Owens Corningv.CertainTeed Corporation

Patent Trial and Appeal Board

Mar 9, 2016

13788029 (P.T.A.B. Mar. 9, 2016)

Trials@uspto.gov Paper No. 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 IPR2014-01403
Patent 8,592,025 B2

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

KALAN, 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
A. Background
Petitioner Owens Corning filed a Petition (Paper 1, “Pet.”) to institute
an inter partes review of claims 1–22 of U.S. Patent No. 8,592,025 B2
(Ex. 1037, “the ’025 patent”) pursuant to 35 U.S.C. §§ 311–319. Patent
Owner CertainTeed Corporation filed a Preliminary Response. Paper 8. On
March 9, 2015, we instituted an inter partes review of claims 1–22 on
certain grounds of unpatentability alleged in the Petition. Paper 10. After
institution of trial, Patent Owner filed a Patent Owner Response (Paper 17;
“PO Resp.”) and Petitioner filed a Reply (Paper 26; “Reply”). An oral
hearing was held on December 8, 2015. A transcript of the hearing has been
entered into the record. Paper 34 (“Tr.”).
The Board has 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 all claims for which trial is instituted, namely, claims 1–22, are
unpatentable.
B. The ’025 Patent
The ’025 patent, titled “Shingle with Reinforcement Layer,” issued on
November 26, 2013. The ’025 patent describes a shingle, a method of
making a shingle, and a roof embodying the shingle. Ex. 1037, Abstract.
The shingle is provided with an attached reinforcement layer through which
fasteners may be applied when the shingle is applied to a roof. Id. An
embodiment of the shingle is depicted in Figures 2 and 2A as follows:
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Figures 2 and 2A show a shingle with a reinforcement layer applied to
the rear surface thereof. Id. at 2:19–21. As described in the Specification,
shingle 20 has rear surface 21 with release strip 26 running from left to right
across the lower end of headlap portion 22, between edges 27 and 28. Id. at
3:9–11. Tab portion 23 of shingle 20 comprises a plurality of tabs 25
separated by vertical, spaced apart slots 24. Id. at 3:12–13. Nailing zone
“N” is located on the front surface of the shingle between edges 27 and 28
and above slots 24. Id. at 3:14–16. Reinforcement layer or scrim layer 29 is
added on rear surface 21 of shingle 20, across the upper end of tab portion
23, as well as the area disposed beneath release strip 26 along the lower end
of headlap portion 22 between edges 27 and 28. Id. at 3:20–25. 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 3:49–56. In use, the shingle is
nailed through the nailing zone and reinforcement layer onto the roof. Id. at
4:4–10. The reinforcement layer catches the nail and helps keep the shingle
more securely fastened to the roof in adverse conditions. Id. at 4:34–44,
6:36–47. Oh
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C. Illustrative Claim
Claims 1 and 15 of the ’025 patent are independent. Claims 2–14
ultimately depend from claim 1, and claims 16–22 ultimately depend from
claim 15.
Claim 1 of the ’025 patent is reproduced below:
1. 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; 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. 1037, 6:57–7:14.

D. Prior Art References Relied Upon by Petitioner
Petitioner challenges the patentability of claims 1–22 based on
obviousness in view of the following references:
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1. U.S. Patent No. 2,161,440, issued June 6, 1939
(“Venrick”) (Ex. 1013);
2. U.S. Patent No. 5,822,943, issued October 20, 1998
(“Frankoski”) (Ex. 1010); and
3. U.S. Pub. No. 2001/0055680 A1, published December
27, 2001 (“Kiik”) (Ex. 1018).

E. Instituted Grounds of Unpatentability
1. Claims 1–22 as unpatentable under 35 U.S.C. § 103(a) over
Venrick and Frankoski; and
2. Claims 1–22 as unpatentable under 35 U.S.C. § 103(a) over
Venrick and Kiik.
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. 24–32. 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.
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B. Obviousness Arguments
Petitioner asserts that claims 1–22 are unpatentable under § 103 in
view of certain combinations of the references. Pet. 42–58. 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.
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).
i. Scope and Content of the Prior Art
a. Venrick (Ex. 1013)
Venrick discloses an otherwise “well known” roofing shingle, namely,
“an improved fabricated shingle strip consisting of a base of fibrous material
to which asphalt or similar plastic material is applied and which is surfaced
with comminuted or granular material.” Ex. 1013, 1:1:3–9.1 Venrick further
discloses that its shingle 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

1
Our citations to the Venrick reference 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 1:1:3–7 refers to
Venrick page 1, column 1, lines 3–7.
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reinforced area for nailing the shingle to the roof.” Id. at 1:1:40–46. Figure
1 of Venrick is reproduced below:

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, 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. Raised median strip
15 may also be located on the undersurface of the shingle. Id. at 2:2:60–62,
Figs. 8, 10, 12. Raised 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 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.
The raised median strip serves several purposes. When Venrick’s
shingles are installed on a roof, 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
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better shadowline” 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 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 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:

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Figure 1 of Frankoski is an illustration of an exemplary laminated roofing
shingle comprising upper layer 5 bonded to lower layer 7. Id. at Fig. 1,
4:22–26. 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 shows the
position of the scrim layer 60:

Figure 2 is a more detailed view of a portion of the shingle shown in Figure
1. Id. at 4:13–14. Figure 2 shows scrim 60 and lower mat 65 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 material, and more particularly, “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
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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, 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. Arguments
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. 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 1939 arose out of a
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different technology era than Frankoski 1998 and Kiik 2001, and this fact
would have significant import,” 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
13–14 (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 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) (“our 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
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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, 1325 (Fed. Cir. 2004) (citing In re Wright, 569 F.2d
1124, 1127 (CCPA 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 in the art 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,
or would have appreciated, the teachings 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 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.
ii. 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
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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 Patent Owner’s expert, 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.).
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, 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 (CCPA 1978). We find the level of
ordinary skill in the art to be reflected in the cited references, and we
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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 allegedly 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.
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
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.
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iii. Differences Between the Claimed Subject Matter
and the Prior Art
a. Whether Claims 1–22 are Obvious over
Venrick and Frankoski
Petitioner contends that claims 1–22 would have been obvious over
Venrick and Frankoski. Pet. 42–50. We agree with Petitioner that Venrick
teaches an asphalt shingle, as well as a method for making the same, that
meets limitations (a) through (d) of claims 1 and 15. 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 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).
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
thickness layer” of limitation (e) and “extend[s] at least partially lower into
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
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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 and 15, 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 ¶¶ 454; Ex.
1046, 221:8–18, 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 ¶ 454.
Claim 4 further requires “wherein the 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.” Claim 17 contains a similar
method-type limitation. Petitioner has shown such a “two-ply laminated
shingle” was disclosed in Frankoski, and was well-known in the art. Pet. 46,
49; Ex. 1010, 4:34, Fig. 1.
We have reviewed Petitioner’s evidence (Pet. 48–54) regarding
dependent claims 2–14 and 16–22, and determine that Petitioner has
established that Venrick and Frankoski describe the limitations of claims 2–
14 and 16–22. Indeed, Patent Owner does not argue the limitations of any
claim apart from claim 1.
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
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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. 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, 219:18–220:12.2
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

2 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.
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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. Whether Claims 1–22 are Obvious over
Venrick and Kiik
Petitioner contends that claims 1–22 would have been obvious over
Venrick and Kiik. Pet. 50–59. We agree with Petitioner that Venrick and
Kiik disclose features of an asphalt shingle, as well as a method for making
the same, corresponding to limitations (a) through (d) of claims 1 and 15.
Id. 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 ¶ 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 ¶ 799–801.
Our analysis with respect to Venrick’s disclosure of the elements of
claims 1–22, supra, applies to the combination of Venrick and Kiik as well.
We have reviewed Petitioner’s evidence (Pet. 54–58) regarding dependent
claims 2–14 and 16–22, and determine that Petitioner has established that
Venrick and Kiik describe the limitations of claims 2–14 and 16–22.
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Indeed, Patent Owner does not argue the limitations of any claim apart from
claim 1.
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. 51 (citing Ex. 1018 ¶ 9;
Ex. 1003 ¶ 800). 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 ¶ 916–920.
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, and are
instead “contrived creations based on hindsight.” PO Resp. 15. 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. 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
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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. at 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,
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.” (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. 43; see In re ICON
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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 combination of Venrick with Kiik, namely, that “the purpose
of the backing material in [Kiik] is reinforcement.” Pet. 52. Thus, we find
sufficient evidence to support a determination of obviousness over Venrick
and Frankoski, and 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, and the
evidence, discussed above, 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. 21
(quoting Ex. 2007). However, Mr. Bryson based his opinion that one of
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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,
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 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. 28–31. According to Patent Owner,
combining Frankoski or Kiik with Venrick would eliminate “the ‘raised’
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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
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 32–33.
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, 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
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“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. 12–13. 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, 1:53–55, 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, 1:1:22–52. 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
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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.
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 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.3 As for Patent Owner’s

3 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
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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. 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 or
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
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
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

having striations of color beneath and between tabs wherein the color is
uniform within the tab”).
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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, i.e. claims 4–9
and 17–19, 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 ¶¶ 773–776; see, e.g., Ex. 1005
(Cash 1995), at Fig. 12, p.4; Ex. 1011 (Malarkey 2000). The
person of ordinary skill would understand that the reinforcing
layer disclosed in Venrick 1939 and Frankoski 1998 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.
Pet. 46–47; see also Pet. 54–55 (addressing Kiik). 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 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
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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
1–22, 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.
iv. Secondary Considerations of Nonobviousness
Patent Owner argues that objective indicia compel a conclusion of
nonobviousness. 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 1–22.
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; see also 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
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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 nonobviousness 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
(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 ’025
Patent because the Duration Shingles actually embody the claims of the ’025
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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 ’025 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. 55.
Petitioner responds that “Patent Owner has failed to establish a nexus
between Petitioner’s products and the claimed subject matter.” Reply 21.
Specifically, Petitioner relies on the technical experts’ testimony that the
’025 patent requires that the thin reinforcing material must be adhered to the
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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 Petitioner’s Duration
Shingles, which, according to Patent Owner, embody at least independent
claim 1 of the ’025 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. 1049, 236:20–238:16, 68:8–15, 218:4–21).
Petitioner argues that all these features are 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
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adhesive sealant called Tru-Bond®,” which may explain, at least in part, any
commercial success. Id. (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 ’025 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. 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. 2003, 3; Tr. 76:5–21 (referring to Tru-Bond sealant and an additional
strip of adhesive as part of SureNail Technology). Thus, when Patent
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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 ’025 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 1–22 would have been obvious over Venrick and Frankoski, and
claims 1–22 would have been obvious over Venrick and Kiik.
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–22 of the ’025 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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For PETITIONER:

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

For PATENT OWNER:

Mehran Arjomand
Amy R. Motomura
Stephen Jones
Jack Smith
MORRISON & FOERSTER LLP
marjomand@mofo.com
amortomura@mofo.com
15681-025-IPR@mofo.com