Case: 3:14-cv-00803-DAK Doc #: 23 Filed: 08/05/14 1 of 19. PagelD #: 118
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF OHIO
`WESTERN DIVISION (Toledo)
`
`CASE NO.: 3:14-CV-00803
`
`JUDGE: David A. Katz
`
`FAST FELT CORPORATION,
`
`Plaintiff,
`
`VS.
`
`OWENS CORNING and OWENS
`CORNING ROOFING AND ASPHALT,
`LLC,
`
`Defendants.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`DEFENDANT OWENS CORNING AND DEFENDANT OWENS CORNING ROOFING
`AND ASPHALT, LLC’S AMENDED ANSWER, AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS TO PLAINTIFF’S COMPLAINT FOR PATENT INFRINGEMENT
`
`Defendant Owens Coming and Defendant Owens Coming Roofing and Asphalt, LLC
`
`(collectively "Defendants"), by and through their undersigned counsel, for their Answer,
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`Affirmative Defenses, and Counterclaims to Plaintiff Fast Felt Corporation’s ("Plaintiff")
`
`Complaint for Patent Infringement ("Complaint") avers as follows:
`
`A. FastFelt
`
`THE PARTIES
`
`1.
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`Defendants are without information or knowledge sufficient to form a belief as to
`
`the truth of the averments of Paragraph 1 of the Complaint, and therefore deny the same.
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`2.
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`Defendants are without information or knowledge sufficient to form a belief as to
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`the truth of the averments of Paragraph 2 of the Complaint, and therefore deny the same.
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`3.
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`Defendants are without information or knowledge sufficient to form a belief as to
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`the truth of the averments of Paragraph 3 of the Complaint, and therefore deny the same.
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`{02618883.DOC;3 }
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`FAST FELT 2034, pg. 1
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`Case: 3:14-cv-00803-DAK Doc #: 23 Filed: 08/05/14 2 of 19. PagelD #: 119
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`4.
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`Defendants are without information or knowledge sufficient to form a belief as to
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`the truth of the averments of Paragraph 4 of the Complaint, and therefore deny the same.
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`B. Owens Corning
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`5.
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`6.
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`7.
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`Defendants admit the averments of Paragraph 5 of the Complaint.
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`Defendants admit the averments of Paragraph 6 of the Complaint.
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`Defendants admit that Owens Coming Roofing and Asphalt, LLC manufactures
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`roofing cover materials that include at least one shingle product with a polymer nail
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`reinforcement material. Owens Coming Roofing and Asphalt, LLC sells products that include
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`this nail reinforcement material under the trademark SureNail®. One product manufactured by
`
`Owens Coming Roofing and Asphalt, LLC that uses the SureNail® nail reinforcement material
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`is the Duration® Series Shingles. One product manufactured by Owens Coming Roofing and
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`Asphalt, LLC that previously used the SureNail® nail reinforcement material was the Oakridge®
`
`Pro Series Shingles. Defendants deny the remainder of the averments of Paragraph 7 of the
`
`Complaint.
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`8.
`
`Defendants admit that the Duration® Series Shingles are manufactured in Ohio.
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`Defendants deny the remainder of the averments of Paragraph 8 of the Complaint.
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`JURISDICTION AND VENUE
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`9.
`
`Defendants deny the averments in Paragraph 9 of the Complaint to the extent that
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`the averments may imply or suggest that Plaintiff has a valid claim against Defendants for patent
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`infringement. Defendants admit that the Patent Laws of the United States as set forth in Title 35
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`of the United States Code form the basis under which Plaintiff filed its Complaint. Defendants
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`admit that the Court has subj ect matter jurisdiction over this action pursuant to 28 U.S.C. § § 1331
`
`and 1338(a).
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`{02618883.DOC;3}
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`FAST FELT 2034, pg. 2
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`Case: 3:14-cv-00803-DAK Doc#: 23 Filed: 08/05/14 3 of 19. PagelD#: 120
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`10. Defendants admit that each Defendant has a principal place of business in this
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`district and has conducted business in this district. Defendants deny that either Defendant has
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`committed acts of infringement in this district.
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`11. Defendants admit that venue is proper in this district pursuant to 28 United States
`
`Code § § 1391 (b)-(c) and 1400(b). Defendants deny that either Defendant has committed acts of
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`infringement in this district.
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`DEFENDANTS’ ALLEGED INFRINGEMENT OF THE PATENT-IN-SUIT
`
`A. The Patent-in-Suit
`
`12. Defendants admit that United States Patent No. 8,137,575 (the "Fast Felt ’757
`
`Patent") was issued on March 20, 2012. Defendants admit that a copy of the Fast Felt ’757
`
`Patent was attached as Exhibit A to the Complaint. Defendants deny the remainder of the
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`averments of Paragraph 12 of the Complaint.
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`13. Defendants are without information or knowledge sufficient to form a belief as to
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`the truth of the averments of Paragraph 13 of the Complaint, and therefore deny the same.
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`14.
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`15.
`
`16.
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`Defendants admit the averments of Paragraph 14 of the Complaint.
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`Defendants admit the averments of Paragraph 15 of the Complaint.
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`Defendants admit that 35 U.S.C. §282 states that U.S. patents are presumed to be
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`valid and enforceable. Defendants deny the remainder of the averments of Paragraph 16 of the
`
`Complaint.
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`B. Owens Corning "SureNail®"
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`17. Defendants admit that Owens Coming Roofing and Asphalt, LLC manufactures
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`and sells asphalt-based roofing covering materials which are commonly installed on the roofs of
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`homes or other buildings. Defendants admit that typically these roofing cover materials are
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`{02618883.DOC;3 }
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`FAST FELT 2034, pg. 3
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`Case: 3:14-cv-00803-DAK Doc #: 23 Filed: 08/05/14 4 of 19. PagelD #: 121
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`constructed of a substrate material, consisting of fiber: typically (a) paper and wood (organic
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`fibers) or (b) glass (inorganic) fibers made into an extended sheet, which is then saturated or
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`coated with asphalt.
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`Defendants deny the remainder of the averments of Paragraph 17 of the
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`Complaint.
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`18. Defendants admit that Owens Corning Roofing and Asphalt, LLC manufactures
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`roofing cover materials that include at least one shingle product with a polymer nail
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`reinforcement material. Owens Corning Roofing and Asphalt, LLC sells products that include
`
`this nail reinforcement material under the trademark SureNail®. Defendants deny the remainder
`
`of the averments of Paragraph 18 of the Complaint.
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`19.
`
`20.
`
`21.
`
`Defendants admit the averments of Paragraph 19 of the Complaint.
`
`Defendants admit the averments of Paragraph 20 of the Complaint.
`
`Defendants admit the averments of Paragraph 21 of the Complaint.
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`C. Owens Cornin~’s Later Filed Patents Describe Its SureNail® Roof Shin~les and the
`Method of Manufacture
`
`Defendants admit at least one of its roof shingle products are covered by at least one claim of its
`
`Filed Patents.
`
`Defendants deny the remainder of the averments contained in the Heading C of
`
`the Complaint.
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`22.
`
`23.
`
`24.
`
`25.
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`Defendants admit the averments of Paragraph 22 of the Complaint.
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`Defendants admit the averments of Paragraph 23 of the Complaint.
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`Defendants deny the averments of Paragraph 24 of the Complaint.
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`Defendants admit that roofing shingles that include "SureNail®" that are
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`manufactured by Owens Corning Roofing and Asphalt, LLC are covered by the claims of the
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`’654 Patent. Defendants deny the remainder of the averments of Paragraph 25 of the Complaint.
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`26. Defendants deny the averments of Paragraph 26 of the Complaint.
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`{02618883.DOC;3}
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`4
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`FAST FELT 2034, pg. 4
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`Case: 3:14-cv-00803-DAK Doc#: 23 Filed: 08/05/14 5 of 19. PagelD#: 122
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`27. Defendants admit that roofing shingles that include "SureNail®" that are
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`manufactured by Owens Coming Roofing and Asphalt, LLC are covered by the claims of the
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`’654 Patent. Defendants deny the remainder of the averments of Paragraph 27 of the Complaint.
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`28.
`
`29.
`
`30.
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`31.
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`32.
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`33.
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`Defendants admit the averments of Paragraph 28 of the Complaint.
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`Defendants admit the averments of Paragraph 29 of the Complaint.
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`Defendants deny the averments of Paragraph 30 of the Complaint.
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`Defendants deny the averments of Paragraph 31 of the Complaint.
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`Defendants admit the averments of Paragraph 32 of the Complaint.
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`Defendants admit the ’983 Patent states "during shingle production, the woven or
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`non-woven fabric may be pushed into the hot, filled-asphalt coating, such that come of the filled-
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`asphalt bleeds up and around the individual fibers and fiber bundles of fabric. This creates a
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`positive bond between the fabric and the shingle substrate." (Col. 4, lns. 49-54). Defendants
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`deny the remainder of the averments of Paragraph 33 of the Complaint.
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`D. "SureNail®" Infringes the Fast Felt ’757 Patent
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`1. Claims 1 and 7
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`34. Defendants admit that Owens Coming Roofing and Asphalt, LLC’s roof shingles
`
`that include "SureNail®" are roofing or building cover materials. Defendants deny the
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`remainder of the averments of Paragraph 34 of the Complaint.
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`35. Defendants deny the averments of Paragraph 35 of the Complaint.
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`36.
`
`Defendants
`
`deny the averments of Paragraph 36 of the Complaint.
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`37.
`
`Defendants
`
`deny the averments of Paragraph 37 of the Complaint.
`
`38.
`
`Defendants
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`deny the averments of Paragraph 38 of the Complaint.
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`39.
`
`Defendants
`
`deny the averments of Paragraph 39 of the Complaint.
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`{02618883.DOC;3 }
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`FAST FELT 2034, pg. 5
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`Case: 3:14-cv-00803-DAK Doc#: 23 Filed: 08/05/14 6 of 19. PagelD#: 123
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`40.
`
`41.
`
`42.
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`Defendants deny the averments of Paragraph 40 of the Complaint.
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`Defendants deny the averments of Paragraph 41 of the Complaint.
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`Defendants deny the averments of Paragraph 42 of the Complaint.
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`2. Claim 2
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`43.
`
`44.
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`Defendants deny the averments of Paragraph 43 of the Complaint.
`
`Defendants admit that the ’654 Patent states that "the tape 19 is formed from a
`
`polyester ... [or] a polyolefin, such as polypropylene or polyethylene." (Col. 3, lns. 61-64).
`
`Defendants deny the remainder of the averments of Paragraph 44 of the Complaint.
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`3. Claim 4
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`45.
`
`46.
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`Defendants deny the averments of Paragraph 45 of the Complaint.
`
`Defendants admit that the ’654 Patent states that "A continuous strip of
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`reinforcement material or tape 19 ..." (Col. 3, lns. 53-4). Defendants deny the remainder of the
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`averments of Paragraph 46 of the Complaint.
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`4. Claim 6
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`47.
`
`48.
`
`Defendants deny the averments of Paragraph 47 of the Complaint.
`
`Defendants deny the averments of Paragraph 48 of the Complaint.
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`E. Alle~ations of Infringement
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`49. Defendants admit that Owens Coming Roofing and Asphalt, LLC has been and is
`
`now making, using, selling, offering for sale within the United States, and/or importing into the
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`United States products, including roofing cover products such as the Duration® Series Shingles
`
`with "SureNail®." Defendants admit that Owens Coming Roofing and Asphalt, LLC previous
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`made, used, sold, offered for sale within the United States, and/or imported into the United States
`
`products, including roofing cover products such as the Oakridge® Pro Series Shingles with
`
`{02618883.DOC;3 }
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`FAST FELT 2034, pg. 6
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`Case: 3:14-cv-00803-DAK Doc #: 23 Filed: 08/05/14 7 of 19. PagelD #: 124
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`"SureNail®."
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`Defendants deny the remainder of the averments of Paragraph 49 of the
`
`Complaint.
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`50.
`
`51.
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`52.
`
`53.
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`Defendants deny the averments of Paragraph 50 of the Complaint.
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`Defendants deny the averments of Paragraph 51 of the Complaint.
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`Defendants deny the averments of Paragraph 52 of the Complaint.
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`Defendants are without information or knowledge sufficient to form a belief as to
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`the truth of the averments of Paragraph 53 of the Complaint, and therefore deny the same.
`
`54.
`
`55
`
`56.
`
`57.
`
`Defendant admits the averments of 54 of the Complaint.
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`Defendants deny the averments of Paragraph 56 of the Complaint.
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`Defendants deny the averments of Paragraph 56 of the Complaint.
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`Defendants deny the averments of Paragraph 57 of the Complaint.
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`AFFIRMATIVE DEFENSES
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`58.
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`Defendants hereby assert the following defenses to the claims and averments
`
`contained in the Complaint, without admitting that Defendants bear the burden of proof as to any
`
`of them. Defendants reserves the right to assert additional defenses and/or supplement existing
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`defenses based upon information learned or developed through discovery, trial or otherwise,
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`including but not limited to the defenses of inequitable conduct, patent misuse, and unclean
`
`hands.
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`FIRST DEFENSE
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`59. Plaintiff’s claims for direct infringement of Fast Felt ’757 Patent fail to state a
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`claim upon which relief can be granted.
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`{02618883.DOC;3 }
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`FAST FELT 2034, pg. 7
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`SECOND DEFENSE
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`60.
`
`The claims of the Fast Felt ’757 Patent are invalid for failing to meet one or more
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`of the conditions for patentability set forth in the patent statute,
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`including but not limited to 35
`
`U.S.C. {}{} 102, 103, and 112.
`
`61. On information and belief, based on a preliminary analysis, and to the extent that
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`the asserted claims of the ’757 Patent are understood, such claims are invalid as being anticipated
`
`and/or rendered
`
`obvious by at least U.S. Patent Nos. 6,341,462 ("Kiik") and 6,228,785
`
`("Miller").
`
`62.
`
`Kiik and Miller each disclose a method of making a roofing or building cover
`
`material, which comprises treating an extended length of substrate, as required by the preamble
`
`of claim 1 of the ’757 Patent. (See, e.g., Kiik, 2:3-23 and Miller, Figures 1-3, 3:21-4:67).
`
`63. Kiik and Miller each disclose depositing tab material onto the surface of the
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`roofing or building cover material at a plurality of nail tabs from a lamination roll, as required by
`
`claim 1 of the ’757 Patent. (See, e.g., Kiik, 2:3-51 and Miller, Figures 1-3, 3:21-4:67).
`
`64. Kiik and Miller each disclose the tab material bonding to the surface of the
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`roofing or building cover material by pressure between the roll and the surface, as required by
`
`claim 1 of the ’757 Patent. (Id.).
`
`65. Kiik and Miller each disclose that the tab material is substantially a polymer
`
`material, as required by claim 2 of the ’757 Patent. (See, e.g., Kiik, 1:32-41 and Miller, 6:51-59).
`
`66. Kiik and Miller each disclose that the nail tabs are formed in a continuous strip, as
`
`required by claim 4 of the ’757 Patent. (See, e.g., Kiik, 2:24-51 and Miller, Figures 1-3, 4:14-
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`37).
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`{02618883.DOC;3 }
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`FAST FELT 2034, pg. 8
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`67. Kiik and Miller each disclose that the tab material is pre-formed before contact
`
`with the lamination roll, as required by claim 6 of the ’757 Patent. (See, e.g., Kiik, 1:61-2:17 and
`
`Miller, Figures 1-3, 4:14-37).
`
`68. Kiik and Miller each disclose a method of making a roofing or building cover
`
`material, as required by the preamble of claim 7 of the ’757 Patent. (See, e.g., Kiik, 2:3-23 and
`
`Miller, Figures 1-3, 3:21-4:67).
`
`69. Kiik and Miller each disclose first depositing nail tab material that is substantially
`
`made of a polymeric material at a plurality of locations on the roofing or building cover material,
`
`as required by claim 7 of the ’757 Patent. (See, e.g., Kiik, 1:32-41, 2:3-51 and Miller, Figures 1-
`
`3, 3:21-4:67, 6:51-59).
`
`70. Kiik and Miller each disclose subsequently pressure adhering the nail tab material
`
`into nail tabs on the roofing or building cover material with a pressure roll, as required by claim
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`7 of the ’757 Patent. (See, e.g., Kiik, 2:3-51 and Miller, Figures 1-3, 3:21-4:67).
`
`71. On information and belief, based on a preliminary analysis, and to the extent that
`
`the asserted claims of the ’757 Patent are understood, such claims are invalid as being rendered
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`obvious by at least U.S. Patent No. 6,451,409 ("Lassiter") in combination with either U.S. Patent
`
`No. 5,101,759 ("Hefele") or U.S. Patent No. 6,875,710 ("Eaton").
`
`72. Lassiter discloses a method of making a roofing or building cover material, which
`
`comprises treating an extended length of substrate, as required by the preamble of claim 1 of the
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`’757 Patent. (See, e.g., Lassiter, Figure 1, 4:50-6:15 and ’757 Patent Prosecution History, Office
`
`Action dated 12/28/2010, ¶10).
`
`73. Lassiter discloses depositing tab material onto the surface of the roofing or
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`building cover material at a plurality of nail tabs, as required by claim 1 of the ’757 Patent. (Id.)
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`{02618883.DOC;3 }
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`FAST FELT 2034, pg. 9
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`Case: 3:14-cv-00803-DAK Doc #: 23 Filed: 08/05/14 10 of 19. PagelD #: 127
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`74.
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`Lassiter discloses the tab material bonding to the surface of the roofing or
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`building cover material, as required by claim 1 of the ’757 Patent. (Id.).
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`75. Hefele and Eaton each disclose treating an extended length of substrate,
`
`as
`
`required by the preamble of claim 1 of the ’757 Patent. (See, e.g., Hefele,
`
`Figure 1, 3:18-4:5 and
`
`Eaton,
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`Figures 11-11C and 25, 2:16-30, 14:19-16:37, 22:43-62.).
`
`76.
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`Hefele and Eaton each disclose depositing material onto the surface of the
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`substrate at a plurality of locations from a lamination roll, as required by claim 1 of the ’757
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`Patent. (Id.).
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`77. Hefele and Eaton each disclose the material bonding to the surface of the
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`substrate by pressure between the roll and the surface, as required by claim 1 of the ’757 Patent.
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`78. Lassiter discloses that the tab material is substantially a polymer material, as
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`required by claim 2 of the ’757 Patent. (See, e.g., Lassiter, 5:19-38.).
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`79. Hefele and Eaton each disclose that the material is substantially a polymer
`
`material, as required by claim 2 of the ’757 Patent.
`
`(See, e.g., Hefele, 2:47-52 and Eaton, 8:54-
`
`9:48.).
`
`80.
`
`Lassiter discloses that the nail tabs are formed in a continuous strip, as required
`
`by claim 4 of the ’757 Patent. (See, e.g., Lassiter, Figures 2-4, 6:44-7:23.).
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`81. Hefele and Eaton each disclose that the material is formed as a continuous strip,
`
`as required by claim 4 of the ’757 Patent. (See, e.g., Hefele, 3:60-64 and Eaton, Figures 13-18,
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`18:37-19:57.).
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`{02618883.DOC;3 }
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`FAST FELT 2034, pg. 10
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`Case: 3:14-cv-00803-DAK Doc #: 23 Filed: 08/05/14 11 of 19. PagelD #: 128
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`82. Hefele and Eaton each disclose that the material is pre-formed before contact with
`
`the lamination roll, as required by claim 6 of the ’757 Patent. (See, e.g., Hefele, Figure 1, 3:18-
`
`4:5 and Eaton, Figures 11-11C and 25, 2:16-30, 14:19-16:37, 22:43-62.).
`
`83. Lassiter discloses a method of making a roofing or building cover material, as
`
`required by the preamble of claim 7 of the ’757 Patent. (See, e.g., Lassiter, Figure 1, 4:50-6:15,
`
`5:19-38 and ’757 Patent Prosecution History, Office Action dated 12/28/2010, ¶ 10).
`
`84. Lassiter discloses depositing nail tab material that is substantially made of a
`
`polymeric material at a plurality of locations on the roofing or building cover material, as
`
`required by claim 7 of the ’757 Patent. (Id.).
`
`85. Hefele and Eaton each disclose first depositing material that is substantially made
`
`of a polymeric material at a plurality of locations on a substrate, as required by claim 7 of the
`
`’757 Patent. (See, e.g., Hefele, Figure 1, 2:47-52, 3:18-4:5 and Eaton, Figures ll-llC and 25,
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`2:16-30, 8:54-9:48, 14:19-16:37, 22:43-62.).
`
`86. Hefele and Eaton each disclose subsequently pressure adhering the material onto
`
`the substrate with a pressure roll, as required by claim 7 of the ’757 Patent. (Id.).
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`87. It would be obvious to one of ordinary skill in the art to modify Lassiter to include
`
`Hefele or Eaton’s polymer deposition process because to do so would be a simple substitution of
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`one well known polymer deposition technique for another to obtain predictable results. (See,
`
`e.g., ’757 Patent Prosecution History, Office Action dated 12/28/2010, ¶ 10 and amendment dated
`
`06/06/2011).
`
`88. The claims of the ’757 Patent are also invalid under 35 U.S.C. §112 at least on the
`
`basis of indefiniteness and/or lack of written description/enablement.
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`{02618883.DOC;3 }
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`FAST FELT 2034, pg. 11
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`Case: 3:14-cv-00803-DAK Doc #: 23 Filed: 08/05/14 12 of 19. PagelD #: 129
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`89. No support is found in the ’757 Patent specification for the claimed limitation
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`"depositing tab material onto the surface of said roofing or building cover material at a plurality
`
`of nail tabs from a lamination roll" (claim 1). Nowhere does the ’757 Patent specification
`
`disclose (1) depositing tab material at a plurality of nail tabs or (2) from a lamination roll as
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`claimed.
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`90.
`
`No support is found in the ’757 Patent specification for the claimed limitation
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`"subsequently pressure adhering said nail tab material into nail tabs on said roofing or building
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`cover material with a pressure roll" (claim 7). Nowhere does the ’757 Patent specification
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`disclose (1) pressure adhering nail tab material into nail tabs on the roofing or building cover
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`material as claimed or (2) first depositing nail tab material and subsequently pressure adhering
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`the nail tab material.
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`91. Discovery has not commenced in this action and the court has not provided a
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`claim construction order and Owens Coming reserves the right to assert additional grounds of
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`invalidity in this matter, but the exemplary grounds for invalidity provided herein demonstrate
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`Owens Corning’s entitlement to a judgment in its favor.
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`THIRD DEFENSE
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`92.
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`Defendants are not and have not directly infringed any valid claim of the Fast Felt
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`’757 Patent.
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`FOURTH DEFENSE
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`93. By reason of statements and/or claim amendments made by or on behalf of the
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`applicants during the prosecution of the applications that led to the issuance of the Fast Felt ’757
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`Patent, Plaintiff is estopped from asserting a scope for the claims of the Fast Felt ’575 Patent that
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`would cover the accused products.
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`{02618883.DOC;3 }
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`12
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`FAST FELT 2034, pg. 12
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`IPR2015-00650
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`Case: 3:14-cv-00803-DAK Doc #: 23 Filed: 08/05/14 13 of 19. PagelD #: 130
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`FIFTH DEFENSE
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`94. Upon information and belief, some or all of Plaintiff s claims are barred, in whole
`
`or in part, by the statute of limitations.
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`SIXTH DEFENSE
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`95. Upon information and belief, some or all of PlaintifFs claims are barred, in whole
`
`or in part, by the doctrines of laches or equitable estopppel.
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`SIXTH DEFENSE
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`96. Upon information and belief, Plaintiff is barred by the equitable doctrine of
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`unclean hands from seeking the relief requested in the Complaint.
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`EIGHTH DEFENSE
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`97.
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`Fast Felts’s claims for patent infringement are barred, in whole or in part, by 35
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`U.S.C. § 287(a).
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`COUNTERCLAIMS
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`Defendants/Counterclaimants Owens Corning and Owens Corning Roofing and Asphalt,
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`LLC (collectively "Owens Coming"), by and through their undersigned counsel, hereby brings
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`the following counterclaims against Plaintiff/Counterclaim Defendant Fast Felt Corporation and
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`avers as follows:
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`I. PARTIES
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`1.
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`Owens Coming is a Delaware corporation with a principal place of business at
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`One Owens Coming Parkway, Toledo, Ohio 43659.
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`2.
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`Owens Coming Roofing and Asphalt, LLC
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`is a Delaware limited liability
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`company with a principal place of business at One Owens
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`Corning Parkway, Toledo, Ohio
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`43659.
`
`{02618883.DOC;3 }
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`13
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`FAST FELT 2034, pg. 13
`Owens Corning v. Fast Felt
`IPR2015-00650
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`

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`Case: 3:14-cv-00803-DAK Doc #: 23 Filed: 08/05/14 14 of 19. PagelD #: 131
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`3.
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`Upon information and belief, Fast Felt is a Texas corporation having a principal
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`place of business located at 11302 Memorial Drive, Houston, Texas 77024.
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`II. JURISDICTION AND VENUE
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`4.
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`This Court has subject matter jurisdiction over these counterclaims pursuant to 28
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`U.S.C. §§ 1331, 1338, and 2201. This is an action under the Patent Laws of the United States 35
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`U.S.C. §§ 1-376, which provide for original jurisdiction in actions arising under the Patent Act.
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`5.
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`Fast Felt is subject to the personal jurisdiction of this Court, including without
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`limitation because it has availed itself of the protection of this judicial district by bringing the
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`present action against Owens Coming here.
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`6.
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`Venue exists in this judicial district pursuant to 28 U.S.C. § 1391.
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`COUNT I
`(Declaratory Judgment of Non-Infringement)
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`7.
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`Owens Corning repeats and incorporates by reference the averments of
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`Paragraphs 1 through 6 of its Counterclaims as if fully set forth herein.
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`8.
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`In this action, Air Vent asserts that Owens Corning is directly infringing and has
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`directly infringed U.S. Patent No. 8,137,757 ("the ’757 Patent).
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`9.
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`Owens Coming is not directly infringing and has not directly infringed any valid
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`claim of the ’757 Patent.
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`10. An actual controversy exists between Fast Felt and Owens Coming regarding
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`direct infringement of the ’ 757 Patent.
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`11. Owens Coming is entitled to a declaratory judgment that it is not directly
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`infringing and has not directly infringed any valid claim of the ’575 Patent.
`
`{02618883.DOC;3 }
`
`14
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`FAST FELT 2034, pg. 14
`Owens Corning v. Fast Felt
`IPR2015-00650
`
`

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`Case: 3:14-cv-00803-DAK Doc #: 23 Filed: 08/05/14 15 of 19. PagelD #: 132
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`12. Upon information and belief, absent a declaration of non-infringement by the
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`Court, Fast Felt has and will continue to wrongfully assert the ’757 Patent against Owens
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`Coming, thereby causing Owens Coming irreparable injury and damage.
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`13. This is an exceptional case under 35 U.S.C. § 285 justifying an award of
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`attorneys’ fees to Owens Coming.
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`COUNT II
`(Declaratory Judgment of Invalidity)
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`14. Owens Corning repeats and incorporates by reference the averments of
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`Paragraphs 1 through 6 of its Counterclaims as if fully set forth herein.
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`15. In this action, Fast Felt asserts that Owens Corning is directly infringing and has
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`directly infringed the ’757 Patent.
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`16. The claims of the ’757 Patent are invalid for failing to meet one or more of the
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`conditions for patentability set forth in the patent statute, including but not limited to 35 U.S.C.
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`§§ 102, 103, and 112.
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`17. Specifically, Owens Corning incorporates by reference Paragraphs 60-91 of
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`Owens Corning’s Second Defense, which provide exemplary reasons why the claims of the ’757
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`Patent are invalid for failure to comply with the requirements of the patent laws of the United
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`States, including, but not limited to, 35 U.S.C. §§ 102, 103, and 112.
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`18. An actual controversy exists between Fast Felt and Owens Coming regarding the
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`validity of the claims of the ’757 Patent.
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`19. Owens Corning is entitled to a declaratory judgment that the claims of the ’757
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`Patent are invalid.
`
`{02618883.DOC;3 }
`
`15
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`FAST FELT 2034, pg. 15
`Owens Corning v. Fast Felt
`IPR2015-00650
`
`

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`Case: 3:14-cv-00803-DAK Doc #: 23 Filed: 08/05/14 16 of 19. PagelD #: 133
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`20. Upon information and belief, absent a declaration of invalidity by the Court, Fast
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`Felt has and will continue to wrongfully assert the ’757 Patent against Owens Coming, thereby
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`causing Owens Coming irreparable injury and damage.
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`21. This is an exceptional case under 35 U.S.C. § 285 justifying an award of
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`attorneys’ fees to Owens Coming
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`22. Discovery has not commenced in this action and Owens Coming reserves the
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`right to assert additional grounds of invalidity in this matter, but the exemplary grounds for
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`invalidity provided in Paragraphs 60-91 of Owens Corning’s Second Defense and incorporated
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`herein by reference demonstrate Owens Corning’s entitlement to the declaratory relief it seeks.
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`DEMAND FOR JUDGMENT
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`Wherefore Defendants/Counterclaimants Owens Coming and Owens Coming Roofing
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`and Asphalt, LLC respectfully requests the Court enter judgment in its favor and Fast Felt on
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`both Fast Felt’s Complaint and Owens Corning’s Counterclaims as follows:
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`That Fast Felt’s Complaint be dismissed with prejudice and that Fast Felt takes
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`nothing;
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`B.
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`That judgment be entered declaring that Owens Corning and Owens Corning
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`Roofing and Asphalt, LLC are not and have not directly infringed any valid claim of the ’757
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`Patent;
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`C.
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`D.
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`That judgment be entered declaring the claims of the ’757 Patent to be invalid;
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`That this Court enjoin Fast Felt, its officers, agents, servants, employees,
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`attorneys, representatives, distributors, and all other persons in active concert or participation
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`with Fast Felt from stating, implying or otherwise communication to others that Owens Coming
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`and Owens Coming Roofing and Asphalt, LLC’s roofing products infringe the ’757 Patent.
`
`{02618883.DOC;3 }
`
`16
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`FAST FELT 2034, pg. 16
`Owens Corning v. Fast Felt
`IPR2015-00650
`
`

`
`Case: 3:14-cv-00803-DAK Doc #: 23 Filed: 08/05/14 17 of 19. PagelD #: 134
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`E.
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`That this case be declared exceptional within the meaning of 35 U.S.C. § 285 and
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`awarding Owens Corning and Owens Corning Roofing and Asphalt, LLC their expenses and
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`attorneys’ fees incurred in this action;
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`F.
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`That Owens Corning and Owens Corning Roofing and Asphalt, LLC be awarded
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`their costs incurred in this action; and
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`G.
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`That Owens Corning and Owens Corning Roofing and Asphalt, LLC be awarded
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`any other relief this Court deems just and proper.
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`August5,2014
`
`Respectfully submitted,
`/s/Nenad Peiic
`Nenad Pejic (Ohio Bar No. 0066347)
`npeiic@calfee.com
`Jennifer B. Wick (Ohio Bar No. 0074340)
`iwick@calfee.com
`Mark W. McDougall (Ohio Bar No. 0080698)
`mmcdougall@calfee, com
`Calfee, Halter & Griswold, LLP
`1405 East Sixth Street
`Cleveland, OH 44114
`Tel. (216) 622-8200/Fax (216) 241-0816
`
`Attorneys for Defendants/Counterclaimants Owens
`Corning and Owens Corning Roofing and Asphalt
`LLC
`
`{02618883.DOC;3 }
`
`17
`
`FAST FELT 2034, pg. 17
`Owens Corning v. Fast Felt
`IPR2015-00650
`
`

`
`Case: 3:14-cv-00803-DAK Doc #: 23 Filed: 08/05/14 18 of 19. PagelD #: 135
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`DEFENDANTS’ DEMAND FOR A JURY TRIAL
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`Pursuant to Federal Rule of Civil Procedure 38(b), Defendants/Counterclaimants Owens
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`Corning and Owens Corning Roofing and Asphalt, LLC hereby request a jury trial on all issues
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`so triable.
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`August5,2014
`
`/s/Nenad Peiic
`Nenad Pejic (Ohio Bar No. 0066347)
`npejic@calfee.com
`Jennifer B. Wick (Ohio Bar No. 0074340)
`iwick@calfee.com
`Mark W. McDougall (Ohio Bar No. 0080698)
`mmcdougall@calfee, com
`Calfee, Halter & Griswold, LLP
`1405 East Sixth Street
`Cleveland, OH 44114
`Tel. (216) 622-8200/Fax (216) 241-0816
`
`Attorneys for Defendants/Counterclaimants Owens
`Corning and Owens Corning Roofing and Asphalt
`LLC
`
`{02618883.DOC;3 }
`
`18
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`FAST FELT 2034, pg. 18
`Owens Corning v. Fast Felt
`IPR2015-00650
`
`

`
`Case: 3:14-cv-00803-DAK Doc #: 23 Filed: 08/05/14 19 of 19. PagelD #: 136
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 5, 2014, a copy of the foregoing was filed electronically.
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`Notice of this filing will be sent by operation of the Court’s electronic filing system to all parties
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`indicated on the electronic filing receipt, and parties may access this filing through the Court’s
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`system.
`
`/s/ Nenad Pejic
`One of the Attorneys for
`Defendants/Counterclaimants Owens Corning and
`Owens Corning Roofing and Asphalt LLC
`
`{02618883.DOC;3 }
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`19
`
`FAST FELT 2034, pg. 19
`Owens Corning v. Fast Felt
`IPR2015-00650