) Copy Citation Trials@uspto.gov Paper 35 Tel: 571-272-7822 Entered: March 8, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ OWENS CORNING, Petitioner, v. CERTAINTEED CORPORATION, Patent Owner. _______________ Case IPR2014-01401 Patent 8,383,228 B2 _______________ Before BENJAMIN D. M. WOOD, JAMES A. TARTAL, and KRISTINA M. KALAN, Administrative Patent Judges. WOOD, Administrative Patent Judge. FINAL WRITTEN DECISION 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 IPR2014-01401 Patent 8,383,228 B2 2 I. INTRODUCTION A. Background Owens Corning (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to institute an inter partes review of claims 1–22 (the “challenged claims”) of U.S. Patent No. 8,383,228 B2 (Ex. 1035, “the ’228 patent”). CertainTeed Corp. (“Patent Owner”) filed a Preliminary Response (Paper 8). We instituted an inter partes review of claims 1-22 based on the following grounds of unpatentability: References Basis Claims Challenged Venrick1 and Frankoski2 § 103(a) 1–22 Venrick and Kiik3 § 103(a) 1–22 Decision on Institution (Paper 10) 19. After the Board instituted trial, Patent Owner filed a Patent Owner Response (Paper 17, “PO Resp.”), to which Petitioner replied (Paper 26, “Reply”). Oral Argument was held on December 8, 2015, and the transcript (Paper 34, “Tr.”) has been entered in the record. We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a). We determine that Petitioner has shown by a preponderance of the evidence that claims 1–22 are unpatentable. 1 US 2,161,440 to Venrick (June 6, 1939) (Ex. 1013). 2 US 5,822,943 to Frankoski (Oct. 20, 1998) (Ex. 1010). 3 US 2001/0055680 A1 to Kiik (Dec. 27, 2001) (Ex. 1018). IPR2014-01401 Patent 8,383,228 B2 3 B. The ’228 Patent The ’228 patent issued on February 26, 2013 from an application filed November 8, 2011, and claims priority to November 6, 2002. Ex. 1035, cover page. The ’228 patent is directed to a shingle with a separate, exterior reinforcement layer mounted to the rear surface of the shingle. Figures 2 and 2A, reproduced below, depict an embodiment of the claimed invention: Shingle 20, depicted in Figures 2 and 2A, is similar to prior art shingles in that it comprises a mat impregnated with asphalt and then coated with a granular material on each exposed surface. Id. at 2:49–55, 3:15–16, Figs. 2–2A. Nailing zone “N” is located on the front surface of the shingle between edges 27 and 28 and above slots 24. Id. at 3:13–15. A reinforcement layer 29—preferably woven fiberglass scrim—is mounted on rear surface 21 opposite nailing zone N, across the upper end of tab portion 23 and the lower end of headlap portion 22. Id. at 3:15–21. The scrim layer may extend farther into the tabs, as shown in Figure 3. Id. at 3:34–44, Fig. 3. Scrim layer 29 is not coated with asphalt or granules, which allows it to resist bending and cracking across the upper end of the tab portion when the shingle is bent by wind or other upward lifting forces. Id. at 3:48–56. In IPR2014-01401 Patent 8,383,228 B2 4 use, the shingle is nailed through the nailing zone and reinforcement layer onto the roof. Id. at 4:25–33. The reinforcement layer catches the nail and helps keep the shingle more securely fastened to the roof in adverse conditions. Id. at 4:33–43, 6:36–50. C. Illustrative Claims Claims 1, 13, and 19 are independent. Claims 2–12 ultimately depend from claim 1, claims 14–18 ultimately depend from claim 13, and claims 20–22 depend from claim 19. Claims 1 and 19 are reproduced below: 1. A shingle having front and rear exterior surfaces, a width defined by upper and lower edges and a length defined by right and left edges, including an upper headlap portion and a lower tab portion, comprising: (a) a base layer of mat having front and rear surfaces; (b) a coating of asphaltic material on both front and rear surfaces of the mat; (c) coatings of granular material on both front and rear surfaces and adhered thereto, which, together with said base layer of mat and coatings of asphaltic material comprise a first thickness layer; (d) a longitudinal fastening zone between right and left shingle edges, generally intermediate said upper and lower edges; (e) an at least partially externally visible generally longitudinal reinforcement second thickness layer of a substantially thinner dimension than said first thickness layer, adhered to an exterior surface of said shingle and extending at least substantially between right and left edges of the shingle; and (f) said reinforcement layer extending across a lower end of a headlap portion; wherein said reinforcement layer comprises a IPR2014-01401 Patent 8,383,228 B2 5 material selected from the group consisting of woven or nonwoven: (i) thin fabric; (ii) plastic film; (iii) paper; (iv) parchment; (v) foil; and (vi) scrim. 19. A method of making a shingle having front and rear exterior surfaces, a width defined by upper and lower edges and a length defined by right and left edges, including an upper headlap portion and a lower tab portion, comprising the steps of: (a) providing a base layer of mat having front and rear surfaces; (b) providing a coating of asphaltic material on both front and rear surfaces of the mat; (c) providing coatings of granular material on both front and rear surfaces and adhered thereto, which, together with said base layer of mat and coatings of asphaltic material comprise a first thickness layer; (d) defining a longitudinal fastening zone between right and left shingle edges, generally intermediate said upper and lower edges; (e) adhering an at least partially externally visible a generally longitudinal reinforcement second thickness layer of a substantially thinner dimension than said first thickness layer to an exterior surface of said shingle, the reinforcement layer extending at least substantially between right and left edges of the shingle; and (f) whereby said reinforcement layer extends across a lower end of a headlap portion; wherein said reinforcement layer IPR2014-01401 Patent 8,383,228 B2 6 comprises a material selected from the group consisting of woven or nonwoven: (i) thin fabric; (ii) plastic film; (iii) paper; (iv) parchment; (v) foil; and (vi) scrim. II. ANALYSIS A. Claim Construction Petitioner proposes constructions for “said shingle,” “adhered to an exterior surface of said shingle,” “reinforcement . . . layer,” and “substantially thinner.” Pet. 23–34. Patent Owner does not respond to any of Petitioner’s proposed constructions or advocate its own construction for any term. We determine that no express claim construction is required for any term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those [claim] terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). All terms will be accorded their ordinary and customary meaning as would be understood by one of ordinary skill at the time of the invention. B. Claims 1–22, Obviousness over Venrick and Either Frankoski or Kiik Petitioner asserts that claims 1–22 would have been obvious over Venrick and Frankoski. Pet. 41–50. Petitioner also asserts that claims 1–22 would have been obvious over Venrick and Kiik. Id. at 50–59. Petitioner’s contentions are supported by the Declaration of Michael L. Bryson. IPR2014-01401 Patent 8,383,228 B2 7 Ex. 1003. In opposition to Petitioner’s contentions, Patent Owner relies on the Declaration of Robert E. Metz. Ex. 2009. In resolving the question of the obviousness of the claims, we consider the following underlying factual determinations: (1) the scope and content of the prior art; (2) the level of skill in the art; (3) any differences between the claimed subject matter and the prior art; and (4) secondary considerations of non-obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17 (1966). 1. Scope and Content of the Prior Art a. Venrick (Ex. 1013) Venrick describes an otherwise “well known” roofing shingle to which is added a “raised median portion,” or “reinforcing strip” extending longitudinally along the shingle. Ex. 1013, 1:1:1–30, 40–41.4 Figure 1 of Venrick is reproduced below: 4 Our citations to Venrick are in the form of page:column:line(s), the page numbers being those original to the document rather than those added by Petitioner. Thus, Ex. 1013 1:1:1–30 refers to Venrick page 1, column 1, lines 1–30. IPR2014-01401 Patent 8,383,228 B2 8 Figure 1 of Venrick shows a top plan view of a strip shingle embodiment of the invention. Id. at 1:2:7–8. Shingle strip 10 consists of felt base 12 that is “saturated and coated with asphalt and surfaced with mineral granules 13.” Id. at 1:2:44–51. Raised median strip 15 “extends longitudinally of the shingle in the vicinity of the upper ends 16 of the openings 14” and “protrudes from the upper surface.” Id. at 2:1:13–16. Upper ends 16 “are effectively strengthened and reinforced so as to prevent tearing of the shingle at these points.” Id. at 2:1:22–24. The strip “may be formed of felt, or metal, or may consist of alternate layers of asphalt and granules, or layers of roofing tape suitably bonded together.” Id. at 2:2:44– 48, 2:2:73–3:1:1. Median strip 15 is preferably applied to the shingle after manufacture, “and thus said strip will be suitably cemented to the granule surfacing 13.” Id. at 2:1:35–37. The raised median strip may also be located on the undersurface of the shingle. Id. at 2:2:60–62, Figs. 8, 10, 12. The raised median portion serves several purposes. First, Venrick’s shingles are installed on a roof such that the raised median strip supports “the butt end of the overlapping shingle of the next horizontal course,” giving “a semblance of thickness to the butt ends of the shingles . . . resulting in a better shadow line” and “a heavy substantial appearance” to the roof as a whole. Id. at 1:1:30–38, Fig. 3. Second, as noted above, because the strip is located over upper ends 16 of openings 14, the strip “strengthens and reinforce[s] [upper ends 16] to prevent tearing at these points.” Id. at 2:1:22–24. Third, the strip “give[s] greater nailing strength to the shingle” so that “the shingle will not readily tear at the nail holes.” Id. at 2:2:16–19. Finally, the raised strip prevents moisture from seeping between IPR2014-01401 Patent 8,383,228 B2 9 shingles by “act[ing] as a barrier” and adds rigidity to the tabs to “resist[] the action of the wind tending to lift them up.” Id. at 2:2:31–33, 3:1:7–9. b. Frankoski (Ex. 1010) Frankoski describes a shingle with improved long-term performance, which is achieved “by using a substrate exhibiting properties which will maintain its physical characteristics throughout the life of the product.” Ex. 1010, 3:17–20. The substrate preferably comprises “a fiberglass scrim/fiberglass mat composite including a rubberized binder, which provides a superior strength and nail pull-through resistance to withstand, for example, hurricane force winds.” Id. at 3:21–25. An embodiment of Frankoski’s shingle is shown in Figure 1, reproduced below: Figure 1 of Frankoski is an illustration of an exemplary two-ply laminated roofing shingle comprising upper layer 5 bonded to lower layer 7. Id. at Fig. 1, 4:22–25. Lower layer 7 serves as a “backing piece” and “preferably is at least about 6 inches wide.” Id. at 4:51–53. Figure 2, reproduced below, shows lower layer 7 in greater detail: IPR2014-01401 Patent 8,383,228 B2 10 Figure 2 of Frankoski shows scrim 60 bonded to base mat 65, both of which are covered by upper and lower coating layers 70, 75. Id. at 5:1–6. Scrim 60 “preferably extends along the entire length and width of the shingle,” but partial size scrims also may be used, e.g., one that is “three or four inches wide and positioned so as to coincide with the nail zone for the shingle.” Id. at 5:27–34. Frankoski further states that the scrim layer can be placed “either above or below the mat.” Id. at 3:41–42. c. Kiik (Ex. 1018) Kiik discloses roofing shingles “having a novel backing which renders the material pliable and imparts improved characteristics such as resistance to damage from hail.” Ex. 1018 ¶ 1. In a preferred embodiment, the backing may be made of a woven or non-woven polyester mat, although a variety of other materials may also be used. Id. ¶¶ 4, 6. “The backing material is adhered to the face of the back of the shingle in lieu of fines, granules or other standard backing material,” and “may provide full or partial coverage of the lower surface of the shingles.” Id. ¶¶ 7, 10. “Shingles made with the inventive polyester backing have better tear strength than standard shingles backed with finely divided granules[,] . . . IPR2014-01401 Patent 8,383,228 B2 11 demonstrate increased nail holding ability and maintain structural integrity at elevated temperatures.” Id. ¶ 9. d. The Relevance of the Respective Ages of the References Patent Owner argues that the age of the cited references spans 60 years, and “this fact alone would have significant import to a [person of ordinary skill in the art] in 2002.” PO Resp. 9. Particularly, Patent Owner argues that Venrick, which issued in 1939, identifies “issues with conventional organic shingles of that era” and teaches that, “[a]t that time, organic shingles were heavy and the nail was the shingle’s only point of attachment.” Id. at 9–11. Patent Owner states that Frankoski “came almost 60 years later—at a time when shingles could be made from much lighter, fiberglass-based materials specifically because they were no longer held to a roof exclusively via nails and their own weight,” but also used asphalt-based sealing strips. Id. at 12. In sum, Patent Owner argues: “By 2002, a [person of ordinary skill in the art] would have understood that Venrick [] arose out of a different technology era than Frankoski [] and Kiik [],”in that Venrick “was directed to multiple issues relating to that era’s heavy, pliant organic shingles, which were held to the roof exclusively by nails,” and that Venrick’s raised strip addressed those issues. Id. at 13–14. Petitioner replies that, regardless of Venrick’s early publication date, there can be “no dispute that the pertinent art includes Venrick.” Reply 2; see also Tr. 24:14–21. Petitioner takes issue with Mr. Metz’s testimony that Venrick “arose out of a different technology era than” Frankoski and Kiik, stating that Mr. Metz admitted that Venrick, like Frankoski and Kiik, relates to the field of roofing materials and, in particular, asphalt shingles. Reply 14 IPR2014-01401 Patent 8,383,228 B2 12 (citing Ex. 1046, passim). Petitioner also criticizes “Patent Owner’s attempt to create a technological divide between shingles made of organic mat, and so-called ‘modern’ shingles” as fictitious, stating that even Patent Owner continued to make and sell organic shingles at least through 2005. Id. at 14– 15. Petitioner also points out that Frankoski discloses organic shingles. Id. at 16 (citing Ex. 1010, 5:9–12). The age of a cited reference, in and of itself, does not negate its use in determining obviousness. See Nike, Inc. v adidas AG, No. 2014-1719, 2016 WL 537609, at *9 (Fed. Cir. Feb. 11, 2016) (“[O]ur decision in Leo Pharmaceutical [Products, Ltd. v. Rea, 726 F.3d 1346, 1356–57 (Fed. Cir. 2013)] is entirely consistent with established precedent that ‘[t]he mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem.’” (alteration in original) (quoting In re Wright, 569 F.2d 1124, 1127 (CCPA 1977)).5 Patent Owner has not shown that the art tried and failed to solve the problem allegedly solved by the subject patent. We also are not persuaded that Venrick’s age or subject matter would have prevented a person of ordinary skill from combining it with Frankoski and/or Kiik. Even though there is a temporal gap between Venrick and Frankoski or Kiik, a skilled artisan is presumed to have been aware of Venrick. See Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986) (“The person of ordinary skill is a hypothetical person who is presumed to be aware of all the pertinent prior 5 Patent Owner does not disagree. Tr. 43:5–6 (“[W]e don’t say that references because they are old are irrelevant.”). IPR2014-01401 Patent 8,383,228 B2 13 art.”). Indeed, the skilled artisan would not have dismissed or discounted Venrick because of subsequent technical advances occurring in the art up to the date of the invention, but would have read Venrick in light of those advances, including the use of fiberglass-based materials and sealing strips. 2. Level of Skill in the Art Petitioner, as supported by Mr. Bryson, contends that one of ordinary skill in the art would have “a bachelor’s degree, and potentially some advanced schooling, in chemistry, engineering (such as chemical, civil, or mechanical engineering), materials science, physical science, or a related discipline, and approximately 3-5 years of additional training and experience in the field of roofing materials and asphalt shingles.” Pet. 22–23 (citing Ex. 1003 ¶ 44). Patent Owner argues that the testimony of Mr. Bryson should be given less weight, because he did not apply the proper level of skill in the art. PO Resp. 4–6. According to Patent Owner, Mr. Bryson later admitted during cross-examination that a person of ordinary skill in the art could have less skill, and thus the Board should reject the high level of skill initially set forth by Mr. Bryson in favor of the level set by Patent Owner’s declarant, Mr. Metz. Id. at 5–6. Mr. Metz testified that a person of ordinary skill in the art would have: “(1) a bachelor’s degree in a related discipline (i.e., physical science, materials science, or engineering) and one year of training and/or experience in the field of roofing materials and asphalt shingles or (2) two to three years training and/or experience in the field of roofing materials and asphalt shingles.” Id. at 4–5 (citing Ex. 2009 ¶ 9.). IPR2014-01401 Patent 8,383,228 B2 14 The two levels of skill in the art put forth by Mr. Bryson and Mr. Metz are not substantially different, and in fact overlap significantly. As noted by Patent Owner, Mr. Bryson later agreed that the skill level could be less. Neither party has explained how, if at all, these different skill levels change the analysis in this case. Moreover, an express definition of the level of ordinary skill is not required in all situations, as the level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We find the level of ordinary skill in the art to be reflected in the cited references, and we determine that no express statement of the level of ordinary skill in the art is required. We also are not persuaded that Mr. Bryson’s testimony should be given less weight for failing to apply the proper level of skill in the art, because Patent Owner has not demonstrated how any substantive difference between the level of skill applied by Mr. Bryson and that asserted by Mr. Metz renders any of Mr. Bryson’s testimony erroneous. Patent Owner also argues that Mr. Bryson incorrectly used his personal skill and knowledge in his obviousness analysis. PO Resp. 6–9. Petitioner responds that Mr. Bryson provided his opinions from the point of view of a person of ordinary skill, and did not bring any special insights other than those that would be assessed by a person having that knowledge and experience. Tr. 17:14–18. Regarding the specific statements of Mr. Bryson highlighted by Patent Owner (PO Resp. 8), it is within our discretion to assign the appropriate weight to be accorded to the information in Mr. Bryson’s testimony. Patent Owner argues that Mr. Bryson used an IPR2014-01401 Patent 8,383,228 B2 15 impermissibly high level of skill and his own personal knowledge of Kiik in rendering his opinions, but Mr. Bryson is also on the record as stating that he used the perspective of a person of ordinary skill in the art as of November 6, 2002, in doing the analysis described in his declaration. Ex. 1003 ¶ 45. The Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. Gnosis S.P.A. v. S. Ala. Med. Sci. Found., Case IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64). Accordingly, we evaluate Mr. Bryson’s testimony along with the remainder of the evidence before us to reach our conclusions. 3. Differences Between the Claimed Subject Matter and the Prior Art a. Obviousness of Claims 1–22 over Venrick and Frankoski Petitioner contends that the combination of Venrick and Frankoski meets all of the limitations of claim 1. Pet. 42–44. We agree. First, Venrick teaches an asphalt shingle that meets limitations (a) through (d) of claim 1. For limitations (a), (b), and (c), Venrick describes shingle strip 10 consisting of felt base 12 that is saturated and coated with asphalt and surfaced with mineral granules. Ex. 1013, 1:2:46–50, Fig. 1. Venrick also describes the longitudinal fastening zone of limitation (d), in that it teaches that “the shingles are nailed in a plurality of places and preferably immediately above the upper ends 16 of openings 14,” id. at 2:2:8–10, which is “generally intermediate said upper and lower edges,” as limitation (d) requires. See id. at Fig. 1 (depicting a row of nail openings 23 above tabs 11). IPR2014-01401 Patent 8,383,228 B2 16 In addition, Venrick teaches adhering “raised median strip” 15 to the asphalt shingle across the upper section of tabs 11 and over the region where the shingle is nailed. Id. at 2:1:11–14, 2:2:11–17, Fig. 1. The raised median strip thus “extend[s] across a lower end of a headlap portion” as required by limitation (f). The raised median strip also corresponds to the “at least partially externally visible generally longitudinal reinforcement second thickness layer” of limitation (e) except that Venrick does not describe the raised layer as having a “substantially thinner dimension than said first thickness layer,” as limitation (e) recites. On the contrary, Venrick discusses two specific embodiments, one having a median strip that is one and one- half times the thickness of the base shingle, the other having a median strip that is twice the thickness of the base shingle. Id. at 2:1:51–59, Figs. 4, 5. Frankoski, like Venrick, discloses the prior art asphalt shingle meeting limitations (a) through (d) of claim 1,6 and further discloses scrim layer 60 that is positioned to coincide with at least a portion of the shingle’s nail zone. Ex. 1010, 1:9–20, 4:22–38, 4:66–5:12, 5:29–42. The scrim layer also extends across a lower end of a headlap portion (id. at Figs. 1, 2), as limitation (f) recites, and scrim is one of the materials from which limitation (f) requires the reinforcement layer to be made. Further, both parties acknowledge that Frankoski’s scrim layer 60 is “of a substantially thinner dimension” than Venrick’s base shingle. PO Resp. 28; Ex. 1003 ¶¶ 454; Ex. 1046, 221:8–18, 241:13–20. We credit the testimony of Mr. Bryson that a person of ordinary skill would have understood that Frankoski’s scrim 6 In fact, the ‘228 patent includes Frankoski’s Figure 1 (relabeled Figure 4B) and describes it as the “preferred laminated roofing shingle . . . in accordance with the present invention.” Ex. 1035, 4:44–45. IPR2014-01401 Patent 8,383,228 B2 17 material could be adhered to the outer surface of a standard asphalt shingle in the same way that Venrick’s raised strip is adhered. Ex. 1003 ¶ 454. We determine, therefore, that the combination of Venrick and Frankoski meets all of the limitations of claim 1. Independent claim 13 is drawn to a roof having the shingle recited in claim 1 fastened thereto. Independent claim 19 is drawn to a method of making a shingle comprising providing all of the limitations recited in claim 1. For the reasons stated above, we determine that the combination of Venrick and Frankoski meets all of the limitations of claims 13 and 19. Patent Owner does not argue the patentability of these claims separately from claim 1. Claim 9 depends from claim 1 and additionally recites “wherein the shingle is a laminated shingle comprising upper and lower layers.” Claims 10–12 depend from claim 9. Claim 18 depends from claim 13 and additionally recites that the shingle is a laminated shingle. Petitioner contends that “laminated shingles were one of the three most common shingles at the time of the invention,” and Frankoski “explicitly teaches a laminated shingle with a lower layer underlying the upper layer.” Pet. 48. Further, according to Petitioner, a “person of ordinary skill would have been motivated to utilize the reinforcing layer disclosed in Venrick [] and Frankoski [], with all of the most common types of shingles such as laminated shingles in order to achieve the benefits disclosed in Venrick [] and Frankoski [] and would have found such a modification to be an obvious design choice given the popularity of laminated shingles.” Id. (citing Ex. 1003 ¶ 560). Patent Owner responds that Petitioner failed to provide a reasonable basis for replacing Venrick’s organic shingle with a laminated IPR2014-01401 Patent 8,383,228 B2 18 shingle as taught by Frankoski and Kiik. PO Resp. 45–47. However, we understand Petitioner’s position not to be that the combination would replace an organic shingle with a laminated shingle, but rather that the teachings of Venrick and Frankoski are applicable to both organic shingles and laminated shingles. Venrick teaches a raised median strip, adhered to an exterior surface of a conventional shingle, and that “various other forms of the device will of course be apparent to those skilled in the art without departing from the spirit of the invention.” Ex. 1013, 3:1:59–62. As Petitioner also points out, both declarants agree that “various other forms of the device” would have included other types of shingles at the time of the invention. Reply 23 (citing Ex. 1048, 430:20–431:7; Ex. 1046, 314:17–315:4; Ex. 2010, 201:10– 204:2). Patent Owner’s argument fails to address what the references disclose in combination, and is therefore not persuasive. Claim 8 depends from claim 1 and additionally recites “wherein the shingle has a resistance to nail pull of at least about 33 lb.” For this additional limitation, Petitioner contends that Frankoski “reports testing results demonstrating nail pull resistance ranging from 57–100.1 lb.” Pet. 47–48 (citing Ex. 1010, 6:15–7:28). Patent Owner responds that the data on which Petitioner and Mr. Bryson rely “relates to laminated, fiberglass shingles,” and not to “an organic shingle . . . that’s been reinforced with Frankoski’s scrim.” PO Resp. 43–44. However, claim 8 depends from claim 1, which is not limited to any type of shingle, and therefore encompasses laminated shingles. Further, as discussed above, a person of ordinary skill would have applied Venrick’s teaching of a raised median strip, as modified by Frankoski, to a laminated shingle. Therefore, we consider Frankoski’s nail-pull-strength data to disclose the additional IPR2014-01401 Patent 8,383,228 B2 19 limitation of claim 8. Accordingly, we determine that the combination of Venrick and Frankoski teaches all of the limitations of claim 8. We have reviewed Petitioner’s evidence (Pet. 45–47, 49–50) regarding dependent claims 2–7, 14–17, and 20–22, and determine that Petitioner has established that Venrick and Frankoski describe the limitations of claims 2–7, 14–17, and 20–22. Patent Owner does not argue the patentability of these claims separately from claim 1. Further, we agree with Petitioner that a person of ordinary skill would have had a reason to replace Venrick’s raised strip with Frankoski’s scrim layer. Frankoski teaches that its shingle reinforced with a fiberglass scrim substrate “provides a superior strength and nail pull-through resistance to withstand, for example, hurricane force winds.” Ex. 1010, 3:20–24. Frankoski provides test results demonstrating that the scrim layer improves nail-pull strength compared to a conventional shingle without the scrim layer. Id. at 3:55–58, 6:12–27, 6:47–61; Ex. 1003 ¶ 378. Frankoski also teaches that its scrim material improves tear resistance. See Ex. 1010, 3:53– 55 (the “substrate [comprising fiberglass scrim] gives sufficient strength to the shingle so that during a storm the shingle is better able to resist the tendency of tabs to rip”). Patent Owner’s declarant, Robert Metz, agrees IPR2014-01401 Patent 8,383,228 B2 20 that Frankoski attributes these improvements to the scrim layer. Ex. 1046, 219:18–220:12.7 Moreover, a person of ordinary skill would have appreciated that a benefit in replacing Venrick’s raised strip with Frankoski’s scrim is that the scrim is lighter than Venrick’s raised strip, and thus would produce a lighter shingle. See Ex. 1003 ¶ 453; Ex. 1046, 312:16–22; see also Ex. 2013, 4:36– 39 (lighter shingles “reduc[e] freight costs and roof loads”). b. Obviousness of Claims 1–22 over Venrick and Kiik We agree with Petitioner that the combination of Venrick and Kiik meets all of the limitations of claim 1. Our analysis with respect to Venrick’s disclosure of the elements of claim 1, supra, applies to the combination of Venrick and Kiik as well. Kiik also discloses an asphalt shingle, and further discloses a flexible backing material “adhered to the face of the back of the shingle.” Ex. 1018 ¶ 7. Kiik teaches that “[s]hingles 7 In this regard, Mr. Metz testified as follows: Q. What does Frankoski disclose, generally? A. Generally, that his product, by adding the—the scrim to the back—not the back, but inside the shingle as a—as a separate layer increased the properties of the different strength tests that he ran. Q. What properties? A. Number one was tensile—I mean tear—and—tear strength, the resistance to separation, which is the nail test. He ran an adhesive test too on—on the product known as a bond strength test, and he ran a tensile test, yes. Q. So—so by 2002 the person of ordinary skill in the art would have known that scrim would be used to improve these properties in an asphalt shingle, correct? A. That’s true. IPR2014-01401 Patent 8,383,228 B2 21 made with the inventive polyester backing have better tear strength than standard shingles backed with finely divided granules,” and “demonstrate increased nail holding ability.” Id. ¶ 9. Further, there is no dispute that Kiik’s backing material would have “a substantially thinner dimension” than Venrick’s base shingle. Ex. 1003 ¶ 586; PO Resp. 28. We also credit the testimony of Mr. Bryson that a person of ordinary skill would have understood that Kiik’s backing material could be adhered to the outer surface of a standard asphalt shingle in the same way that Venrick’s raised strip is adhered. Ex. 1003 ¶ 587. We determine, therefore, that the combination of Venrick and Kiik meets all of the limitations of claim 1. We have reviewed the parties’ evidence and arguments with respect to claims 8, 9, 10–12, and 18, and, for the reasons stated above with respect to the combination of Venrick and Frankoski, determine that Venrick and Kiik describe the limitations of these claims. In addition, we have reviewed Petitioner’s evidence with respect to claims 2–7, 14–17, and 20–22, and determine that Venrick and Kiik describe the limitations of these claims. Patent Owner does not argue the patentability of claims 2–7, 14–17, and 20– 22 apart from claim 1. Further, we agree with Petitioner that a person of ordinary skill would have had a reason to replace Venrick’s raised strip with Kiik’s backing material. Venrick teaches adhering a reinforcing layer to the outer surface of a shingle to, among other reasons, improve the shingle’s tear strength and nail pull strength. Ex. 1013, 1:1:30–37, 2:2:16–19. Likewise, Kiik teaches that “[s]hingles made with the inventive polyester backing have better tear strength,” “pass impact tests despite their light product weight,” and “demonstrate increased nail holding ability.” Id. ¶ 9. Therefore, a person of IPR2014-01401 Patent 8,383,228 B2 22 ordinary skill would reasonably have expected Kiik’s backing material to function as reinforcing material to improve tear strength and nail-pull strength in place of Venrick’s raised strip. Id.; Ex. 1003 ¶ 479. Further, as noted above with respect to the Venrick/Frankoski combination, a person of ordinary skill would have appreciated that a benefit in replacing Venrick’s raised strip with Kiik’s backing material would be a lighter shingle with similar or better strength. We have reviewed Petitioner’s evidence (Pet. 53–59) regarding claims 2–22. For the reasons stated above, we determine and determine that Petitioner has established that Venrick and Frankoski describe the limitations of claims 2–22. Patent Owner does not argue the patentability of these claims apart from claim 1. c. Patent Owner’s Arguments Patent Owner makes a number of arguments against a determination of obviousness. We address each one in turn. (i) Reason to Combine First, Patent Owner argues that Petitioner’s reasons for combining Venrick with Frankoski or Kiik are without evidentiary support. PO Resp. 15. According to Patent Owner, Petitioner’s reason for combining these references is based on the assertion that Frankoski’s scrim is at least as strong, if not stronger, than the materials Venrick teaches to use for its raised strip. Id. Patent Owner notes that the data in Frankoski on which Petitioner and its declarant rely “simply compares the nail strength of a shingle with an internal scrim reinforcement . . . to a shingle without any reinforcement,” but does not compare Frankoski’s scrim material with Venrick’s raised-strip materials. Id. at 17. Patent Owner further observes that Petitioner’s IPR2014-01401 Patent 8,383,228 B2 23 declarant, Mr. Bryson, provides no other data supporting the comparative strength of Frankoski’s scrim with respect to Venrick’s materials; admits that one of Venrick’s materials, metal, would have been stronger; and improperly relies on his personal opinion as to the relative strengths of the materials. Id. at 21–25. Patent Owner makes a similar argument with respect to the Venrick/Kiik combination. Id. at 18–19. We agree with Patent Owner that the record does not contain any data specifically demonstrating that Frankoski’s scrim material or Kiik’s backing material is as strong as or stronger than Venrick’s raised-strip materials. However, we do not consider such data to be necessary to establish obviousness. A combination need not be superior to other alternatives to render an invention obvious. See Dome Patent L.P. v. Lee, 799 F.3d 1372 (Fed. Cir. 2015) (“[J]ust because better alternatives may exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” (quoting In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012)) (internal quotation marks omitted)). We understand Petitioner’s contention to be that a person of ordinary skill would have had a reason to combine Venrick and Frankoski because, like Venrick’s raised strip, “the purpose of the scrim layer in [Frankoski] is reinforcement.” Pet. 45–46; see In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007) (“[T]he finding that Teague, by addressing a similar problem, provides analogous art to Icon’s application goes a long way towards demonstrating a reason to combine the two references”). Petitioner makes a similar contention with respect to the Venrick/Kiik combination. Pet. 51–52. Thus, we find sufficient to support a determination of obviousness over Venrick and Frankoski the evidence, discussed above, that a person of ordinary skill IPR2014-01401 Patent 8,383,228 B2 24 would have known that Frankoski’s scrim adds nail-pull strength and tear resistance to an asphalt shingle, together with the evidence that a person of ordinary skill would have considered it beneficial to use Frankoski’s scrim in place of Venrick’s raised strip because it would produce a lighter shingle. Likewise, we find sufficient to support a determination of obviousness over Venrick and Kiik the evidence, discussed above, that a person of ordinary skill would have known that Kiik’s polyester backing improves tear strength and nail holding ability, together with evidence that a person of ordinary skill would have considered it beneficial to use Kiik’s polyester backing in place of Venrick’s raised strip because it would produce a lighter shingle. (ii) Reliability of Kiik’s data Patent Owner argues that Petitioner’s declarant, Mr. Bryson, undercuts his opinion that one of ordinary skill in the art would be motivated to combine Kiik and Venrick to improve tear strength when he “admitted publicly” that the test method that Kiik used “may ‘even be inappropriately applied to shingles’ in general because of [its] unreliability.” PO Resp. 20 (quoting Ex. 2007). However, Mr. Bryson bases his opinion that one of ordinary skill in the art would have reasonably expected Kiik’s thin backing material to function as reinforcing material not only on Kiik’s data, but also on other prior art, including Frankoski. Ex. 1003 ¶ 479 (citing, in addition to Kiik, Venrick, and Frankoski, “Olsyk 1974, Johnson 1996,” and “Miller 1999”). Consideration of these additional references is proper, as the “expansive and flexible” approach to determining obviousness prohibits “narrowly focusing” on the specific references of the proposed combination, but requires consideration of “additional record evidence” demonstrating the “knowledge and perspective of one of ordinary skill in the art.” Randall IPR2014-01401 Patent 8,383,228 B2 25 Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). Further, “obviousness does not require absolute predictability of success . . . all that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988). We credit Mr. Bryson’s testimony, in light of Kiik and the other references cited, that one of ordinary skill in the art would reasonably have expected Kiik’s backing material to function as reinforcing material, which would have given the skilled artisan a reason to combine Kiik with Venrick. In all other respects, our response to Patent Owner’s arguments concerning the combination of Venrick and Frankoski apply equally to Patent Owner’s arguments with respect to Venrick and Kiik. (iii) Principle of Operation Patent Owner argues that replacing Venrick’s raised strip with Frankoski’s scrim or Kiik’s backing material would destroy Venrick’s principle of operation because it would eliminate the thickness and rigidity of the reinforcement layer. PO Resp. 27–31. Patent Owner argues that Venrick teaches that its raised strip achieves its results (i.e., adding a semblance of thickness to a roof, preventing water seepage, improving nail- pull strength and tear resistance) because of its thickness and rigidity, but replacing Venrick’s raised strip with Frankoski’s scrim or Kiik’s backing material would eliminate these characteristics. Id. at 30–31. Similarly, Patent Owner argues that the asserted combination takes “reinforcement” out of context, because “[n]owhere in Venrick [] is an unraised ‘reinforcing strip’ even suggested.” Id. at 32. This argument is unpersuasive, however, because it invites us to consider Venrick alone rather than considering the prior art as a whole in view of the knowledge of a person of ordinary skill in the art. See Randall IPR2014-01401 Patent 8,383,228 B2 26 Mfg., 733 F.3d at 1362 (“[T]he [KSR] Court required an analysis that reads the prior art in context, taking account of ‘demands known to the design community,’ ‘the background knowledge possessed by a person having ordinary skill in the art,’ and ‘the inferences and creative steps that a person of ordinary skill in the art would employ’” (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S 398, 418 (2007))). Considering Venrick in light of Frankoski, Kiik, and the knowledge of a skilled artisan, one of ordinary skill would have known that the specific properties of thickness and rigidity, per se, were not necessary to achieve most, if not all, of Venrick’s objectives. Whereas conventional shingles in Venrick’s time were attached to a roof only by nails, by 1998, when Frankoski issued, shingles employed asphalt sealing strips, in addition to nails, for this purpose. PO Resp. 12 (citing Ex. 2011, R6). According to Patent Owner’s declarant, Mr. Metz, the use of sealing (or “sealant”) strips also addressed Venrick’s concern regarding water seepage. Ex. 1046, 325:5–326:9. As Patent Owner acknowledges, using sealing strips “made a separate bulky, thick, and strong exterior nail zone reinforcement unnecessary.” PO Resp. 12. But sealing strips did not eliminate the need for additional reinforcement entirely. Frankoski teaches that shingles did not meet newer industry standards—i.e., ASTM D-3462, which “relat[es] to fastener pull-through and tear strength”—on a consistent basis. Ex. 1010, 1:41–44, 53–55, 2:7–8. Thus, there still existed the need to improve nail pull-through strength and tear resistance, a need that both Frankoski and Kiik addressed with a reinforcement layer that is neither thick nor rigid. Patent Owner next argues that replacing Venrick’s raised strip with Frankoski’s thin reinforcement layer of Kiik’s backing layer would eliminate IPR2014-01401 Patent 8,383,228 B2 27 Venrick’s principle of operation because it would “contravene[] an express teaching” of Venrick “to enhance the aesthetic appeal of the shingle.” PO Resp. 42. But Patent Owner has not shown that the aesthetic appeal of Venrick’s shingle equates to a “principle of operation,” as opposed to merely one of several objectives of the invention. Ex. 1013, 1:1:22–52. Venrick’s shingle with a raised strip “operates” as a shingle—i.e., it protects from the elements a roof on which it is installed—just as the asserted combination of features from Frankoski or Kiik and Venrick does. Further, not every embodiment in Venrick clearly achieves this aesthetic objective. While Venrick discloses an embodiment in which a raised strip is on the surface of the shingle, creating “a better shadow line,” which gives the roof “a substantial appearance and which will be characterized by individuality and distinctiveness” (Id. at 2:2:52–59) another embodiment of Venrick places the raised strip “on the undersurface of the shingle” (id. at 2:2:60–62) where it functions to reinforce the shingle and strengthen the tabs (id. at 3:1:1–6), but where the resulting shadow line, to the extent it differs from that created by traditional shingles, “wouldn’t be as distinct” as that created when the raised strip is on the top of the shingle (Ex. 1046, 288:6–8) As noted above, Venrick does not require any minimum thickness for the raised strip (Ex. 1013, 2:1:59–61), suggesting that a raised strip placed on the undersurface of the shingle may, or may not, alter the appearance of the roof. Because this embodiment of the Venrick shingle may offer little, if any, aesthetic difference, we are not convinced that aesthetic appeal amounts to a “principle of operation” that must not be contravened by any asserted combination. IPR2014-01401 Patent 8,383,228 B2 28 Further, a combination of references may be obvious even if the combination eliminates a benefit of one of the references. In In re Urbanski, 809 F.3d 1237 (Fed. Cir. 2016), the Federal Circuit affirmed the Board’s determination that one of ordinary skill would have reason to combine two references having benefits that were “mutually exclusive,” because a skilled artisan may seek the benefit of one of the references at the expense of the other reference’s benefit. Id. at 1241–42. Here, too, one of ordinary skill would have proceeded with the combination of Venrick and Frankoski or Kiik to achieve the reinforcement benefit, plus the weight savings, even at the expense of Venrick’s aesthetic benefit.8 As for Patent Owner’s arguments concerning the problem of water seepage (PO Resp. 37–38), Patent Owner’s declarant, Mr. Metz, testified that the use of sealant strips effectively addressed this problem. Ex. 1046, 325:5–326:9. (iv) Adding to, Rather than Replacing, Venrick’s Raised Strip Finally, Patent Owner argues that even if a person of ordinary skill in the art would have been motivated to combine Venrick with Frankoski of Kiik, he or she “would simply use either the internal scrim of Frankoski [] or the backing of Kiik [] in conjunction with the ‘raised strip’ material of Venrick [] rather than in place of it,” and suggests that removing material 8 We note, too, that the art taught other ways of achieving the appearance of thickness in a finished roof that did not require a thick raised strip. See Ex. 2013, 2:9-14 (discussing laminated roofing shingles that “create the illusion of thickness or depth on a relatively flat surface by including a backer strip having striations of color beneath and between tabs wherein the color is uniform within the tab”). IPR2014-01401 Patent 8,383,228 B2 29 from Venrick “would actually weaken the shingle beyond what it would be if the scrim or backing were merely added.” PO Resp. 42. We do not find this argument persuasive. First, the claims do not necessarily exclude a shingle having both the thick raised strip and a thin reinforcement layer. For example, claim 1 uses the transition word “comprising,” which is considered an “open” transition phrase that may permit additional unrecited elements. AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1244–5 (Fed. Cir. 2001). Second, as discussed above, a person of ordinary skill in the art would have been motivated to replace Venrick’s raised strip rather than add to it to save weight. Finally, merely because there are other ways in which the teachings of the asserted references could have been combined, Petitioner’s asserted combination is not improper, particularly given the variety of considerations that may favor one combination of features over the other under differing circumstances. See ACCO Brands Corp. v. Fellowes, Inc., ---F.3d---, No. 2015-1045, 2016 WL 692471, at *5 (Fed. Cir. Feb. 22, 2016) (holding that the existence of an obvious combination that falls outside the scope of a claim does not negate the existence of an obvious combination that falls within the scope of the claim). After considering the Petition, Patent Owner Response, Reply, and all evidence relied on by Petitioner and Patent Owner, we are persuaded that Petitioner has shown by a preponderance of the evidence that the combination of Venrick and Frankoski meets all of the limitations of claims 1–22, that the combination of Venrick and Kiik meets all of the limitations of claims 1–22, and that a person of ordinary skill in the art would have had a reason to combine Venrick with either Frankoski or Kiik. IPR2014-01401 Patent 8,383,228 B2 30 C. Objective Indicia of Non-obviousness Patent Owner argues that objective indicia compel a conclusion of non-obviousness. PO Resp. 44–54. Therefore, we consider this evidence along with the contentions of the parties in reaching our final determination as to the obviousness of claims 1–22. Objective indicia of nonobviousness may include any of the following: long-felt but unsolved needs, failure of others, unexpected results, commercial success, copying, licensing, and praise. Graham, 383 U.S. at 17; Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349, 1355 (Fed. Cir. 2012). Patent Owner argues that the commercial success of Petitioner’s products and praise of Petitioner’s products from others demonstrate the non-obviousness of its claimed invention. PO Resp. 48–58. Patent Owner indicates in passing that copying and long-felt need were also present, but presents no substantive evidence to that effect. PO Resp. 53–54; Reply 24; Tr. 33:19–20, 62:10–20. It is not sufficient that a product or its use merely be within the scope of a claim in order for secondary evidence of non-obviousness tied to that product to be given substantial weight. There must also be a causal relationship, termed a “nexus,” between the evidence and the claimed invention. Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1376 (Fed. Cir. 2005). A nexus is required in order to establish that the evidence relied upon traces its basis to a novel element in the claim, not to something in the prior art. Institut Pasteur & Universite Pierre et Marie Curie v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013). Objective evidence that results from something that is not “both claimed and novel in the claim,” lacks a nexus to the merits of the invention. In re Kao, 639 F.3d 1057, 1068 IPR2014-01401 Patent 8,383,228 B2 31 (Fed. Cir. 2011). All types of objective evidence of non-obviousness must be shown to have such a nexus. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) (nexus generally); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (commercial success). The stronger the showing of nexus, the greater the weight accorded the objective evidence of non-obviousness. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 306 (Fed. Cir. 1985). Patent Owner argues that the commercial success and praise of Petitioner’s TruDefinition® Duration Series Shingles with SureNail® Technology and TruDefinition® Duration STORM® Impact-Resistant Shingles with SureNail® and WeatherGuard® Technology (“Duration Shingles”) “demonstrate the non-obviousness of the claims of the ’228 Patent because the Duration Shingles actually embody the claims of the ’228 Patent.” PO Resp. 50–51. Patent Owner relies on testimony from Robert E. Gardner, its Vice President of Marketing, to illustrate how the Duration Shingles embody at least independent claim 1 of the ’228 patent. Id. at 51; Tr. 61:17–62:7. 1. Commercial Success Evidence of commercial success “is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). To establish a proper nexus between a claimed invention and the commercial success of a product, a patent owner must offer “proof that the sales [of the allegedly successful product] were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors IPR2014-01401 Patent 8,383,228 B2 32 unrelated to the quality of the patented subject matter.” Huang, 100 F.3d at 140. Patent Owner argues that Petitioner’s Duration Shingles were an instant market success due to the inclusion of the SureNail® strip. PO Resp. 53. As evidence of market share, Patent Owner states that Petitioner went from a 5.9% share of the residential roofing market in 2007, when it introduced the Duration Shingles, to a 9.3% share in 2009. Id.; Tr. 58:13– 22. Patent Owner stresses that Petitioner “has made it clear with its marketing materials and pricing strategy that the value of the Duration Shingles is in the SureNail® reinforcement strip itself.” PO Resp. 54–55. Petitioner responds that “Patent Owner has failed to establish a nexus between Petitioner’s products and the claimed subject matter.” Reply 20. Specifically, Petitioner relies on the technical experts’ testimony that the ’228 patent requires that the thin reinforcing material must be adhered to the outer surface of the shingle to argue that Petitioner’s products do not meet each element of the claims. Id. (citing Ex. 1046, 191:20-193:20, 207:6- 208:19; Ex. 1003 ¶¶ 149–51). Rather, Petitioner argues, Petitioner’s SureNail fabric is embedded within the shingle, not adhered to the top of the granules. Id. at 20–21. Petitioner further argues that numerous manufacturers, not just Petitioner, saw an increase in market share during the time period considered by Mr. Gardiner, and that the data does not indicate any specific bases for such increase. Id. at 21. Petitioner also argues that no novel aspect of the claimed subject matter drove the alleged commercial success, stating that Mr. Gardiner pointed to factors such as nail zone visibility, improved nail pull strength, and improved wind resistance, which all are features provided by Venrick’s raised strip. Id. at 22. IPR2014-01401 Patent 8,383,228 B2 33 The evidence provided by Patent Owner does not demonstrate commercial success that can be attributed to the claimed subject matter. Patent Owner focuses on the commercial success of the Duration Shingles, which, according to Patent Owner, embody at least independent claim 1 of the ’228 patent. PO Resp. 50–52. Assuming, arguendo, that Duration Shingles embody the claimed invention, we are not persuaded that any commercial success attributable to the Duration Shingles resulted from novel, non-obvious features of the claimed invention, rather than other features. Mr. Gardiner “pointed to factors such as nail zone visibility, improved nail pull strength, and improved wind resistance as drivers of success.” Reply 23 (citing Ex. 1049, 236:20–238:16, 68:8–15, 218:4–21). But, as Petitioner argues, these features are arguably provided by Venrick’s raised strip. Id. Further, Petitioner points out that its “SureNail® Technology . . . encompasses a number of unclaimed features, such as a specially formulated adhesive sealant called Tru-Bond®,” which may explain, at least in part, any commercial success. Reply 23 (citing Ex. 1049, 157:6–159:8, 172:3–20). Accordingly, because any commercial success may be attributable, at least in part, to unclaimed features or features known in the prior art, Patent Owner has not established a nexus between any commercial success and the claimed invention of the ’228 patent. 2. Praise Patent Owner argues that praise of the Duration Shingles and the SureNail strip is objective indicia of non-obviousness independent of commercial success. PO Resp. 56–58. Patent Owner refers to Petitioner’s seven-minute-long promotional video featuring contractor praise and testimonial, “promoting the SureNail® strip apart from any particular IPR2014-01401 Patent 8,383,228 B2 34 product.” Id. at 56–57 (citing Ex. 2018). Patent Owner also relies on Petitioner’s Duration Shingles brochure, in which “contractors . . . describe the claimed reinforcement layer in glowing terms,” as evidence of praise. Id. at 57–58 (citing Ex. 2003). Petitioner argues that Patent Owner’s assertions of praise fail for the same reasons as Patent Owner’s commercial success arguments. Reply 22 n.12. As with commercial success, evidence of industry praise is only relevant when it is directed to the merits of the invention claimed. See Ormco Corp., 463 F.3d at 1311–12. Petitioner argues that “SureNail Technology” is a marketing term that is sometimes used to identify the SureNail strip and other times used to identify, generally, the strip along with the bonding layer and the overall configuration of the shingle. Reply 22; Ex. 2003, 3; Tr. 76:5–19 (referring to Tru-Bond sealant and an additional strip of adhesive as part of SureNail Technology). Thus, when Patent Owner uses the term “SureNail Technology” in discussing the probative worth of Petitioner’s marketing materials, we are unable to associate Patent Owner’s objective evidence with particular features of the product. Accordingly, Patent Owner’s general identification of “SureNail Technology” as embodying the claims of the ’228 patent is insufficient to show nexus. Moreover, the individuals featured in the video or the brochure alternately praise the overall shingle, features of the shingle, and the performance of the shingle. The praise is not specific to the SureNail strip, as Patent Owner urges. Accordingly, we do not find that the proffered evidence of praise supports Patent Owner’s argument of non-obviousness. IPR2014-01401 Patent 8,383,228 B2 35 III. CONCLUSION For the foregoing reasons, after considering the Petition, Patent Owner Response, Reply, and all evidence relied upon by Petitioner and Patent Owner, including evidence of secondary considerations, we are persuaded that Petitioner has shown by a preponderance of the evidence that claims 1–22 of the ’228 patent would have been obvious over Venrick and Frankoski, and that claims 1–22 would have been obvious over Venrick and Kiik. IV. ORDER For the reasons given, it is ORDERED that claims 1–22 of the ’228 patent are held unpatentable. This is a final written decision. Parties to the proceeding seeking judicial review of the decision must comply with the notice and service requirements of 37 C.F.R. § 90.2. IPR2014-01401 Patent 8,383,228 B2 36 PETITIONER: Jeffrey P. Kushan Peter S. Choi SIDLEY AUSTIN LLP jkushan@sidley.com peter.choi@sidley.com PATENT OWNER: Mehran Arjomand Amy R. Motomura Jack Smith MORRISON & FOERSTER LLP marjomand@mofo.com amortomura@mofo.com 15681-228-IPR@mofo.com Copy with citationCopy as parenthetical citation