Owens Corningv.CertainTeed Corporation

Patent Trial and Appeal Board

Mar 9, 2016

13855820 (P.T.A.B. Mar. 9, 2016)

Trials@uspto.gov Paper 35
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 IPR2014-01404
Patent 8,615,968 B2

Before BENJAMIN D. M. WOOD, JAMES A. TARTAL, and
KRISTINA M. KALAN, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Petitioner Owens Corning filed a Petition (Paper 1, “Pet.”) requesting
an inter partes review of claims 1–18 of U.S. Patent No. 8,615,968 B2
(Ex. 1038, “the ’968 patent”). Patent Owner CertainTeed Corporation filed a
Preliminary Response. Paper 8 (“Prelim. Resp.”). We instituted an inter
partes review of claims 1–18 based on two grounds of unpatentability:
(1) obviousness under 35 U.S.C. § 103(a) over Venrick1 and Frankoski,2 and
(2) obviousness under 35 U.S.C. § 103(a) over Venrick and Kiik.3 Paper 10.
After institution of trial, Patent Owner filed a Response (Paper 17, “PO
Resp.”), to which Petitioner replied (Paper 26, “Reply”). An oral hearing
was held on December 8, 2015, and a transcript of that hearing was entered in
the record. Paper 34 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). In this Final Written
Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, we
determine that Petitioner has shown by a preponderance of the evidence that
claims 1–18 are unpatentable.
II. BACKGROUND
A. The ’968 Patent (Ex. 1038)
The ’968 patent, titled “Shingle with Reinforcement Layer,” issued on
December 31, 2013. The ’968 patent describes a shingle with an attached
reinforcement layer through which fasteners may be applied, as well as a
method of making that shingle and a roof embodying that shingle. Ex. 1038,
Abstract.

1 U.S. Patent No. 2,161,440, issued June 6, 1939 (Ex. 1013).
2 U.S. Patent No. 5,822,943, issued October 20, 1998 (Ex. 1010).
3 U.S. Pub. No. 2001/0055680, published December 27, 2001 (Ex. 1018).
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Figures 2 and 2A of the ’968 patent are reproduced below.

Figures 2 and 2A show shingle 20 with reinforcement layer (or “scrim
layer”) 29 applied to rear surface 21 in accordance with the ’968 patent. Id.
at 3:22–27. According to the Specification, shingle 20 is similar to the prior
art shingle shown in Figure 1 of the ’968 patent in that it comprises a mat
impregnated with asphalt and then coated with a granular material on each
exposed surface. Id. at 2:56–62, 3:22–32. Unlike the prior art shingle,
shingle 20 includes a reinforcement layer 29. Id. During construction of
shingle 20, reinforcement layer 29 is applied before release tape 26 is
applied, such that reinforcement layer 29 extends beneath release tape 26. Id.
at 3:29–34. Release tape 26 prevents the shingle from sticking to a subjacent
shingle when stacked, but is removed when the shingle is installed. Id. at
3:3–9. A nailing zone “N” on the front surface of shingle 20 is generally
located above release tape 26, between edges 27 and 28, above slots 24. Id.
at 3:20–22.
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 3:22–32. The
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scrim layer may extend farther into the tabs, as shown in Figure 3. Id. at
3:41–51, 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
3:55–63. In use, the shingle is nailed through the nailing zone and
reinforcement layer onto the roof. Id. at 4:32–40. The reinforcement layer
catches the nail and helps keep the shingle more securely fastened to the roof
in adverse conditions. Id. at 4:40–50, 7:10–24.
B. Illustrative Claim
Claims 1, 11, and 17 of the ’968 patent are independent. Claims 2–10
ultimately depend from claim 1, claims 12–16 ultimately depend from claim
11, and claim 18 depends from claim 17. Claims 1 and 17 of the ’968 patent
are illustrative of the claims at issue:
1. An array of shingles applied to a roof, by fasteners, in
courses, each shingle having front and rear exterior surfaces
and being comprised of shingle material, with the shingle
having a width defined by upper and lower edges and a length
defined by right and left edges, the shingle 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 said both front and rear
surfaces of the mat, which, together with said base layer
of mat and said coating 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) and an at least partially externally visible generally
longitudinal reinforcement second thickness layer of a
substantially thinner dimension than said first thickness
layer; said reinforcement second thickness layer being
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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 second thickness layer extending at
least partially lower than the fastening zone, toward the
lower edge of the shingle or at least partially into the
fastening zone toward the upper edge of the shingle.
Ex. 1038, 7:30–55.
17. A shingle having front and rear exterior surfaces and
being comprised of shingle material, with the shingle having a
width defined by upper and lower edges and a length defined
by right and left edges, the shingle 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 said both front and rear
surfaces of the mat, which, together with said base layer
of mat and said coating 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) and an at least partially externally visible generally
longitudinal reinforcement second thickness layer of a
substantially thinner dimension than said first thickness
layer; said reinforcement second thickness layer being
adhered to an exterior surface of said shingle and
extending at least substantially between right and left
edges of the shingle;
(f) said reinforcement second thickness layer extending at
least partially lower than the fastening zone, toward the
lower edge of the shingle or at least partially into the
fastening zone toward the upper edge of the shingle;
(g) wherein each shingle is comprised of at least two layers
of shingle material laminated together, with the front and
rear surfaces being on opposite sides of the shingle; and
(h) wherein the at least two layers of shingle material
comprise a top sheet and a backing sheet, with the top
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sheet including a plurality of alternating tabs and cut out
portions along a lower longitudinal edge of the top sheet,
with portions of the backing sheet being visible through
the cutout portions being defined by edges of the tabs and
with the cutout portions being of a plurality of longitudinal
dimensions.
Ex. 1038, 9:12–10:23.
III. ANALYSIS
A. Claim Construction
Petitioner proposes constructions for “said shingle,” “adhered to an
exterior surface of said shingle,” “reinforcement . . . layer,” and
“substantially thinner.” Pet. 23–31. Patent Owner does not respond to
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. Obviousness Over Venrick and Either Frankoski or Kiik
Petitioner contends claims 1–18 would have been obvious over
Venrick and Frankoski. Pet. 40–49. Petitioner also asserts claims 1–18
would have been obvious over Venrick and Kiik. Id. at 49–58. Petitioner’s
contentions are supported by the Declaration of Michael L. Bryson.
Ex. 1003. In opposition to Petitioner’s contentions, Patent Owner relies on
the Declaration of Robert E. Metz. Ex. 2009.
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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 The shingle
described by Venrick has “a reinforcing strip strengthening the upper ends of
the openings between tabs to reduce the tendency of the shingle to tear at the
upper ends of said openings and which strip will further provide a reinforced
area for nailing the shingle to the roof.” Id. at 1:1:40–46.

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.
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Figure 1 of Venrick is reproduced below.

Figure 1 shows a top plan view of a strip shingle as disclosed by
Venrick. 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, also identified as raised strip 15 or
raised portion 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.” The strip “may be
formed of felt, metal, or alternate layers of granules or asphalt, or layers of
roofing tape suitably bonded together.” Id. at 2:2:44–48, 2:2:75–3:1:1.
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, when
Venrick’s shingles are installed on a roof, the raised median strip supports
“the butt end of the overlapping of the next horizontal course,” giving “a
semblance of thickness to the butt ends of the shingles . . . resulting in a
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better shadowline” and “a heavy substantial appearance” to the roof as a
whole. Id. at 1:1:30–37, 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. 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 shingles by “act[ing] as a
barrier” and adding rigidity that resists the lifting of the butt end of the
shingle by wind. Id. at 2:2:31–33.
(b) Frankoski (Ex. 1010)
Frankoski is directed to an asphalt-based roofing shingle that includes
“a substrate including at least one composite having a scrim bonded to a mat,
coated with filled asphalt and granules.” Ex. 1010, Abstract. 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.” Id. at 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.
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Figure 1 of Frankoski is reproduced below:

Figure 1 depicts an exemplary two-ply laminated roofing shingle 3
comprising upper layer 5 bonded to lower layer 7, including headlap area 10,
sealant line 15, and nail zone 20. Ex. 1010, Fig. 1, 4:11–12, 4:23–29. Lower
layer 7 serves as a “backing piece” and “preferably is at least about 6 inches
wide.” Id. at 4:51–53.
Figure 2 of Frankoski is reproduced below:

Figure 2 is a more detailed view of lower layer 7 of shingle 3 shown in
Figure 1 of Frankoski. Id. at 4:66–67. The shingle includes a layer of
granules 62 embedded on upper coating layer 70. Id. at 5:2–3. Upper scrim
60 is bonded to lower mat (or “base mat”) 65, which together 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
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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 of 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. Kiik states that “[t]raditionally, the lower
surface or back of roofing material such as shingles has been covered with
finely ground mineral material (fines) so that the asphalt backing does not
adhere to contiguous roofing material when packaged for transport and
storage.” Id. ¶ 2. In a preferred embodiment, Kiik discloses that 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 . . . 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 states that the age of the cited references spans 60 years,
and argues that “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
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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. Regarding Kiik, Patent Owner argues that it
concerns relatively light fiberglass shingles held to the roof via sealing strip.
Id. at 13. 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 [], and this fact would have
significant import to a [person of ordinary skill in the art],” 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 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. Id. at 14–
15 (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.
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at 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’”). Patent Owner
does not disagree. Tr. 43:5–6 (“[W]e don’t say that references because they
are old are irrelevant.”). “Absent a showing of long-felt need or the failure of
others, the mere passage of time without the claimed invention is not
evidence of nonobviousness.” Iron Grip Barbell Co., Inc. v. USA Sports,
Inc., 392 F.3d 1317 (Fed. Cir. 2004) (citing In re Wright, 569 F.2d 1124,
1127 (C.C.P.A. 1977). Patent Owner has not shown that the art tried and
failed to solve the problem allegedly solved by the subject patent. Moreover,
as we discuss infra, Patent Owner has made no showing of long-felt need or
failure of others.
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
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) (“[P]erson of ordinary skill is a hypothetical person who is
presumed to be aware of all the pertinent prior art.”). Indeed, the skilled
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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. 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 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 5 (citing Ex. 2009 ¶ 9.).
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
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Patent Owner, Mr. Bryson later agreed that the skill level could be less.
Neither party has explained how, if at all, the proposals of their respective
experts regarding the level of ordinary skill 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 (C.C.P.A. 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. 6–7), 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
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
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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; Ex.
2010, 290:10–19. 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 1–18 Over Venrick and Frankoski
We agree with Petitioner that both Venrick and Frankoski disclose
features of an asphalt shingle, as well as an array of such shingles applied to a
roof with fasteners, and a method for the same, corresponding to limitations
(a)–(d) of claims 1, 11, and 17. See Pet. at 31–33, 40–49. For limitations (a),
(b), and (c), Venrick describes, for example, 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 further teaches 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).
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 corresponds to the “generally longitudinal reinforcement second
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thickness layer” of limitation (e) and “extend[s] at least partially lower than
the fastening zone” as required by limitation (f), but 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 claims 1, 11, and 17, 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. There is no
dispute that Frankoski’s scrim layer 60 is “of a substantially thinner
dimension” than Venrick’s base shingle. PO Resp. 29; Ex. 1003 ¶¶ 882–83;
Ex. 1046, 221:8–18, 265:4–21, 241:13–20. Further, we credit the testimony
of Mr. Bryson that a person of ordinary skill would have understood that
Frankoski’s scrim 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 ¶ 883.
Claim 17 further requires “each shingle is comprised of at least two
layers of shingle material laminated together, with the front and rear surfaces
being on opposite sides of the shingle.” Petitioner has shown such a “two-ply
laminated shingle” was disclosed in Frankoski and was well-known in the art.
Pet. 45, 48–49; Ex. 1010, 4:34, Fig. 1.
We have reviewed Petitioner’s evidence regarding dependent claims
2–10, 12–16, and 18, and determine that Petitioner has established that the
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combination of Venrick and Frankoski describes the limitations of claims 2–
10, 12–16, and 18. Pet. 45–49. Indeed, Patent Owner does not argue the
patentability of any claim apart from claim 1. We determine that Petitioner
has shown that the combination of Venrick and Frankoski meets all of the
limitations of claims 1–18.
With regard to the rationale for combining Venrick and Frankoski, 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, 3:20–22. 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; see also Ex. 1003 ¶ 379. Further, Frankoski 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 that Frankoski attributes these
improvements to the scrim layer. Ex. 1046, 219:18–220:12.5
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

5 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.
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scrim is lighter than Venrick’s raised strip, and thus would produce a lighter
shingle. See Ex. 1003 ¶ 882; 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 1–18 Over Venrick and Kiik
We agree with Petitioner that both Venrick and Kiik disclose features
of an asphalt shingle, as well as an array of such shingles applied to a roof
with fasteners, and a method for the same, corresponding to limitations (a)–
(d) of claims 1, 11, and 17. Pet. 49–54, 57–58. Kiik, like Venrick, discloses
a “standard laminated” asphalt shingle, and further discloses a flexible
backing material “adhered to the face of the back of the shingle.” Ex. 1018
¶¶ 4, 6, 7, 10, 14; Ex. 1003 ¶ 926. Kiik teaches that “[s]hingles made with
the inventive polyester backing have better tear strength than standard
shingles backed with finely divided granules,” and “demonstrate increased
nail holding ability.” Ex. 1018 ¶ 9. Further, there is no dispute that Kiik’s
backing material would have “a substantially thinner dimension” than
Venrick’s base shingle. Ex. 1003 ¶ 917; 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

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.
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of a standard asphalt shingle in the same way that Venrick’s raised strip is
adhered. Ex. 1003 ¶ 918–920.
Our analysis with respect to Venrick’s disclosure of the elements of
claims 1–18, supra, applies to the combination of Venrick and Kiik as well.
Additionally, we have reviewed Petitioner’s evidence regarding dependent
claims 2–10, 12–16, and 18, and determine that Petitioner has established that
the combination of Venrick and Kiik describes the limitations of claims 2–10,
12–16, and 18. See Pet. 54–58. Again, Patent Owner does not argue the
patentability of any claim apart from claim 1. Thus, we determine that
Petitioner has shown that the combination of Venrick and Kiik meets all of
the limitations of claims 1–18.
With regard to the rationale for combining Venrick and Kiik, 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. Petitioner has
shown that “the backing material in Kiik [] is reinforcement, i.e., to provide
the shingle with ‘better tear strength,’ ‘pass impact tests despite their light
product weight,’ and provide ‘increased nail holding ability and maintain
structural integrity at elevated temperatures.’” Pet. 40 (citing Ex. 1018 ¶ 9;
Ex. 1003 ¶ 913). Moreover, a person of ordinary skill would have
appreciated that a benefit in replacing Venrick’s raised strip with Kiik’s
“newer, more state-of-the-art materials” would be a lighter shingle with
similar or better strength. See Ex. 1003 ¶ 917–920.
(c) Patent Owner’s Arguments
Patent Owner makes a number of arguments against a determination of
obviousness. We address each in turn.
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(i) Reason to Combine
First, Patent Owner argues that Petitioner’s reasons for combining
Venrick with Frankoski or Kiik are without evidentiary support and are
instead “contrived creations based on hindsight.” PO Resp. 15–28. For
example, according to Patent Owner, Petitioner’s reason for combining
Venrick and Frankoski 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. at 15. 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 18. Patent Owner further argues that
Mr. Bryson provides no other data supporting the comparative strength of
Frankoski’s scrim with respect to Venrick’s materials; admits that some of
Venrick’s materials (metal or wood fiber strips) would have been stronger;
and improperly relies on his personal opinion based on conclusory statements
as to the relative strengths of the materials. Id. at 19–28. Patent Owner
similarly argues that the data in Kiik on which Petitioner and its declarant
rely to support a reason to combine Venrick and Kiik “has no bearing on a
comparison of the relative strength of Kiik[’s] materials with Venrick[’s]
materials,” but, “[a]t most, it compares the nail strength of a shingle with a
polyester reinforcement to a shingle without the polyester reinforcement.”
Id.
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.
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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,
1381 (Fed. Cir. 2015) (“just because better alternatives exist in the prior art
does not mean that an inferior combination is inapt for obviousness
purposes” (internal citations and 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.
at 42; see In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1380 (Fed.
Cir. 2007) (“the 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 combination of Venrick with Kiik,
namely, that “the purpose of the backing material in [Kiik] is reinforcement.”
Pet. 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 would have known that Frankoski’s scrim adds nail-pull
strength and tear resistance to an asphalt shingle.
We also find persuasive the evidence, discussed above, 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
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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. at 21
(quoting Ex. 2007); see also id. at 20–22. However, Mr. Bryson based 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 ¶ 588
(citing, in addition to Kiik, Venrick, and Frankoski, “Olszyk 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 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 Frankoski and the other references cited, that one of ordinary skill in
the art would reasonably have expected Kiik’s backing material and
Frankoski’s scrim layer to function as reinforcing material, which would
have given the skilled artisan a reason to combine Kiik or Frankoski with
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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 would eliminate Venrick’s principle of operation because
it would eliminate the thickness and rigidity of the reinforcement layer.
PO Resp. 28–31. According to Patent Owner, combining Frankoski or Kiik
with Venrick would eliminate “the ‘raised’ aspect of Venrick.” Id. at 29.
Patent Owner argues that Venrick teaches that the thickness and rigidity of
the raised strip is “the way” in which the 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), but replacing Venrick’s
raised strip with Frankoski’s scrim would eliminate these characteristics. PO
Resp. 30–32. 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 32–34.
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
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,
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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). Patent Owner’s declarant, Mr. Metz, testified that
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 nail zone
reinforcement unnecessary.” PO Resp. 13. 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 would eliminate Venrick’s principle of
operation because it would “contravene[] an express teaching” of Venrick “to
enhance the aesthetic appeal of the shingle.” PO Resp. 44; see also id. at 34–
40. However, 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, 1:1:22–46. Venrick’s
shingle with a raised strip “operates” as a shingle—i.e., it protects from the
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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,” (Ex. 1013, 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” which must not be contravened
by any asserted combination.
Moreover, 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 1242. Here, too, one of ordinary skill would
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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.6 As for Patent Owner’s arguments
concerning the problem of water seepage (PO Resp. 38–40), Patent Owner’s
declarant, Mr. Metz, testified that the use of sealant strips effectively
addressed this problem. See Ex. 1046, 325:5–326:9.
(iv) Adding to, Rather than Replacing,
Venrick’s Raised Strip
Patent Owner also argues that even if a person of ordinary skill in the
art would have been motivated to combine Venrick and Frankoski or Kiik,
that person “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 from Venrick
“would actually weaken the shingle beyond what it would be if the scrim or
backing were merely added.” PO Resp. 40–44.
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 that may permit
additional unrecited elements. AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d
1239, 1244–45 (Fed. Cir. 2001). Second, as discussed above, a person of
ordinary skill in the art would have been motivated to replace Venrick’s

6 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”).
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raised strip, rather than add to it, to save weight. Finally, we are not
convinced that merely because there are other ways in which the teachings of
the asserted references could have been combined, Petitioner’s asserted
combination is 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., 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).
(v) Laminated Shingle Claims
With regard to claims that require a laminated shingle, such as claims
3–5, 13, 17, and 18, Petitioner asserts:
two-ply laminated shingles (which have “two layers of shingle
material laminated together, with the front and rear surfaces being
on opposite sides of the shingle”) were well known in the art. Ex.
1003 (Bryson Decl.), at ¶¶ 46, 51–52; see, e.g., Ex. 1005 (Cash
1995), at 4, Fig. 12; Ex. 1011 (Malarkey 2000). The person of
ordinary skill would understand that the reinforcing layer
disclosed in Venrick [] would have applicability and the same
beneficial results when used in all types of shingles, including the
most common types of shingles such as laminated shingles. Ex.
1003 (Bryson Decl.), at ¶ 888.
Pet. 45–46; see also Pet. 54–55, Ex. 1003 ¶ 50–51, 924. Patent Owner argues
that Petitioner fails to provide a reasonable basis for replacing the organic
shingle of Venrick with a laminated shingle, as disclosed by Frankoski and
Kiik. PO Resp. 45–47. We understand Petitioner’s contention not to be that
an organic shingle is replaced with a laminated shingle, but that the teachings
of Venrick and Frankoski or Kiik are applicable to both organic shingles and
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laminated shingles, which were known in the art. 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 24 (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.
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
1–18, that the combination of Venrick and Kiik meets all of the limitations of
claims 1–18, and that a person of ordinary skill in the art would have had a
reason to combine Venrick with either Frankoski or Kiik.
4. Secondary Considerations of Nonobviousness
Patent Owner argues that objective indicia compel a conclusion of
non-obviousness. PO Resp. 48–58. We, therefore, consider this evidence
along with the contentions of the parties in reaching our final determination
as to the obviousness of claims 1–18.
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.
Patent Owner argues that the commercial success of Petitioner’s products and
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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. 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 Pharms. 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
(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
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Shingles”) “demonstrate the non-obviousness of the claims of the ’968 Patent
because the Duration Shingles actually embody the claims of the ’968
Patent.” PO Resp. 50. 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 ’968 patent. Id. at 51–
52; Tr. 61:17–62:7.
(a) 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
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. at 55.
Petitioner responds that “Patent Owner has failed to establish a nexus
between Petitioner’s products and the claimed subject matter.” Reply 21.
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Specifically, Petitioner relies on the technical experts’ testimony that the ’968
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). 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 22. 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 23.
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 ’968 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. If
commercial success is due to an element in the prior art, no nexus exists.
Tokai Corp. v. Easton Enter., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011).
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. 1048, 236:20–238:16, 68:8–15). But, as Petitioner argues, these
features are arguably provided by Venrick’s raised strip. Id. Further,
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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 ’968 patent.
(b) 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
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
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 23 n.13.
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 23; Ex.
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2003, 3; Tr. 76:4–18 (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 ’968 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.
C. 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–
18 would have been obvious over Venrick and Frankoski, and Venrick and
Kiik.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–18 of the ’968 patent are held unpatentable;
and
FURTHER ORDERED that because 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.
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Patent 8,615,968 B2

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PETITIONER:

Jeffrey Kushan
Peter Choi
SIDLEY AUSTIN LLP
jkushan@sidley.com
peter.choi@sidley.com

PATENT OWNER:

Mehran Arjomand
Amy Motomura
Jack Smith
MORRISON & FOERSTER LLP
marjomand@mofo.com
amtomura@mofo.com
15681-968-IPR@mofo.com