Paper No. 1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Owens Coming,
`Petitioner
`
`go
`
`CertainTeed Corporation,
`Patent Owner
`
`Patent No. 8,959,875
`Issued: February 24, 2015
`Filed: May 22, 2014
`Husnu M. Kalkanoglu and Stephen A. Koch
`
`Inventors:
`
`Title: SHINGLE WITH REINFORCEMENT LAYER
`
`Inter Partes Review No. 2015-01160
`
`PETITION FOR INTER PARTES REVIEW
`
`FAST FELT 2032, pg. 1
`Owens Corning v. Fast Felt
`IPR2015-00650
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,959,875
`
`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 ’875 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 ’875 Patent ................................................ 14
`The ’875 Patent Recognizes the Basic Asphalt
`1.
`Shingle Was Known ................................................................. 15
`2. Only a Reinforcement Layer Adhered to the Rear
`Surface Of the Shingle Is Disclosed in the ’875 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 ’875 Patent ...... 18
`1. Prosecution of the ’875 Patent .................................................. 18
`Prosecution of Related Patent Applications .............................. 19
`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 2032, pg. 2
`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. 8,959,875
`
`IV.
`
`3. Effective Filing Date of the Claims .......................................... 23
`D. Person of Ordinary Skill in the Art ..................................................... 23
`Construction of Terms Used in the Claims ......................................... 24
`E.
`1.
`Elements (a)-(d) of Claim 1 ..................................................... 24
`"shingle" .................................................................................... 25
`2.
`"adhered to an exterior surface of said shingle" ....................... 28
`3.
`"substantially thinner" .............................................................. 31
`4.
`Precise Reasons for Relief Requested ........................................................... 32
`A. Venrick 1939 (Ex. 1013) in View of Frankoski 1998
`(Ex. 1010) Renders Obvious Claims 1-23 .......................................... 33
`1.
`Venrick In View Of Frankoski Renders Obvious Claim 1 ....... 33
`2.
`Venrick In View Of Frankoski Renders Obvious Claim 12 ..... 40
`3.
`Venrick In View Of Frankoski Renders Obvious Claims
`6 and 13 ..................................................................................... 41
`Venrick In View Of Frankoski Renders Obvious Claim 7
`and 15 ........................................................................................ 42
`Venrick In View Of Frankoski Renders Obvious Claim 19 ..... 42
`Venrick In View Of Frankoski Renders Obvious Claim 22 ..... 44
`Venrick In View Of Frankoski Renders Obvious Claims
`8 and 23 ..................................................................................... 44
`Venrick In View Of Frankoski Renders Obvious Claims
`2,5,9, 11, 16, 17, and 20 .......................................................... 44
`9. Venrick In View Of Frankoski Renders Obvious Claims
`3, 4, 14, and 21 .......................................................................... 46
`10. Venrick In View Of Frankoski Renders Obvious Claims
`10 and 18 ................................................................................... 46
`Venrick 1939 (Ex. 1013) in View of Kiik 2001 (Ex. 1018)
`Renders Obvious Claims 1-23 ............................................................. 47
`Venrick In View Of Kiik Renders Obvious Claim 1 ................ 47
`Venrick In View Of Kiik Renders Obvious Claim 12 .............. 51
`Venrick In View Of Kiik Renders Obvious Claims 6
`and 13 ........................................................................................ 52
`Venrick In View Of Kiik Renders Obvious Claims 7
`and 15 ........................................................................................ 52
`Venrick In View Of Kiik Renders Obvious Claim 19 .............. 53
`
`4.
`
`5.
`6.
`7.
`
`8.
`
`B.
`
`o
`
`o
`
`ii
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`FAST FELT 2032, pg. 3
`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. 8,959,875
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`8.
`
`6.
`7.
`
`Venrick In View Of Kiik Renders Obvious Claim 22 .............. 54
`Venrick In View Of Kiik Renders Obvious Claims 8
`and 23 ........................................................................................ 55
`Venrick In View Of Kiik Renders Obvious Claims 2,
`5, 9, 11, 16, 17, and 20 .............................................................. 55
`9. Venrick In View Of Kiik Renders Obvious Claims 3,
`4, 14, and 21 .............................................................................. 57
`10. Venrick In View Of Kiik Renders Obvious Claims 10
`and 18 ........................................................................................ 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 2032, pg. 4
`Owens Corning v. Fast Felt
`IPR2015-00650
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`

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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. 8,959,875 ("the ’875 patent") (Ex. 1048). Neither
`
`Petitioner, nor any party in privity with Petitioner: (i) has filed a civil action
`
`challenging the validity of any claim of the ’875 patent; or (ii) has been served a
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`complaint alleging infringement of the ’875 patent more than one year prior to the
`
`present date. Also, the ’875 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 ’875 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,
`
`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
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`’875 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,
`
`IPR2014-00680, Paper No. 1 l(Sept. 29, 2014) at 22; Conopco, Inc. v. Proctor &
`
`Gamble Co., IPR2013-00505, Paper No. 9 (Feb. 12, 2014) at 6.
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`FAST FELT 2032, pg. 5
`Owens Corning v. Fast Felt
`IPR2015-00650
`
`

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`Petition for Inter Partes Review of U.S. Patent No. 8,959,875
`
`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 ’875 patent is not subject to any litigation, but patents related to the ’875
`
`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 ’875 patent is related by
`
`continuation, are also the subject of petitions for interpartes review filed on
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`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 ’875
`
`patent are also the subject of interpartes review proceedings, IPR Nos. 2015-
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`01159 and 2015-01161, which are filed concurrently with the instant petition.
`
`The subject matter of the ’875 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 ’875 patent, as explained
`
`2
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`FAST FELT 2032, 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. 8,959,875
`
`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))
`
`Claims 1-23 of the ’875 patent are unpatentable. Specifically:
`
`(1) Claims 1-23 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
`
`of U.S. Patent No. 5,822,943 to Frankoski (Frankoski) (Ex. 1010).
`
`(2) Claims 1-23 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 2032, pg. 7
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`IPR2015-00650
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`Petition for Inter Partes Review of U.S. Patent No. 8,959,875
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`evidence relied upon in support of this petition is set forth in Attachment B.
`
`III. Relevant Information Concerning the ’87g 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-
`
`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
`
`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
`
`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 2032, pg. 8
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`Petition for Inter Partes Review of U.S. Patent No. 8,959,875
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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
`
`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, surl~aeing tlte
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`bituminous coating on one side ol~tlte l~abrie witlt mineral grit, such
`
`as crushed slate, and applFing mica, soapstone, or otlter anti-stick
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`material to tlte coating on tlte otlter side ol~tlte l~abrie.
`
`!d. at 4, col. 1:13-24 (emphases added); Ex. 1003 at I 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 52-53, 54-56.
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`FAST FELT 2032, pg. 9
`Owens Corning v. Fast Felt
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,959,875
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`Area]
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`As shown, the nailing zone is (a) generally longitudinal, (b) located between
`
`the right and left edges, and (c) intermediate of the upper and lower edges. Ex.
`
`1003 at ¶ 56.
`
`The preamble of claim 1 of the ’875 patent provides: ’°[a]n array of shingles
`
`applied to a roof, by fasteners, in courses, each shingle having front and rear
`
`exterior surfaces and being comprised of shingle material, with the shingle having
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`a width defined by upper and lower edges and a length defined by right and left
`
`edges." Ex. 1048 at 7:30-34. Elements (a)-(d) of claim 1 require the following:
`
`(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;
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`(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;
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`(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
`
`6
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`FAST FELT 2032, pg. 10
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`IPR2015-00650
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`Petition for Inter Partes Review of U.S. Patent No. 8,959,875
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`¶1 57-60. The ’875 patent acknowledges that the "basic" asphalt shingle was
`
`known in the prior art. Ex. 1048 at col. 3:14-17. Fastening this basic asphalt
`
`shingle to a roof in overlapping layers--known as "courses" in the industry--using
`
`fasteners has been "common practice" since at least the 1930s. Ex. 1003 at 11 45,
`
`58.
`
`To the basic asphalt shingle, element (e) of claim 1 of the ’875 patent adds
`
`and describes 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
`
`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
`
`shingle.
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`Ex. 1048 at col. 7:45-51; 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").
`
`Reinforcement layers having the claimed features were known in the prior art. Ex.
`
`1003 at 11 79-80; see also id. at § II.C.3.
`
`2.
`
`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
`
`for nailing the shingle to the roof." Ex. 1013 (Venrick.), at 3, col. 1:40-46
`
`7
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`FAST FELT 2032, pg. 11
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`Petition for Inter Partes Review of U.S. Patent No. 8,959,875
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`(emphasis added); Ex. 1003 at 1 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. 140-46 ("reinforced
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`area for nailing" "[a]nother object"); Ex. 1003 at 1 85. "[I]mproved resistance to
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`failure upon bending" is a function of the reinforcement layer in the ’875 patent.
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`Ex. 1048 at col. 6:29-30; Ex. 1003 at 1 85. The reinforcing strip of Venrick is
`
`shown in Fig. 1 as 15 on the front surface of a shingle.
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`,~
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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 11 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 at1 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 1 88. It extends
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`at least partially into the zone having nailing holes 47, and it also extends lower
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`FAST FELT 2032, pg. 12
`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. 8,959,875
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`than the nailing zone (i. e., into the tab portion toward the lower edge of the
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`shingle), as shown by the hashed lines. Id. at ¶ 88. It also extends toward the
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`upper edge into the lower end of the headlap area. Id. It clearly forms a second
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`thickness layer. Id. The strip is also generally longitudinal as would be expected
`
`given that shingles are generally longitudinal. Id.
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`It was known long before the priority date of the ’875 patent that nailing
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`through multiple layers of shingle material provided strength and contributed to
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`roofing integrity. Ex. 1003 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
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`zone was generally longitudinal, see Ex. 1009 (ARMA Manual), at 33 Fig. 10, it
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`would only make sense to make the reinforcement layer generally longitudinal
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`while extending it at least partially into the nailing zone. Ex. 1003 at ¶ 89. This is
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`what 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’).
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`Examples of reinforcing layers affixed to the rear surface abound. U.S.
`
`9
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`FAST FELT 2032, pg. 13
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`IPR2015-00650
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`Petition for Inter Partes Review of U.S. Patent No. 8,959,875
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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 stiffer
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`shingle which grips the nails .... " Id. at col. 1:55-59, 2:30-32; Ex. 1003 at ¶ 94.
`
`Fig. 2 exemplifies a shingle with a reinforcing backing layer 25. !d. Showing an
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`array of shingles, Fig. 3 confirms that the rear facing reinforcing layer 25 extends
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`at least partially into the nailing zone 37. Ex. 1015 (Rohner); Ex. 1003 at ¶ 95.
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`The Rohner "backing strip" forms a second thickness layer on the rear, and is
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`longitudinal like the shingle itself. Ex. 1003 at ¶ 95.
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`Rohner 1989~ Fig. 2
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`Rohner 1989~ Fig. 3
`
`FIG. 5
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`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.
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`1003 at ¶ 97. The reinforcing strip in Sieling is on the exterior surface, forms a
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`second thickness layer, and is longitudinal in orientation. Ex. 1003 at ¶ 97; see
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`also id. at §§ II.C.3-II.C.3.a., V.E.
`
`10
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`FAST FELT 2032, pg. 14
`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. 8,959,875
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`FIG.5
`
`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 ¶¶ 84-89, 94-97; see generally id. at §
`
`II.C.3.a. Nor was the concept of using thin material for reinforcement. Id.; see
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`$enerally M. at ~ II.C.3.b-3.c.
`
`U.S. Patent No. 3~813~80 ~Ols~vk) (Ex. 1014) shows a web layer 16 affixed
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`to the back of an asphalt shingle. Ex. 1003 at ~ 90-91.
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`20
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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; Ex. 1003 at ¶ 91. The
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`thickness of the web is on the order of 1/1000t~ of an inch. Ex. 1014 at col. 3:59-
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`60 (’Ca thickness of between about 10 mils or less to about 30 mils"); Ex. 1003 at
`
`¶¶ 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
`
`11
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`FAST FELT 2032, pg. 15
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`Petition for Inter Partes Review of U.S. Patent No. 8,959,875
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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
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`1 63. The ’875 patent incorporates by reference Frankoski and says the "basic"
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`asphalt shingle can be made according to the teachings of Frankoski. Ex. 1048 at
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`col. 3:14-17; Ex. 1003 at 11 69-70. As discussed in detail below, Frankoski
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`discloses a scrim a thin material, preferably 0.37 inches, made from any number
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`of different fabric, synthetic, or composite materials--that serves to reinforce the
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`shingle. Ex. 1010 at 3:24-36. Like Kiik, data in Frankoski evidences that scrim
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`"provides a superior strength and nail pull-through resistance to withstand, for
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`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 Frankoski. Ex. 1003 at 11 63-69, 109. A laminated shingle is a
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`Petition for Inter Partes Review of U.S. Patent No. 8,959,875
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`shingle made of two layers that are glued together. !d. Fig. 1 of Frankoski shows
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`the shingle comprises an upper layer 5 and a lower layer 7, which are glued
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`together with a sealant 9.
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`Id. at 1 64. The upper layer 5 has a headlap area 10 and
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`a number of tabs 35. !d.
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`The lower layer is generally longitudinal, and extends
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`between the right and left edges. !d.
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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 tltrouglt a double la~er ol~
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`materialprovides strengtlt." Id. at col. 1:54-62 (emphasis added); Ex. 1003 at 1
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`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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`Further, Fig. 2 of Frankoski (Ex. 1010) shows a scrim layer 60 in the
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`laminated shingle that serves as a reinforcement layer that provides additional
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`strength and support to the shingle. Id. at 11 69-70; Ex. 1010 at col. 3:20-24, Fig.
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`13
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`IPR2015-00650
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`Petition for Inter Partes Review of U.S. Patent No. 8,959,875
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`o
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`70
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`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.
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`See generally Ex. 1003 at §§ III.G-III.H.
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`B. General Overview Of The ’875 Patent
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`The ’ 875 patent, entitled "Shingle With Reinforcement Layer," issued on
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`February 24, 2015, to Kalkanoglu and Koch. Ex. 1048.
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`Petition for Inter Partes Review of U.S. Patent No. 8,959,875
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`1.
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`The ’875 Patent Recognizes the Basic Asphalt Shingle Was
`Known
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`The ’875 patent acknowledges that the basic components of an asphalt
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`shingle are prior art. Ex. 1048 at col. 2:60-3:17. Referring to Fig. 1, the ’875
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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 ’875 patent states that the "basic" prior art shingle can be made
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`by the methods disclosed in, among other references, Frankoski. Id. at col. 3:14-
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`17; Ex. 1003 at ¶¶ 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 ’875 Patent
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`The person of ordinary skill would understand that the reinforcement layer
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`disclosed in the ’875 patent is affixed to the rear surface of the asphalt shingle, and
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`nowhere else. Ex. 1003 at § III.A.2.
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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. 1048 at col. 1:57-61 (emphases added); Ex.
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`1003 at ¶¶ 135, 160.
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`The figures provided in the ’875 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; id. at ¶ 160.
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`Petition for Inter Partes Review of U.S. Patent No. 8,959,875
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`Fig. 2 shows a prior art shingle with a "reinforcement laFer applied to tlte rear
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`surl~aee thereof, in accordance witlt tlte present invention." Ex. 1048 at col. 2:23-
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`25 (emphases added); Ex. 1003 at ¶1 137-38, 160. Fig. 3 also shows the
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`reinforcement layer on the "rear surface." Ex. 1048 at col. 2:27-29; Ex. 1003 at
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`11 139, 160.
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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. 1048, 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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`undersurface"); col. 6:28-7:24 (extolling performance 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 tlte rear surface," and "reinforcement material that is applied to tlte rear")
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`(emphases added); Ex. 1003 at 11 141,160.
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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. 1048 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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`Petition for Inter Partes Review of U.S. Patent No. 8,959,875
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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 ol~tltis invention, by means of any suitable adhesive .... "
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`(emphases added)); Ex. 1003 at ¶1 142, 160. Placement on the rear is also
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`described to be critical to performance. Id. at 11 143-144, 160. For example,
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`Figure 4 illustrates that "the scrim 46 applied to tlte undersurl~aee ol~tlte sltingle
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`41 will tend to resist upward bending of the shingle tab portion 44 .... " Ex. 1048 at
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`col. 4:22-24 (emphasis added); Ex. 1003 at 11 145, 160.
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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 "eitlter embedded in the asphaltic layer on the rear of the shingle or adltered to
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`the rear of the shingle .... " Ex. 1048 at col. 4:5-8 (emphasis added); Ex. 1003 at
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`11 147-49, 160.
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`The claims of the ’875 patent all require a reinforcement layer that is
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`"adhered" to the shingle. Ex. 1048 at col. 7:30-10:28. As explained in § III.C.2.,
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`during prosecution of related applications, Patent Owner distinguished Frankoski
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`because it disclosed an "embedded" reinforcement layer, as opposed to one
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`adhered to an external, rear surface of the shingle. See infra a