`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Owens Coming,
`Petitioner
`
`go
`
`CertainTeed Corporation,
`Patent Owner
`
`Patent No. 8,950,161
`Issued: February 10, 2015
`Filed: October 3 l, 2013
`Husnu M. Kalkanoglu and Stephen A. Koch
`
`Inventors:
`
`Title: SHINGLE WITH REINFORCEMENT LAYER
`
`Inter Partes Review No. 2015-01159
`
`PETITION FOR INTER PARTES REVIEW
`
`FAST FELT 2031, pg. 1
`Owens Corning v. Fast Felt
`IPR2015-00650
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,950,161
`
`TABLE OF CONTENTS
`
`II.
`III.
`
`2.
`
`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)) ............................................... 2
`B.
`C. Mandatory Notices (37 CFR § 42.8(b)) ................................................ 2
`1.
`Real Party in Interest (§ 42.8(b)(1)) ............................................ 2
`2.
`Other Proceedings (§ 42.8(b)(2)) ................................................ 2
`3.
`Lead and Backup Lead Counsel (§ 42.8(b)(3)) .......................... 3
`4.
`Service on Petitioner ................................................................... 3
`D. Proof of Service (§§ 42.6(e) and 42.105(a)) ......................................... 3
`Identification of Claims Being Challenged (§ 42.104(b)) ............................... 3
`Relevant Information Concerning the ’ 161 Patent .......................................... 4
`Background of the Technology ............................................................. 4
`A.
`1. The Basic Asphalt Shingle Coated on Both Sides with
`Asphalt and Granules and Applied to a Roof in Courses
`Had Been Known for Decades .................................................... 4
`The Prior Art Disclosed a Generally Longitudinal Second
`Thickness Layer For Reinforcement in the Nailing Zone .......... 7
`3. The Prior Art Taught Thin Reinforcement Material ................. 11
`Laminated Shingles Including Multiple Reinforcement
`4.
`Layers Were Known ................................................................. 12
`B. General Overview Of The ’ 161 Patent ................................................ 14
`The ’161 Patent Recognizes the Basic Asphalt
`1.
`Shingle Was Known ................................................................. 14
`2. Only a Reinforcement Layer Adhered to the Rear
`Surface Of the Shingle Is Disclosed in the ’ 161 Patent ............ 15
`The Reinforcement Layer Is "Adhered" to the Surface
`Of the Shingle in All the Claims ............................................... 17
`Prosecution History and Effective Filing Date of the ’ 161 Patent ...... 17
`1. Prosecution of the ’ 161 Patent .................................................. 17
`Prosecution of Related Patent Applications .............................. 18
`2.
`U.S. Appl. No. 10/871,911 ............................................. 19
`a.
`U.S. Appl. No. 12/857,868 ............................................. 20
`b.
`
`3.
`
`C.
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`FAST FELT 2031, pg. 2
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`IPR2015-00650
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`Petition for Inter Partes Review of U.S. Patent No. 8,950,161
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`IV.
`
`3. Effective Filing Date of the Claims .......................................... 22
`D. Person of Ordinary Skill in the Art ..................................................... 23
`Construction of Terms Used in the Claims ......................................... 23
`E.
`1.
`Elements (a)-(d) of Claim 1 ..................................................... 23
`"shingle" .................................................................................... 24
`2.
`"adhered to an exterior surface of said shingle" ....................... 27
`3.
`"substantially thinner" .............................................................. 30
`4.
`Precise Reasons for Relief Requested ........................................................... 31
`A. Venrick 1939 (Ex. 1013) in View of Frankoski 1998 (Ex. 1010)
`Renders Obvious Claims 1-19 ............................................................. 32
`1.
`Venrick In View Of Frankoski Renders Obvious Claim 1 ....... 32
`2.
`Venrick In View Of Frankoski Renders Obvious Claim 11 ..... 39
`3.
`Venrick In View Of Frankoski Renders Obvious Claims 2
`and 12 ........................................................................................ 40
`Venrick In View Of Frankoski Renders Obvious Claim 3
`and 13 ........................................................................................ 41
`Venrick In View Of Frankoski Renders Obvious Claims
`4, 5, 8, 9, 14 and 15 ................................................................... 42
`Venrick In View Of Frankoski Renders Obvious Claim 6 ....... 42
`Venrick In View Of Frankoski Renders Obvious Claim 7 ....... 43
`Venrick In View Of Frankoski Renders Obvious Claims
`10 and 16 ................................................................................... 43
`Venrick In View Of Frankoski Renders Obvious Claim 17 ..... 44
`9.
`10. Venrick In View Of Frankoski Renders Obvious Claim 18 ..... 45
`11. Venrick In View Of Frankoski Renders Obvious Claim 19 ..... 45
`Venrick 1939 (Ex. 1013) in View of Kiik 2001 (Ex. 1018)
`Renders Obvious Claims 1-19 ............................................................. 46
`1.
`Venrick In View Of Kiik Renders Obvious Claim 1 ................ 47
`2.
`Venrick In View Of Kiik Renders Obvious Claim 11 .............. 51
`3.
`Venrick In View Of Kiik Renders Obvious Claims 2
`and 12 ........................................................................................ 52
`4. Venrick In View Of Kiik Renders Obvious Claims 3
`and 13 ........................................................................................ 53
`Venrick In View Of Kiik Renders Obvious Claims 4, 5,
`8, 9, 14, and 15 .......................................................................... 54
`
`4.
`
`5.
`
`6.
`7.
`8.
`
`B.
`
`5.
`
`ii
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`FAST FELT 2031, pg. 3
`Owens Corning v. Fast Felt
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`Petition for Inter Partes Review of U.S. Patent No. 8,950,161
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`°
`
`Venrick In View Of Kiik Renders Obvious Claim 6 ................ 54
`Venrick In View Of Kiik Renders Obvious Claim 7 ................ 55
`Venrick In View Of Kiik Renders Obvious Claims 10
`and 16 ........................................................................................ 55
`Venrick In View Of Kiik Renders Obvious Claim 17 .............. 56
`10.
`Venrick In View Of Kiik Renders Obvious Claim 18 .............. 57
`11.
`Venrick In View Of Kiik Renders Obvious Claim 19 .............. 57
`C. Secondary Considerations Do Not Favor Nonobviousness ................ 58
`CONCLUSION .............................................................................................. 60
`
`°
`
`go
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`Attachment A. Proof of Service of the Petition
`
`Attachment B. List of Evidence and Exhibits Relied Upon in Petition
`
`iii
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`FAST FELT 2031, pg. 4
`Owens Corning v. Fast Felt
`IPR2015-00650
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`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 interpartes
`
`review of U.S. Patent No. 8,950,161 ("the ’161 patent") (Ex. 1046). Neither
`
`Petitioner, nor any party in privity with Petitioner: (i) has filed a civil action
`
`challenging the validity of any claim of the ’161 patent; or (ii) has been served a
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`complaint alleging infringement of the ’ 161 patent more than one year prior to the
`
`present date. Also, the ’161 patent has not been the subject of a prior interpartes
`
`review or a finally concluded district court litigation involving Petitioner.
`
`Petitioner notes that the timing provisions of 35 U.S.C. § 311 (c) and 37
`
`C.F.R. § 42.102(a) do not apply to the ’161 patent, as its effective filing date pre-
`
`dates the first-to-file system. See Pub. L. 112-274 § l(n), 126 Stat. 2456 (Jan. 14,
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`2013). Furthermore, as discussed below, Patent Owner’s submission of additional
`
`information prior to the Examiner’s issuance of the Notice of Allowance for the
`
`’ 161 patent does not preclude institution pursuant to 35 U.S.C. § 325(d). There is
`
`no evidence the Examiner gave due consideration to the information that was
`
`submitted, Petitioner’s arguments have merit, and Petitioner was unable to make
`
`these arguments during prosecution. See SK Innovation Co., Ltd. v. Celgard, LLC,
`
`IPR No. 2014-00680, Paper No. 11 (Sept. 29, 2014) at 22; Conopco, Inc. v. The
`
`Procter & Gamble Co., IPR No. 2014-00505, Paper No. 9 (Feb. 12, 2014) at 6.
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`FAST FELT 2031, pg. 5
`Owens Corning v. Fast Felt
`IPR2015-00650
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,950,161
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`B. Fee for Inter Partes Review (§ 42.15(a))
`
`The Director is authorized to charge Deposit Account No. 50-1597.
`
`Mandatory Notices (37 CFR § 42.8(b))
`
`1. Real Party in Interest (§ 42.8(b)(1))
`
`The real party in interest is Owens Coming, located at One Owens Coming
`
`Parkway, Toledo, OH 43659.
`
`2. Other Proceedings (§ 42.8(b)(2))
`
`The ’161 patent is not subject to any litigation, but patents related to the ’161
`
`patent are the subject of litigation in the District of Delaware (Civ. A. No. 1:14-cv-
`
`00510-SLR), which names Owens Coming as defendant. See Ex. 1045
`
`(Complaint). These same related patents, of which the ’ 161 patent is related by
`
`continuation, are also the subject of petitions for interpartes review filed on
`
`August 29, 2014 (IPR Nos. 2014-01397, -01401, -01402, -01403, -01404). On
`
`March 9, 2015, the Board correctly instituted trial on all of the challenged claims
`
`in each of these proceedings based on the Venrick, Frankoski, and Kiik references,
`
`which are the subject of the instant petition. Additional patents related to the ’161
`
`patent are also the subject of interpartes review proceedings, IPR Nos. 2015-
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`01160 and 2015-01161, which are filed concurrently with the instant petition.
`
`The subject matter of the ’ 161 patent is substantially identical to the subject
`
`matter of the claims on which the Board has already instituted interpartes review.
`
`Therefore, interpartes review should be instituted for the ’161 patent, as explained
`
`2
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`FAST FELT 2031, pg. 6
`Owens Corning v. Fast Felt
`IPR2015-00650
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,950,161
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`in detail below.
`
`o
`
`Lead and Backup Lead Counsel (§ 42.8(b)(3))
`
`Lead Counsel
`Jeffrey P. Kushan
`Reg. No. 43,401
`j kushan~sidley.com
`(202) 736-8914
`
`Backup Lead Counsel
`Peter S. Choi
`Reg. No. 54,033
`peter.choi(~sidley.com
`(202) 736-8076
`
`4. Service on Petitioner
`
`Service on Petitioner may be made by mail or hand delivery to: Sidley
`
`Austin LLP, 1501 K Street, N.W., Washington, D.C. 20005. The fax number for
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`Petitioner’s counsel is (202) 736-8711.
`
`D.
`
`Proof of Service (§§ 42.6(e) and 42.105(a))
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`Proof of service of this petition is provided in Attachment A.
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`II.
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`Identification of Claims Being Challenged (§ 42.104(b))
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`Claims 1-19 of the ’ 161 patent are unpatentable. Specifically:
`
`(1) Claims 1-19 would have been obvious under 35 U.S.C. § 103 based
`
`on U.S. Patent No. 2,161,440 to Venrick (.Venrick) (Ex. 1013) in view
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`of U.S. Patent No. 5,822,943 to Frankoski (Frankoski) (Ex. 1010).
`
`(2) Claims 1-19 would have been obvious under 35 U.S.C. § 103 based
`
`on Venrick in view of U.S. Patent Publ. No. 2001/0055680 to Kiik
`
`(Kiik) (Ex. 1018).
`
`Petitioner’s proposed claim construction, the evidence relied upon, and the
`
`precise reasons why the claims are unpatentable are provided below. A list of
`
`3
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`FAST FELT 2031, pg. 7
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`Petition for Inter Partes Review of U.S. Patent No. 8,950,161
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`evidence relied upon in support of this petition is set forth in Attachment B.
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`III. Relevant Information Concerning the ’161 Patent
`
`A.
`
`Background of the Technology
`
`1.
`
`The Basic Asphalt Shingle Coated on Both Sides with
`Asphalt and Granules and Applied to a Roof in Courses
`Had Been Known for Decades
`
`Asphalt shingles have been used to cover roofs since the late-1800s. See,
`
`e.g., Ex. 1005, Cash, "Asphalt Roofing Shingles," Proc. 11t5 Conf. Roofing Tech.
`
`(1995) (Cash), at 1; Declaration of Mike Bryson, Ex. 1003 at ¶ 43. By the mid-
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`1990s, three styles predominated: (1) the individual shingle; (2) the strip shingle
`
`(with or without tabs), and (3) the laminated shingle (with or without tabs). Ex.
`
`1005 (Cash), at Figs. 10-12; Ex. 1003 at ¶ 43.
`
`Asphalt is applied to waterproof the shingle. Ex. 1007, Noone, "Asphalt
`
`Shingles - A Century of Success and Improvement," Proc. 11t5 Conf. Roofing
`
`Tech. (1993) (Noone), at 2; Ex. 1003 at ¶ 46. In general, making an asphalt
`
`shingle involves passing a base mat through a coater, where layers of hot asphalt
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`are applied to the top and back surfaces. Ex. 1007 at 2; Ex. 1003 at ¶ 46. Colored
`
`or non-colored granules are then dropped on the front surface and other granular
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`materials are applied to the back. Ex. 1007 at 2, 5; Ex. 1003 at ¶ 46. The granular
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`material on the front adds color and texture while finely ground talc and sand or
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`other granular materials on the back prevent sticking during storage and shipment.
`
`4
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`FAST FELT 2031, pg. 8
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`Petition for Inter Partes Review of U.S. Patent No. 8,950,161
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`Ex. 1007 at 2, 5-6; Ex. 1003 at 1 46.
`
`The basic steps for making an asphalt shingle, including coating both sides
`
`of the base mat (i. e., substrate) with asphalt and then applying granular material on
`
`both sides, have remained the same for decades. Ex. 1003 at 11 46-51. U.S.
`
`Patent No. 2,099,131 (issued in 1937) (.Miller 1937) (Ex. 1008) states:
`
`It has heretofore been common practice to manufacture prepared
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`roofing by saturating a suitable absorbent fabric, such as roofing felt,
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`with a liquid bituminous material, e.g., asphalt, coating botl~ sides of
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`the saturated fabric with a bituminous material, surfacing tlte
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`bituminous coating on one side of tlte fabric witlt mineral grit, such
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`as crushed slate, and applFing mica, soapstone, or otlter anti-stick
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`material to tlte coating on tlte otlter side of tlte fabric.
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`!d. at 4, col. 1:13-24 (emphases added); Ex. 1003 at 1 48.
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`A typical strip shingle includes a plurality of tabs (i. e., flaps) of uniform or
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`varying dimensions that extend downwardly from a headlap area. Ex. 1003 at 11
`
`44-45, 54-55. Each asphalt shingle has a nailing or fastening zone for attachment
`
`to a roof. !d. The 1997 edition of the ARMA Residential Roofing Manual
`
`(ARMA Manual) (Ex. 1009), at 33, Fig. 10 (below), shows the nailing zone
`
`typically is located just above the tabs in the headlap area. Also shown is the
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`generally longitudinal dimensions of the typical strip shingle, i.e., 36"x 12". Ex.
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`1003 at 11 34-36; see id. at 11 52-53.
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`FAST FELT 2031, pg. 9
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`As shown, the nailing zone is (a) generally longitudinal, (b) located between the
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`right and left edges, and (c) intermediate of the upper and lower edges. Id. at ¶ 56.
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`The preamble of claim 1 of the ’ 161 patent provides: "[a]n array of shingles
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`applied to a roof, by fasteners, in courses, each shingle having front and rear
`
`exterior surfaces and being comprised of shingle material, with the shingle having
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`a width defined by upper and lower edges and a length defined by right and left
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`edges." Ex. 1046 at 7:30-34. Elements (a)-(d) of claim 1 require the following:
`
`(a) a base layer of mat having front and rear surfaces;
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`(b) a coating of asphaltic material on both front and rear surfaces of
`
`the mat;
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`(c) coatings of granular material on said both front and rear surfaces
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`of the mat, which, together with said base layer of mat and said
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`coating of asphaltic material comprise a first thickness layer;
`
`(d) a longitudinal fastening zone between right and left shingle edges,
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`generally intermediate said upper and lower edges[.]
`
`Id. at col. 7:35-44. These elements and the preamble describe nothing more than
`
`the basic asphalt shingle applied to a roof in a conventional manner. Ex. 1003 at ¶
`
`57-62. The ’161 patent acknowledges that the "basic" asphalt shingle was known
`
`in the prior art. Ex. 1046 at col. 3:14-17. Fastening this basic asphalt shingle to a
`
`6
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`FAST FELT 2031, pg. 10
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`roof in overlapping layers known as "courses" in the industry--using fasteners
`
`has been "common practice" since at least the 1930s. Ex. 1003 at ¶ 45, 48.
`
`To the basic asphalt shingle, elements (e)-(f) of claim 1 of the ’161 patent
`
`add and describe a "reinforcement second thickness layer":
`
`(e) and an at least partially externally visible generally longitudinal
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`reinforcement second thickness layer of a substantially thinner
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`dimension than said first thickness layer; said reinforcement second
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`thickness layer being adhered to an exterior surface of said shingle
`
`and extending at least substantially between right and left edges of the
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`shingle; and
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`(f) said reinforcement second thickness layer extending lower
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`than the fastening zone, toward the lower edge of the shingle or
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`being at least partially in the fastening zone toward the upper
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`edge of the shingle.
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`Ex. 1046 at col. 7:45-55; see also id. at col. 3:26-28 ("the shingle 20 is similar to
`
`that of the [prior art] shingle 10 of FIG. 1, but with a reinforcement layer").
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`Reinforcement layers having the claimed features were known in the prior art. Ex.
`
`1003 at ¶¶ 79-80;
`
`see also id. at § II.C.3.
`
`o
`
`The Prior Art Disclosed a Generally Longitudinal Second
`Thickness Layer For Reinforcement in the Nailing Zone
`
`U.S. Patent No. 2,161,440 to Venrick (Venrick) describes a "reinforcing
`
`strip" for "strengthening" to "reduce... tear," and to "provide a reinl~orced area
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`for nailing the shingle to the roof." Ex. 1013 (Venrick.), at 3, col. 1:40-46
`
`7
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`FAST FELT 2031, pg. 11
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`(emphasis added); Ex. 1003 at I[ 84.
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`Although the Venrick strip, which may be made of, inter alia, felt, metal, or
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`"layers of roofing tape," Ex. 1013 at 4, col. 2:74-75, can serve an aesthetic
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`purpose, a distinct purpose for the strip is to add "rigidity" to the shingle to
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`"resist[] the action of the wind." Id. at 5, col. 11-9; at 3, col. 1:40-46 ("reinforced
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`area for nailing" "[a]nother object"); Ex. 1003 at I[ 85. "[I]mproved resistance to
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`failure upon bending" is a function of the reinforcement layer in the ’161 patent.
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`Ex. 1046 at col. 6:29-30; Ex. 1003 at I[ 85. The reinforcing strip of Venrick is
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`shown in Fig. 1 as 15 on the front surface of a shingle.
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`Venrick teaches that the reinforcement strip can also be on the
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`"undersurface," or rear surface of the shingle. Ex. 1013 at 4, col. 2:60-63, Figs. 8-
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`14; Ex. 1003 at I[I[ 86-87. The strip is preferably "cemented" onto the granule
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`surfacing, and overlaps with the nailing zone to "give greater nailing strength."
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`Ex. 1013 at4, col. 1:32-37, col. 2:11-23; Ex. 1003 at¶ 87.
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`Figs. 8 and 9 of Venrick show the reinforcement strip 45 as a visible
`
`component that is adhered to the exterior rear surface. Ex. 1003 at ¶ 88. It extends
`
`at least partially into the zone having nailing holes 47, and it also extends lower
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`FAST FELT 2031, pg. 12
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`Petition for Inter Partes Review of U.S. Patent No. 8,950,161
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`than the nailing zone (i. e., into the tab portion toward the lower edge of the
`
`shingle), as shown by the hashed lines. !d.
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`It also extends toward the upper edge
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`into the lower end of the headlap area. !d.
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`It clearly forms a second thickness
`
`layer. !d. The strip is also generally longitudinal as would be expected given that
`
`shingles are generally longitudinal. !d.
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`It was known long before the priority date of the ’l 61 patent that nailing
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`through multiple layers of shingle material provided strength and contributed to
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`roofing integrity. Id. at ¶ 89. E.g., U.S. Patent No. 6,145,265 (Ex. 1011), at col.
`
`1:60-62 ("[N]ailing through a double layer of material provides strength, which is
`
`essential for roofing integrity in windy conditions."). Because the nailing zone
`
`was generally longitudinal, see Ex. 1009 (ARMA Manual), at 33 Fig. 10, it would
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`only make sense to make the reinforcement layer generally longitudinal while
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`extending it at least partially into the nailing zone. Ex. 1003 at ¶ 89. This is what
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`Venrick teaches. Ex. 1013 at 5, col. 1:50-54 ("The shingles are nailed
`
`preferably.., where the raised median strip is .... "); see also id. at 5, col. 1:1-3
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`("the strip ... extends longitudinally thereof’).
`
`Examples of reinforcing layers affixed to the rear surface abound. U.S.
`
`9
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`FAST FELT 2031, pg. 13
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`Petition for Inter Partes Review of U.S. Patent No. 8,950,161
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`Patent No. 4,875,321 (Rohner) (Ex. 1015) discloses a "backing strip" (Fig. 2, 25)
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`that can be made of "light-weight weather-resistant material" to "provide[ ] a
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`stiffer shingle which grips the nails .... " Id. at col. 1:55-59, 2:30-32; Ex. 1003 at
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`¶ 94. Fig. 2 exemplifies a shingle with a reinforcing backing layer 25. Ex. 1003 at
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`¶ 94. Showing an array of shingles, Fig. 3 confirms that the rear facing reinforcing
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`layer 25 extends at least partially into the nailing zone 37. Ex. 1015 (.Rohner); Ex.
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`1003 at ¶ 95. The Rohner "backing strip" forms a second thickness layer on the
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`rear, and is longitudinal like the shingle itself. Ex. 1003 at ¶ 95.
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`Rohner 1989~ Fig. 2
`
`Rohner 1989, ]rig. 3
`
`~IG. 2
`
`FIG.~
`
`Similarly, U.S. Patent No. 5,860,263 (Sieling) (Ex. 1016) shows a
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`"reinforcement" strip 60 affixed to the back portion of an asphalt shingle. Id. at ¶
`
`96. Sieling describes the reinforcing strip as having dimensions which would have
`
`been understood to fall within the nailing zone. Ex. 1016 at col. 3:23-28; Ex. 1003
`
`at ¶ 97. The reinforcing strip in Sieling is on the exterior surface, forms a second
`
`thickness layer, and is longitudinal in orientation. Ex. 1003 at ¶ 97; see id. at §§
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`II.C.3-3.a., V.E.
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`10
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`FAST FELT 2031, pg. 14
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`Petition for Inter Partes Review of U.S. Patent No. 8,950,161
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`FIG.5
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`3. The Prior Art Taught Thin Reinforcement Material
`
`Venrick, Rohner, and Sieling show the concept of using a reinforcing layer
`
`on the back of a shingle was not new. Id. at ¶1 84-89, 94-97; see id. at § II.C.3.a.
`
`Nor was the concept of using thin material for reinforcement. Id.; see id. at
`
`§ II.C.3.b-3.c.
`
`U.S. Patent No. 3,813,280 (Olszyk) (Ex. 1014) shows a web layer 16 affixed
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`to the back of an asphalt shingle. Ex. 1003 at 11 90-91.
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`to-~f F~T
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`A purpose of the web layer is "adding reinforcement ... and providing
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`additional tear strength." Ex. 1014 at col. 4:17-27 (emphases added); Ex. 1003 at
`
`1 91. The thickness of the web is on the order of 1/1000th of an inch. Ex. 1014 at
`
`col. 3:59-60 ("a thickness of between about 10 mils or less to about 30 mils"); Ex.
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`1003 at 11 92-93; see also id. at § V.B.
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`U.S. Patent Publ. No. 2001/0055680 (Kiik) (Ex. 1018) discloses an asphalt
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`roof shingle having a "backing material" that can be made of woven polyester and
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`latex fiber bound by latex. Id. at [0004], [0006]; Ex. 1003 at ¶1 100-01. The
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`exemplary materials have a thickness of 13-23 1/1000t~ of an inch. Ex. 1018 at
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`Table I; Ex. 1003 at I 101. Data in Kiik show the reinforced laminated shingles
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`exhibited improved tear strength and nail pull strength. Ex. 1018 at Tables I, II;
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`Ex. 1003 at I 104. Thus, Kiik showed thin material could be affixed to the back of
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`an asphalt shingle to provide reinforcing properties. Ex. 1003 at 11 102-04.
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`U.S. Patent No. 5,822,943 (Frankoski) (Ex. 1010) issued in 1998. Id. at 1
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`63. The ’161 patent incorporates by reference Frankoski and says the "basic"
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`asphalt shingle can be made according to the teachings ofFrankoski. Ex. 1046 at
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`col. 3:14-17; Ex. 1003 at 11 61-62. As discussed below, Frankoski discloses a
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`scrim--a thin material, preferably 0.37 inches, made from any number of different
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`fabric, synthetic, or composite materials--that serves to reinforce the shingle. Ex.
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`1010 at 3:24-36;. 1003 at 11 69-70. Like Kiik, data in Frankoski evidences that
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`scrim "provides a superior strength and nail pull-through resistance to withstand,
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`for example, hurricane force winds." Id. at col. 3:20-24, 5:64-8:63 (providing nail
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`pull resistance, tensile strength, and tear resistance data); Ex. 1003 at 11 70, 76.
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`4.
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`Laminated Shingles Including Multiple Reinforcement
`Layers Were Known
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`Frankoski (discussed above) discloses a laminated shingle, exemplified by
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`Figs. 1 and 2 of the reference. Ex. 1003 at 11 63-69, 109. A laminated shingle is a
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`shingle made of two layers that are glued together. Id.; see also id. at 11 49-50,
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`59.
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`Fig. 1 of Frankoski shows the shingle comprises an upper layer 5 and a lower
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`layer 7, which are glued together with a sealant 9.
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`Id. at 1 64. The upper layer 5
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`has a headlap area 10 and a number of tabs 35. Id.
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`The lower layer is generally
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`longitudinal, and extends between the right and left edges.
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`Id.
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`It was widely known that gluing an extra shingle layer to the back surface of
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`a single layer strip shingle, as in a laminated shingle, provided reinforcement
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`properties by enabling a roofer to nail through two layers, rather than one layer, of
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`material. Id. at 1 68. U.S. Patent No. 6,145,265 (Malarkey)(Ex. 1011)explains
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`this common-sense principle, noting that "nailing tl~rougl~ a double/a~er of
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`material providesstrengtlt." Id. at col. 1:54-62 (emphasis added); Ex. 1003 at
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`1 68. Laminated shingles, which were among the most popular shingles made and
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`sold by the late 1990s and early 2000s, utilized a second thickness layer of material
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`that was recognized to add reinforcement. Ex. 1003 at 1 68.
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`Fig. 2 of Frankoski (Ex. 1010) shows a scrim layer 60 in the laminated
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`shingle that serves as a reinforcement layer that provides additional strength and
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`support to the shingle. Id. at 11 69-78; Ex. 1010 at 3:20-24, Fig. 2.
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`Frankoski states that the scrim preferably extends the entire length of the
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`shingle. Ex. 1010 at col. 5:27-28. This would be understood to mean the scrim is
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`generally longitudinal given that most shingles were longer than they were wide.
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`Ex. 1003 at ¶ 73. Frankoski states the scrim should "coincide with at least a
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`portion of the nail zone." Ex. 1010 at col. 5:38-39; Ex. 1003 at ¶ 73.
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`As discussed in § III.C.2., in related applications, Patent Owner
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`distinguished the alleged invention over Frankoski by arguing the reinforcing layer
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`is not "embedded" within the shingle as the scrim 60 is in Frankoski; instead it is
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`affixed to the exterior, rear surface of the shingle. At the time these arguments
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`were made, neither Venrick, Rohner, nor Sieling were before the Patent Office. See
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`Ex. 1003 at §§ III.G.-III.H.
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`B. General Overview Of The ’161 Patent
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`The ’l 61 patent, entitled "Shingle With Reinforcement Layer," issued on
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`February 10, 2015, to Kalkanoglu and Koch. Ex. 1046.
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`1.
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`The ’161 Patent Recognizes the Basic Asphalt Shingle Was
`Known
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`The ’ 161 patent acknowledges that the basic components of an asphalt
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`shingle are prior art. Ex. 1046 at col. 2:60-3:17. Referring to Fig. l, the ’161
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`patent describes the "prior art shingle" as being made of a mat covered with
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`asphalt on "each exposed surface" with "granular material" on the upper exposed
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`surface to withstand weather and "smaller granules" on the "undersurface." Id. at
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`col. 2:60-3:3. The ’161 patent states that the "basic" prior art shingle can be made
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`by the methods disclosed in, among other references, Frankoski. !d. at col. 3:14-
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`17; Ex. 1003 at ¶1 61-62.
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`2.
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`Only a Reinforcement Layer Adhered to the Rear Surface
`Of the Shingle Is Disclosed in the ’161 Patent
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`The person of ordinary skill would understand that the reinforcement layer
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`disclosed in the ’ 161 patent is affixed to the rear surface of the asphalt shingle, and
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`nowhere else. Ex. 1003 at § II.A.
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`The specification states: the "present invention is directed toward providing
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`a shingle, wherein a separate, exterior reinforcement layer is provided outside the
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`rear surl~ace of the shingle .... " Ex. 1046 at col. 1:57-61 (emphases added); Ex.
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`1003 at I 135.
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`The figures provided in the ’161 patent show the reinforcement layer to be
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`located only on the rear surface of the shingle. Ex. 1003 at § III.A.2. Fig. 2 shows
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`a prior art shingle with a "reinl~oreement laFer applied to the rear surl~ace thereof,
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`in accordance with the present invention." Ex. 1046 at col. 2:23-25 (emphases
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`added); Ex. 1003 at 11 137-38. Fig. 3 also shows the reinforcement layer on the
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`"rear surface." Ex. 1046 at col. 2:27-29; Ex. 1003 at I 139.
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`The specification consistently emphasizes location of the reinforcement
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`layer on the "rear surface." See, e.g., Ex. 1046, at Figs. 4 and 4A (reinforcement
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`layer 29 on rear surface of shingle); col. 1:58-59 ("reinforcement layer is provided
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`outside tlte rear surface"); col. 3:28-31 ("a reinforcement layer.., added on tlte
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`rear 21 of the shingle"); col. 4:22-23 ("the scrim 46 applied to tlte
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`u ndersurfaee"); col. 6:28-7:22 (extolling p erformance of "scrim reinforcement
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`embedded on tlteir rear sides," a "polyester mat reinforcement layer on tlteir rear
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`surfaces," a heavier "reinforcement layer on tlte rear surface," "fiber glass scrim
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`on tl~e rear surface," and "reinforcement material that is applied to tl~e rear")
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`(emphases added); Ex. 1003 at ¶ 141.
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`Moreover, the specification describes only one method for making the
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`described shingle, and this method places the reinforcement layer on the rear
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`surface; that is again described as being required for the "invention." Ex. 1046 at
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`col. 4:5-12 ("[T]he reinforcement layers 29, 39 may... [be] either embedded in
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`the asphaltic layer on tlte rear of the shingle or adltered to tlte rear of the
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`shingle .... The reinforcement layer 29, 39, will be adltered to tlte rear surface
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`21, 31 of the shingles oftltis invention, by means of any suitable adhesive .... "
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`(emphases added)); Ex. 1003 at ¶ 142. Placement on the rear is also described to
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`be critical to performance. Id. ¶¶ 143-44. For example, Figure 4 illustrates that
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`"the scrim 46 applied to tlte undersurface oftlte sltingle 41 will tend to resist
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`upward bending of the shingle tab portion 44 .... " Ex. 1046 at col. 4:22-24
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`(emphasis added); Ex. 1003 at ¶ 145.
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`3.
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`The Reinforcement Layer Is "Adhered" to the Surface Of
`the Shingle in All the Claims
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`The specification draws a distinction between a reinforcement layer that is
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`"adhered" to the shingle and one that is "embedded": "the reinforcement layers"
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`are "either embedded in the asphaltic layer on the rear of the shingle or adhered to
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`the rear of the shingle .... " Ex. 1046 at col. 4:5-8 (emphases added); Ex. 1003 at
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`¶¶ 147-49.
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`The claims of the ’ 161 patent all require a reinforcement layer that is
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`"adhered" to the shingle. Ex. 1046 at col. 7730-10741. As explained in § III.C.2.,
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`during prosecution of related applications, Patent Owner distinguished Frankoski
`
`because it disclosed an "embedded" reinforcement layer, as oppo