Paper No. 1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________________
`
`Owens Corning,
`Petitioner
`
`v.
`
`Fast Felt Corporation,
`Patent Owner
`
`Patent No. 8,137,757
`Issued: March 20, 2012
`Filed: February 12, 2010
`Inventors: David Allan Collins, George William Jackson
`and Miguel E. Madero O’Brien
`
`Title: PRINT METHODOLOGY FOR APPLYING POLYMER MATERIALS TO
`ROOFING MATERIALS TO FORM NAIL TABS
`OR REINFORCING STRIPS
`
`_____________________________
`
`Inter Partes Review No. IPR2015-00650
`
`PETITION FOR INTER PARTES REVIEW UNDER 37 C.F.R. 42.100
`
`___________________________________________________________
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________________
`
`Owens Corning,
`Petitioner
`
`v.
`
`Fast Felt Corporation,
`Patent Owner
`
`Patent No. 8,137,757
`Issued: March 20, 2012
`Filed: February 12, 2010
`Inventors: David Allan Collins, George William Jackson
`and Miguel E. Madero O’Brien
`
`Title: PRINT METHODOLOGY FOR APPLYING POLYMER MATERIALS TO
`ROOFING MATERIALS TO FORM NAIL TABS
`OR REINFORCING STRIPS
`
`_____________________________
`
`Inter Partes Review No. IPR2015-00650
`
`PETITION FOR INTER PARTES REVIEW UNDER 37 C.F.R. 42.100
`
`___________________________________________________________
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`Compliance with Requirements of an Inter Partes Review Petition ...............1
`
`A. Certification that the Patent May Be Contested via Inter
`Partes Review by the Petitioner ..............................................................1
`Fee for Inter Partes Review (§ 42.15(a)).................................................1
`B.
`C. Mandatory Notices (37 CFR § 42.8(b)) ..................................................1
`1.
`Real Party in Interest (§ 42.8(b)(1))..............................................1
`
`2.
`
`3.
`
`4.
`
`Other Proceedings (§ 42.8(b)(2))..................................................2
`
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ..........2
`
`Service Information Under 37 C.F.R. § 42.8(b)(4) ......................2
`
`D. Proof of Service (§§ 42.6(e) and 42.105(a)) ...........................................2
`Identification of Claims Being Challenged (§ 42.104(b))...............................2
`
`II.
`
`III. Relevant Information Concerning the Contested Patent .................................3
`
`A. Background of the Technology and Prior Art.........................................4
`1.
`Various Methods of Printing Polymers Were Well-Known.........4
`
`2.
`
`3.
`
`4.
`
`Printing Polymer Nail Tabs on Roofing Material was
`Well-Known..................................................................................5
`
`Printing of Polymers Using a Lamination Roll (or Transfer
`Material) Was Old and Well-Known (i.e, claim 1) ......................6
`
`Subsequently Pressure Adhering Polymer with a Roll
`After the Polymer’s Deposition on the Substrate was Old
`and Well-Known (i.e., claim 7) ....................................................9
`
`B. Overview of the ‘757 Patent Prosecution History.................................12
`
`i
`
`
`
`C. Level of Ordinary Skill in the Art .........................................................14
`D. Claim Construction................................................................................14
`IV. Detailed Explanation Under 37 C.F.R. §§ 42.104(b)(4) of How the
`Construed Claims Are Unpatentable .......................................................................17
`
`A. Statement of Non-redundancy...............................................................17
`B. Claims 1, 2, 4, 6, and 7 are rendered obvious by Lassiter in
`view of Hefele .......................................................................................19
`1.
`Independent Claim 1 ...................................................................20
`
`(a) A method of making a roofing or building cover
`material, which comprises treating an extended
`length of substrate, comprising the steps of .......................20
`
`(b) depositing tab material onto the surface of said
`roofing or building cover material at a plurality of
`nail tabs from a lamination roll...........................................21
`
`(c)
`
`said tab material bonding to the surface of said
`roofing or building cover material by pressure
`between said roll and said surface ......................................23
`
`Dependent Claim 2......................................................................27
`
`Dependent Claim 4......................................................................27
`
`Dependent Claim 6......................................................................29
`
`Claim 7 ........................................................................................30
`
`(a) A method of making a roofing or building cover
`material comprising the steps of.........................................30
`
`2.
`
`3.
`
`4.
`
`5.
`
`ii
`
`
`
`(b)
`
`(c)
`
`first depositing nail tab material at a plurality of
`locations on said roofing or building cover material,
`said nail tab material is substantially made of a
`polymeric material ..............................................................30
`
`subsequently pressure adhering said nail tab material
`into nail tabs on said roofing or building cover
`material with a pressure roll ...............................................31
`
`C. Claims 1, 2, 4, and 6 are rendered obvious by Lassiter in
`view of Bayer ........................................................................................34
`1.
`Independent Claim 1 ...................................................................35
`
`(a) A method of making a roofing or building cover
`material, which comprises treating an extended
`length of substrate, comprising the steps of .......................35
`
`(b) depositing tab material onto the surface of said
`roofing or building cover material at a plurality of
`nail tabs from a lamination roll...........................................36
`
`(c)
`
`said tab material bonding to the surface of said
`roofing or building cover material by pressure
`between said roll and said surface ......................................37
`
`Dependent Claim 2......................................................................39
`
`Dependent Claim 4......................................................................40
`
`Dependent Claim 6......................................................................41
`
`2.
`
`3.
`
`4.
`
`D. Claim 7 is anticipated by Dagher ..........................................................42
`1.
`Claim 7 ........................................................................................43
`
`iii
`
`
`
`(a) A method of making a roofing or building cover
`material comprising the steps of.........................................43
`
`(b)
`
`(c)
`
`first depositing nail tab material at a plurality of
`locations on said roofing or building cover material,
`said nail tab material is substantially made of a
`polymeric material ..............................................................44
`
`subsequently pressure adhering said nail tab material
`into nail tabs on said roofing or building cover
`material with a pressure roll ...............................................46
`
`E. Claims 1, 2, 4, 6, and 7 are rendered obvious by Lassiter in
`view of Eaton.........................................................................................47
`1.
`Independent Claim 7 ...................................................................48
`
`(a) A method of making a roofing or building cover
`material comprising the steps of.........................................48
`
`(b)
`
`(c)
`
`first depositing nail tab material at a plurality of
`locations on said roofing or building cover material,
`said nail tab material is substantially made of a
`polymeric material ..............................................................48
`
`subsequently pressure adhering said nail tab material
`into nail tabs on said roofing or building cover
`material with a pressure roll ...............................................49
`
`2.
`
`Independent Claim 1 ...................................................................52
`
`(a) A method of making a roofing or building cover
`material, which comprises treating an extended
`length of substrate, comprising the steps of .......................52
`
`iv
`
`
`
`(b) depositing tab material onto the surface of said
`roofing or building cover material at a plurality of
`nail tabs from a lamination roll...........................................53
`
`(c)
`
`said tab material bonding to the surface of said
`roofing or building cover material by pressure
`between said roll and said surface ......................................54
`
`Dependent Claim 2......................................................................58
`
`Dependent Claim 4......................................................................58
`
`Dependent Claim 6......................................................................59
`
`3.
`
`4.
`
`5.
`
`V.
`
`Conclusion .....................................................................................................60
`
`v
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,137,757
`
`I.
`
`Compliance with Requirements of an Inter Partes Review Petition
`
`A.
`
`Certification that the Patent May Be Contested via Inter Partes
`Review by the Petitioner
`
`Petitioner certifies it is not barred or estopped from requesting inter partes
`
`review of U.S. Patent No. 8,137,757 (“the ‘757 Patent”) (Ex. 1001). Neither
`
`Petitioner, nor any party in privity with Petitioner: (i) have filed a civil action
`
`challenging the validity of any claim of the ‘757 Patent; or (ii) have been served a
`
`complaint alleging infringement of the ‘757 Patent more than one year prior to the
`
`present date. Also, the ‘757 Patent has not been the subject of a prior inter partes
`
`review or a finally concluded district court litigation involving Petitioner.
`
`Petitioner also certifies this petition for inter partes review is filed in compliance
`
`with 35 U.S.C. § 315(b). Petitioner was served a complaint alleging infringement
`
`of the ‘757 Patent on April 14, 2014 resulting in Civ. A. No. 3:14-CV-00803-DAK
`
`(ND OH). (Ex. 1015 (Complaint)).
`
`B.
`
`Fee for Inter Partes Review (§ 42.15(a))
`
`The Director is authorized to charge Deposit Account No. 03-0172.
`
`C. Mandatory Notices (37 CFR § 42.8(b))
`
`1.
`
`Real Party in Interest (§ 42.8(b)(1))
`
`The real parties in interest are Owens Corning, Owens Corning Roofing and
`
`Asphalt, LLC, Owens Corning Sales, LLC, and Owens Corning Intellectual
`
`Capital, LLC, all located at One Owens Corning Parkway, Toledo, OH 43659.
`
`1
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,137,757
`
`2.
`
`Other Proceedings (§ 42.8(b)(2))
`
`The ‘757 Patent is in litigation in the Northern District of Ohio (Civ. A. No.
`
`3:14-CV-00803-DAK), which names Petitioner Owens Corning and Owens
`
`Corning Roofing and Asphalt LLC as defendants.
`
`3.
`
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Lead Counsel:
`
`Nenad Pejic (Registration No. 37415)
`
`Back-up Counsel: Mark McDougall (Registration No. 67620)
`
`4.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service on Petitioner may be made by mail or email to: Calfee, Halter and
`
`Griswold LLP, 1405 E. 6th St., Cleveland, Ohio 44114. Email:
`
`ipupdate@calfee.com. Telephone: 216-622-8200. Facsimile: 216-241-0816.
`
`D.
`
`Proof of Service (§§ 42.6(e) and 42.105(a))
`
`Proof of service of this petition is provided in Attachment A.
`
`II.
`
`Identification of Claims Being Challenged (§ 42.104(b))
`
`Claims 1, 2, 4, 6, and 7 of the ‘757 Patent are unpatentable. Specifically:
`
`(1)
`
`Claims 1, 2, 4, 6 and 7 are obvious under 35 U.S.C. §103(a) by U.S.
`
`Patent No. 6,451,409 (“Lassiter”) (Ex. 1003) in view of U.S. Patent No. 5,101,759
`
`(“Hefele”) (Ex. 1004). Lassiter was filed on Nov. 22, 1995, issued on Sep. 17,
`
`2002 and is prior art under pre-AIA 35 U.S.C. §102(e). Hefele issued on April 7,
`
`1992 and is prior art under pre-AIA 35 U.S.C. §102(b).
`
`2
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,137,757
`
`(2)
`
`Claims 1, 2, 4, and 6 are obvious under 35 U.S.C. §103(a) by Lassiter
`
`in view of U.S. Patent No. 5,597,618 (“Bayer”) (Ex. 1007). Bayer issued on Jan.
`
`28, 1997 and is prior art under pre-AIA 35 U.S.C. §102(b).
`
`(3)
`
`Claim 7 is anticipated under 35 U.S.C. §102 in view of PCT Int’l Pub.
`
`WO 01/62491 (“Dagher”) (Ex. 1020). Dagher published on Aug. 30, 2001 and is
`
`prior art under pre AIA 35 U.S.C. §102(b).
`
`(4)
`
`Claims 1, 2, 4, 6 and 7 are obvious under 35 U.S.C. §103(a) by
`
`Lassiter in view of U.S. Patent No. 6,875,710 (“Eaton”) (Ex. 1005). Eaton was
`
`filed on Nov. 5, 2001, published on May 8, 2003, issued on April 5, 2005, and is
`
`prior art under pre-AIA 35 U.S.C. §102(e).
`
`Claim construction, the evidence relied upon, and precise reasons why the
`
`claims are unpatentable are provided in § IV, below. A list of evidence relied upon
`
`in support of this Petition is set forth in Attachment B.
`
`III. Relevant Information Concerning the Contested Patent
`
`The ‘757 Patent is titled “Print Methodology For Applying Polymer
`
`Materials To Roofing Materials To Form Nail Tabs Or Reinforcing Strips.” (Ex.
`
`1001). The ‘757 Patent discloses gravure and offset based methods for printing
`
`polymer nail tabs on roofing or building cover materials. Independent claim 1
`
`describes a method of making a roofing or building cover material that requires
`
`depositing tab material from a “lamination roll” onto the surface of the roofing or
`
`3
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,137,757
`
`building cover material and bonding the tab material by pressure between the
`
`lamination roll and the surface of the roofing or building cover material. (Id.)
`
`Independent claim 7 describes a method of treating a roofing or building cover
`
`material that requires “first depositing” nail tab material onto the surface of the
`
`roofing or building cover material and then “subsequently pressure adhering” the
`
`nail tab material into nail tabs with a pressure roll. (Id.)
`
`It is respectfully submitted it would have been obvious to print or deposit
`
`polymer nail tabs on a roofing material via gravure or offset based methods (1)
`
`having a lamination or transfer roll as in claim 1, and (2) applying pressure after
`
`deposition to subsequently pressure adhere the polymer as in claim 7. The prior art
`
`recognized the benefits of these methods as providing high print quality, high
`
`printing speeds, and applicability to a wide range of substrates, including roofing
`
`materials and other materials having irregular surfaces. Furthermore, the prior art
`
`anticipates claim 7 because it discloses first depositing nail tab material and
`
`applying pressure after deposition to subsequently pressure adhere the material into
`
`nail tabs.
`
`A.
`
`Background of the Technology and Prior Art
`
`1.
`
`Various Methods of Printing Polymers Were Well-Known
`
`The prior art teaches polymers can be printed by a variety of methods. For
`
`example, Lassiter discloses a nozzle-based system for printing polymer nail tabs on
`
`4
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,137,757
`
`roofing material. (Ex. 1003, Abstract). The prior art also indicates polymers can be
`
`printed via rolls or cylinders (including a transfer or lamination roll) with a gravure
`
`or “offset” based system (see, e.g., Gravure Process (Ex. 1011), Hefele (Ex. 1004),
`
`Bayer (Ex. 1007), Allman (Ex. 1006) and Eaton (Ex. 1005)). The prior art also
`
`discloses applying pressure subsequent to depositing the polymer to pressure
`
`adhere the polymer to the web or substrate. (see, e.g., Hefele (Ex. 1004) and Eaton
`
`(Ex. 1005)). The prior art, those having ordinary skill, the Examiner, and the Patent
`
`Owner have all recognized polymer nail tabs can be printed using rolls in gravure
`
`and offset printing methods instead of nozzle-based printing. (See, e.g., Ex. 1002
`
`Ex. 1002, 12/28/10 Office Action, p. 5 (finding “it would have been obvious ... to
`
`modify the process of Lassiter to substitute for the nozzles, a pressure-gravure
`
`roller arrangement ..., in order to apply the polymeric coating material”). The
`
`results are predictable and the benefits widely recognized. (Id., (noting “[o]ne
`
`skilled in the art would have been motivated to do so by the desire and expectation
`
`of successfully applying the polymeric material to form integral nail tabs in a
`
`desired pattern on the substrate”)).
`
`2.
`
`Printing Polymer Nail Tabs on Roofing Material was Well-
`Known
`
`The prior art Lassiter reference discloses a nozzle-based method for printing
`
`polymer nail tabs on roofing material. (Ex. 1003, Abstract). Fig. 1 is reproduced
`
`below annotated in yellow to highlight the nozzle and polymer nail tabs.
`
`5
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,137,757
`
`Nozzle(s) 26
`
`Nail Tabs (29a ... 29x)
`
`Roofing Felt (17)
`
`In Fig 1, a nozzle 26 dispenses liquid polymer material onto roofing felt material
`
`17 to form the nail tabs 29a, 29b, and 29x. (Ex. 1003, Fig. 1, 5:9-10 & 53-62).
`
`Therefore, Lassiter shows nozzle-based printing of polymer was well known in the
`
`prior art--especially for forming polymer nail tabs on a roofing material.
`
`3.
`
`Printing of Polymers Using a Lamination Roll (or Transfer
`Material) Was Old and Well-Known (i.e, claim 1)
`
`Gravure printing using rolls or cylinders has been known since the late
`
`1700’s where it was used to print patterns on textiles and, since then, on a broad
`
`range of substrates. (Ex. 1011, Gravure
`
`Process, p. 3, 15). Gravure printing has
`
`four basic components: an engraved
`
`(gravure) cylinder, an ink fountain, a
`
`doctor blade, and an impression cylinder. (Id., p. 3 and p. 100; Ex. 1012, p. 361.
`
`(See also, Ex. 1008, Figs. 15 & 16, ¶¶[0126]-[0135] & [0139]-[0140] (disclosing
`
`6
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,137,757
`
`gravure printing of thermoplastic tabs on web structures)). (See also, Ex. 1014,
`
`Levenson Dec., ¶ 27).
`
`In the figure above, which is illustrative of the gravure printing process, the
`
`“gravure cylinder” carries the image to be printed or transferred. (Ex. 1011, p. 99).
`
`The “ink fountain” is an ink well positioned to provide the gravure cylinder with
`
`ink to be printed. (Id.) The “doctor blade” wipes excess ink from the non-image
`
`areas of the gravure cylinder. (Id.) The “impression roller” holds the substrate
`
`against the gravure cylinder to obtain proper transfer of the image. (Id.) (See also,
`
`Ex. 1014, Levenson Dec., ¶ 28).
`
`Offset printing (or “indirect gravure”) uses one additional component: “a
`
`transfer roll[er]” or lamination roll. (Ex. 1011, p. 117; Ex. 1012, p. 365). Instead of
`
`printing directly from the etched print cylinder onto the substrate material, offset
`
`printing methods print the image from the print cylinder onto a transfer roller and
`
`the “transfer roller is then used to print the image on the product.” (Ex. 1011, p.
`
`117; see also, Ex. 1012, p. 365, Ex. 1014, Levenson Dec., ¶ 29). Gravure and
`
`offset based printing has endured for over a hundred years and is widely used
`
`today in many industries. (Levenson Dec., ¶ 30).
`
`By way of example, the Hefele and Bayer prior art references, which were
`
`not of record during prosecution of the ‘757 Patent, each disclose “offset” printing
`
`of polymer tabs onto a substrate using a transfer roller (or lamination roll) and
`
`7
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,137,757
`
`bonding the tab material to the substrate by pressure between the lamination roll
`
`and the substrate:
`
`Substrate (8)
`
`Substrate(58)
`
`Tab Material (56)
`
`Tab Material (7)
`
`Lamination
`Roll (5)
`Hefele Fig. 1 (annotated in yellow)
`
`Lamination
`Roll (55)
`
`Bayer Fig. 4 (annotated in yellow)
`
`Hefele discloses polymer is transferred from the depressions in “gravure roller 1”
`
`to the lamination or transfer roller (“heated roller 5”), which then subsequently
`
`transfers the polymer to “material web 8.” (Ex. 1004, 3:3-40 & 56-60) (emphasis
`
`added). Likewise, Bayer discloses polymer is transferred by a “pattern roller 50”
`
`that contacts lamination or “application roller 55” which “then transfers coating
`
`material 56 onto a substrate 58 in the desired pattern.” (Ex. 1007, 2:26-31)
`
`(emphasis added). These disclosures are nearly identical to the ‘757 Patent’s
`
`“offset” printing disclosure using a “transfer material” (Ex. 1001, 7:55-63) in the
`
`form of a “roll” (Id, 9:25-28).
`
`Hefele notes one of the benefits of using a lamination or transfer roll is it can
`
`print on difficult surfaces such as those having “hairy or open mesh construction”
`
`including “weaves, textiles, woven textile goods, fleeces, knitted fleeces, and
`
`woven knitted fleeces” and “leather, foils, papers and foam materials.” (Ex. 1004,
`
`8
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,137,757
`
`2:62-3:3) (See also, Ex. 1011, Gravure Process, p. 117 (indicating a transfer or
`
`lamination roll can be used to print on “irregular surfaces”). Bayer notes the
`
`substrate can be a “continuous web of paper or polymeric material.” (Ex. 1007,
`
`4:20-23). Foils, papers and foam materials are forms of recognized roofing or
`
`building cover material. (Ex. 1003, 1:25-28 & 3:24-25 (specifically noting “paper”
`
`as a roofing or building cover material) (See also, Ex. 1014, Levenson Dec., ¶ 32
`
`& 64). The Eaton prior art reference similarly discloses the use of a lamination roll
`
`to deposit and bond with pressure polymers to various substrates, including paper
`
`(Ex. 1005, 22:54-56; Fig. 25 (disclosing lamination)).
`
`4.
`
`Subsequently Pressure Adhering Polymer with a Roll After
`the Polymer’s Deposition on the Substrate was Old and
`Well-Known (i.e., claim 7)
`
`The prior art also shows it was well-known to subsequently pressure adhere
`
`polymer tabs with a roll after the polymer’s deposition on a substrate. By way of
`
`example, Hefele discloses
`
`one such process in Fig. 1
`
`(annotated in yellow).
`
`Polymeric material 7 is first
`
`deposited onto the surface of
`
`web material 8 at an early
`
`point of rotation of the roll 5.
`
`Subsequently Pressure
`AdheringPolymer Tab
`Material with Roll
`
`First Depositing
`Polymer Tab Material
`
`9
`
`Polymer Tab Material (7)
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,137,757
`
`(Ex. 1004, Fig. 1 & 3:46-60; Ex. 1014, Levenson Dec., ¶ 55). As rotation
`
`continues, the polymeric material 7 is then subsequently pressure adhered to the
`
`web material 8 by a nip formed between rolls 5 and 9. (Ex. 1004, 3:49-53 “heating
`
`roller 5 and an associated further roller 9 which is so arranged that it presses the
`
`material web 8 only slightly against the heating roller 5”)(emphasis added), see
`
`also Id. 2:39-45; Ex. 1014, Levenson Dec., ¶ 56 (indicating pressing roll 9 against
`
`roller 5 generates pressure). Hefele further discloses “flattening” of the tabs 10
`
`during this subsequent pressure adhering process. (Ex. 1004, 2:43-45). Hefele
`
`discloses the advantages of such an arrangement include its ability to print on
`
`difficult surfaces (Id., 2:62-3:3) and eliminates the need for additional structures
`
`and expense to accomplish such a production of polymer tabs. (Id., Abstract &
`
`1:23-65). (See also, Ex. 1014, Levenson Dec. ¶¶ 58-59). Moreover, as noted above,
`
`Hefele discloses printing on “foils, papers and foam materials.” (Ex. 1004, 3:2-3 &
`
`3:18-45), which are recognized forms of roofing or building cover material. (Ex.
`
`1003, 1:25-28 (specifically noting “paper” as a roofing or building cover material)
`
`(See also, Levenson Dec., ¶ 53).
`
`Dagher also discloses a method of making a roofing or building cover
`
`material that “includes reinforcement strips of fiber reinforced polymer material
`
`incorporated into the panel” for nail tabs. (Id., Abstract, see also, p. 2:20-24, p.
`
`4:18-5:8, p. 5:20-22, p. 10:24-11:2). After depositing the nail tab material, Dagher
`
`10
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,137,757
`
`discloses a second, subsequent step of pressure adhering the nail tab material onto
`
`the roofing or building material by “rolling the wetted reinforcement to assure
`
`good contact and to remove trapped air.” (Id., p. 10:25-28). It is clear that the
`
`reference to “rolling” in the context of assuring “good contact” and removing
`
`“trapped air” necessarily requires a roll that applies pressure (i.e., a pressure roll).
`
`(Ex. 1014, Levenson Dec. ¶ 114).
`
`By way of further example, Eaton also shows it was known to subsequently
`
`pressure adhere polymer with a roll after the polymer’s deposition on a substrate:
`
`First Depositing
`Polymer
`
`Subsequently
`Pressure Adhering
`Polymer with Roll
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`Eaton Figs. 11 and 25 (annotated in yellow)
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`Fig. 11 shows polymer tabs 14 first deposited on the surface of a substrate 10. (Ex.
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`1005, Figs. 1 & 11-11C 2:15-30, 5:41-50, 8:54-9:48 &14:19-16:37). Fig. 25 shows
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`the polymer tabs 1214a and 1214b resulting from the process of Fig. 11 being
`
`subsequently pressure adhered to a substrate with rolls 1240. (Id., 22:54-56). Eaton
`
`discloses an advantage of such a process includes the ability to print on “porous,
`
`11
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`Petition for Inter Partes Review of U.S. Patent No. 8,137,757
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`fibrous, etc.” substrates where “pressure may enhance attachment of the discrete
`
`polymeric regions to the substrates by forcing a portion of the thermoplastic
`
`composition to infiltrate the substrate and/or encapsulate fibers of the substrate.”
`
`(Id., 2:21-29). (See also, Ex. 1014, Levenson Dec., ¶ 106). Eaton further discloses
`
`substrates that can be printed using this process include “paper,” (Ex. 1005, 6:27-
`
`33) which is a recognized form of roofing or building cover material. (Ex. 1003,
`
`1:25-28 (specifically noting “paper” as a roofing or building cover material) (See
`
`also, Levenson Dec., ¶ 103).
`
`B.
`
`Overview of the ‘757 Patent Prosecution History
`
`Independent claim 1 of the ‘757 Patent was allowed because the Examiner
`
`found neither Lassiter nor Halley (WO 98/06891 A1) (“Halley”) (Ex. 1013)
`
`disclosed a “lamination roll.” (See, e.g., Ex. 1002, 12/28/10 Office Action, p. 6).
`
`Independent claim 7 was initially rejected as being obvious in view of the
`
`combination of Lassiter and Halley. The Examiner found “it would have been
`
`obvious to one skilled in the art to modify the process of Lassiter to substitute for
`
`the nozzles, a pressure-gravure roller arrangement like that of Halley, in order to
`
`apply the polymeric coating material. One skilled in the art would have been
`
`motivated to do so by the desire and expectation of successfully applying the
`
`polymeric material to form integral nail tabs in a desired pattern on the substrate.”
`
`(Id., p. 5) Significantly, the Examiner noted “it is clear that any means, known in
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`12
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`Petition for Inter Partes Review of U.S. Patent No. 8,137,757
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`the art, for depositing the polymer that would achieve the same result could be
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`successfully substituted.” (Id., p. 4) (emphasis added).
`
`In response, Patent Owner argued Lassiter’s disclosure of a grooved wheel
`
`that allowed nail tabs to pass “without being subject to possible scraping action”
`
`indicated no pressure step would be desirable. (Ex. 1002, 06/06/11 Response to
`
`Office Action, p. 7).1 Nevertheless, conceding to the rejection, Patent Owner
`
`amended claim 7 by adding “first” to the depositing step and “subsequently” to the
`
`pressure adhering step. Patent Owner argued there is no teaching in either Lassiter
`
`or Halley “to apply the nail tab material first, and then subsequently pressure
`
`adhere it to the substrate with a roller.” (Ex. 1002, 06/06/11 Response to Office
`
`Action, pp. 4-5 & 7).
`
`Based on the amendment, the Examiner withdrew the Lassiter/Halley
`
`rejection and stated:
`
`the prior art neither teaches nor suggests a process having a first step
`of depositing nail tab material at a plurality of locations of on roofing
`or building cover material, followed by pressure adhering the nail tab
`material into nail tabs on the roofing or building cover material with a
`pressure roll. In other words, the prior art neither teaches nor suggests
`
`1 In this regard, Lassiter simply states “[t]he grooves in grooved wheel 32 permit
`
`the tabs to pass through without being subject to possible scraping action.” (Ex.
`
`1003, 6:5-7). No mention of pressure is made. (Ex. 1014, Levenson Dec., ¶ 21).
`
`13
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`Petition for Inter Partes Review of U.S. Patent No. 8,137,757
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`post-deposition adhering and shaping on the roofing or building cover
`material.
`(Ex. 1002, 08/09/11 Office Action, p. 3).
`
`C.
`
`Level of Ordinary Skill in the Art
`
`The level of ordinary skill in the art as of the effective filing date of the ‘757
`
`Patent is appropriately reflected in the disclosure of the prior art references
`
`discussed above in Section III(A). Chore-Time Equipment, Inc. v. Cumberland
`
`Corp., 713 F.2d 774 (Fed. Cir. 1983). See also Okajima v. Bourdeau, 261 F.3d
`
`1350, 1355 (Fed. Cir. 2001). The scope and content of the prior art indicates one of
`
`ordinary skill would be familiar with various methods of printing polymer on
`
`various substrates and for various purposes (see generally Lassiter, Hefele, Bayer,
`
`Eaton, Allman, Jackson, and Lalwani). (Ex. 1014, Levenson Dec., ¶ 12). The prior
`
`art further indicates one of ordinary skill would understand various types of
`
`polymers can be printed using these methods (see generally Lassiter, Hefele,
`
`Eaton). (Id.) It also indicates one of ordinary skill would be aware various methods
`
`of printing polymer are interchangeable and provide for predictable results (see
`
`generally Bayer, Allman and Lalwani). (Id.) The scope and content of the prior art
`
`further indicates one of ordinary skill in the art would possess at least a bachelor’s
`
`degree with knowledge of various printing methods and several years of industry
`
`experience in the printing field. (Id., ¶ 13).
`
`D.
`
`Claim Construction
`
`14
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,137,757
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`A claim in an unexpired patent is given its broadest reasonable construction
`
`in light of the specification of the patent in which it appears. 37 C.F.R. §
`
`42.100(b).2
`
`Claim 1: “depositing tab material onto the surface of said roofing or building
`
`cover material ... from a lamination roll.” Applying the USPTO’s standard, the
`
`phrase “lamination roll” should be construed according to its broadest reasonable
`
`interpretation (“BRI”) (37 C.F.R. § 42.100(b)). The claim language requires the
`
`“lamination roll” to be the structure “from” which the tab material is deposited.
`
`(Ex. 1001). This is consistent with the Examiner’s reference to “transfer” in
`
`connection with “lamination roll.”3 (Ex. 1002, 12/28/10 Office Action, p. 6, 8/9/11
`
`Office Action, p. 5). The claim language further requires the “the tab material
`
`bonding ... by pressure between said roll and said surface.” (Ex. 1001, 13:18-20).
`
`Thus, the “lamination roll” must also apply “pressure” to bond the tab material to
`
`the surface of the roofing or building cover material. The phrase “lamination roll”
`
`2 Petitioner
`
`reserves the right
`
`to contend in district court
`
`litigation claim
`
`construction under the Phillips standard for all terms identified herein and to raise
`
`indefiniteness, written description, and enablement defenses.
`
`3 The Examiner’s precise reference was to “transfer substrate” in its Reasons for
`
`Allowance. (See, e.g., Ex. 1002, 12/28/10 Office Action, p. 5). However, that
`
`phrase is not used anywhere in the ‘757 Patent.
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`15
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,137,757
`
`is only used in the Abstract of the ‘757 Patent. Neither the Abstracts nor any other
`
`parts of the applications from which the ‘757 Patent claims priority refer to a
`
`“lamination roll.” (Exs. 1016-1019). Hence, under the USPTO’s BRI standard, the
`
`claim 1 language requires the “lamination roll” to be the structure “from” which
`
`the tab material is deposited and which applies “pressure” to bond the tab material
`
`to the surface of the roofing or building cover material.
`
`Claim 7: “subsequently pressure adhering said nail tab material into nail tabs
`
`on said roofing or building cover material with a pressure roll.” Applying the
`
`USPTO’s standard, the term “subsequently” should be construed according to its
`
`broadest reasonable interpretation (“BRI”) (37 C.F.R. § 42.100(b)). The claim
`
`language requires “first depositing” nail tab material and “subsequently” pressure
`
`adhering the nail tab material. (Ex. 1001).Thus, the words of the claim require
`
`“subsequently” to mean after “first depositing.” Consistent herewith, the word
`
`“subsequently” was added to the claim in order to distinguish the prior art, which
`
`allegedly only taught “conventional gravure pressure being applied at or near the
`
`time of deposition.” (Ex. 1002, 06/06/11 Response to Office Action, p. 7). Other
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`than the claims, the phrase “subsequently pressure adhering” does not appear in
`
`specification of the ‘757 Patent. (Ex. 1001). Thus, under the USPTO’s BRI
`
`standard, the claim 7 language requires “subsequently” pressure adhering to mean
`
`after first depositing the tab material on the roofing material.
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`16
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,137,757
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`IV. Detailed Explanation Under 37 C.F.R. §§ 42.104(b)(4) of How the
`Construed Claims Are Unpatentable
`
`A.
`
`Statement of Non-redundancy
`
`The grounds raised are meaningfully distinct and rely on fundamentally
`
`different prior art references. Each of the secondary references relied upon herein
`
`was not before the Examiner during prosecution and is not duplicativ
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