IPR2015-00650
`Patent Owner’s Response
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________________________________
`
`OWENS CORNING,
`Petitioner
`
`v.
`
`FAST FELT CORPORATION,
`Patent Owner
`
`Case IPR2015-00650
`Patent 8,137,757 B2
`
`FAST FELT CORPORATION’S PATENT OWNER RESPONSE
`UNDER 37 C.F.R. § 42.120
`
`
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`
`TABLE OF CONTENTS
`
`Introduction - A Full Record Shows Petitioner Cannot Meet Its
`Burden............................................................................................................. 1
`
`I.
`
`II. Nail Tabs for Reinforcing Roofing Cover Materials .................................. 3
`
`A. Non-Integral, Manually-Applied Tabs to Reinforce Nails in
`Roofing Cover Materials .................................................................... 4
`
`B.
`
`C.
`
`Integral Tabs Were Introduced by Lassiter ‘709 and Lassiter
`‘409 But Were Not Approved For Use by Building Codes .............. 7
`
`The 2 Collins Parent Print-Related Patents and the Collins ‘757
`Non-Print, Lamination Patent Made Integrated Tabs Strong
`Enough to Meet and Be Approved for Use by the Toughest U.S.
`Building Codes ..................................................................................... 9
`
`III. The Level of Ordinary Skill in the Art Requires Experience with
`Roofing Materials Such as Heavily Asphalt Coated Substrates and
`Reinforcement of Such Materials ............................................................... 13
`
`IV. Petitioner’s “Printing” Expert is Not Even One of Ordinary Skill in
`the Art to Which the ‘757 Patent Relates, i.e., Reinforcement of
`Roofing Cover Materials, and Misunderstands the ‘757 Patent ............. 16
`
`V. Claim Construction Is Unnecessary as Petitioner’s “Non-Roofing”
`Expert Admits Misunderstanding the Claim Term “Roofing or
`Building Cover Material” and Lacks a Proper Understanding of
`“Nail Tab” .................................................................................................... 18
`
`A. As Now Admitted by Petitioner’s Expert and Contrary to the
`Petition, “Paper” is Not a “Roofing or Building Cover
`Material” ............................................................................................ 19
`
`B.
`
`Contrary to Petitioner Expert’s Misunderstanding as Espoused
`at His Deposition, a Nail Tab Cannot Simply Be a Painted
`Circle But Instead Must Provide Reinforcement ........................... 21
`
`
`
`i
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`VI. Claims 1, 2, 4, and 6-7 Would Not Have Been Prima Facie Obvious
`Because the Asserted Combinations Would Not Work and Are Not
`Proper Combinations .................................................................................. 26
`
`A.
`
`Lassiter ‘409 Combined with Hefele Would Not Work ................ 28
`
`1.
`
`2.
`
`3.
`
`4.
`
`a
`in
`“Powder Agglomerates”
`Hefele Transfers
`Punctiform Coating Which Cannot Function As a Nail
`Tab ............................................................................................ 31
`
`Hefele’s Open Polymer Supply Would Render the
`Process Non-Functional When Substituted in Lassiter ....... 32
`
`the
`Hefele Expressly Precludes Modifications and
`Required Temperatures and Temperature Relationships
`between Critical Elements Would Render Hefele Raster
`Coating Process Non-Functional with a Heavily Asphalt
`Coated Substrate Web ............................................................ 33
`
`Contrary to Independent Claims 1 and 7, Hefele
`Expressly Does Not Pressure Bond or Pressure Adhere its
`Powder Agglomerate .............................................................. 35
`
`B.
`
`Lassiter ‘409 Combined with Bayer Would Not Work ................. 37
`
`1.
`
`2.
`
`3.
`
`4.
`
`Bayer Does Not Apply to Asphalt As Confirmed In
`Prosecution .............................................................................. 38
`
`Bayer Cannot Make a Nail Tab ............................................. 39
`
`Bayer’s Open Adhesive Supply Dish Would Render the
`Process Non-Functional When Substituted in Lassiter ....... 42
`
`Contrary to Independent Claims 1 and 7, Bayer Does Not
`Pressure Bond or Pressure Adhere ....................................... 43
`
`C.
`
`Lassiter ‘409 Combined with Eaton Would Not Work ................. 44
`
`1.
`
`Asphalt Substrates Cannot Be Employed with Eaton’s
`Teachings as Eaton Teaches Away from a Heavily
`Asphalt Coated Substrate as a Suitable Web ....................... 45
`
`
`
`ii
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`
`2.
`
`3.
`
`Eaton Cannot Make a Nail Tab ............................................. 46
`
`Eaton’s Open Polymer Supply Would Immediately
`Render the Process Non-Functional When Substituted in
`Lassiter ..................................................................................... 47
`
`D.
`
`Lassiter ‘409 Teaches Away and Would Not Lead the Skilled
`Artisan to Hefele, Bayer or Eaton ................................................... 48
`
`E. Hefele, Bayer and Eaton Would Not Lead the Skilled Artisan to
`Lassiter ‘409 ....................................................................................... 53
`
`VII. Petitioner Failed to Show Independent Claim 1 is Obvious .................... 54
`
`VIII. Petitioner Fails to Show Independent Claim 7 Is Obvious ...................... 54
`
`IX. Petitioner Fails to Show That It Would Have Been Obvious to
`Employ Tab Material that is Pre-formed as Recited in Dependent
`Claim 6 .......................................................................................................... 57
`
`X. Conclusion - Petitioner Has Not Met Its Burden ...................................... 59
`
`
`
`
`
`iii
`
`

`
`
`
`I.
`
`Introduction - A Full Record Shows Petitioner Cannot Meet Its Burden
`
`Without competing evidence to the contrary, the Board had to rely on
`
`Petitioner’s repeated assertions that “paper is a roofing or building cover material”
`
`and institute trial. Specifically, on the record before it the Board accepted
`
`Petitioner’s assertion that the primary Lassiter ‘409 reference (pertaining to a non-
`
`contact, nozzle-based formation of nail tabs on heavily asphalt coated roofing
`
`material) combined with the Hefele, Bayer, or Eaton secondary references
`
`(pertaining to contact applications involving “clean” paper-like or textile-like, non-
`
`asphalt, non- heavily coated substrates) was “a simple substitution.”
`
`A heavily asphalt coated roofing or building materials manufacturing line, in
`
`which nail tabs are pressed into the heavy asphalt coating, entails significant
`
`critical operating features which must be evaluated to support a decision to
`
`substitute a contact for a non-contact deposition process. (Ex. 2004 Bohan Decl.
`
`¶¶44-48). It is not a simple matter to substitute any contact polymer deposition
`
`process and expect success or even a predictable result. In this matter, significant
`
`critical features cannot be modified because they are operative components of the
`
`finished product and if modified will prove fatal to a predictable result conclusion
`
`or successful solution.
`
`In this regard, Petitioner fails to provide reliable expert testimony and proper
`
`references. First, Petitioner’s “printing” expert has been forced to admit that:
`
`1
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`
`(1) Paper is not a “roofing or building cover material” (Ex. 2005, p.34 of
`
`depo.);
`
`(2) He does not understand a primary purpose of a “nail tab”, i.e.,
`
`reinforcement, and instead acknowledges “that an individual involved in the
`
`manufacture of the roofing material can answer that question.” (Ex. 2005, p.27 of
`
`depo.); and
`
`(3) He could not identify a single reference that referred to any type of
`
`“printing on asphalt” (Ex. 2005, p. 10, 12, 14 of depo.) and does not understand
`
`roofing cover materials. These admissions cripple Petitioner’s obviousness
`
`allegations and undermine any reliance on its expert - the sole basis of the Petition.
`
`Second, improper secondary references are provided. The claimed invention
`
`pertains to methods of “making a roofing or building cover material” such as heavy
`
`asphalt coated substrates (not clean, oil and contaminant free, paper-like or thin
`
`textile-like substrates taught as suitable for use in the secondary references). The
`
`heavy asphalt coated substrates of the ‘757 method have reinforcing, pressure
`
`applied nail tabs (not thin, surficial, non-reinforcing polymer layers on a paper-like
`
`or textile-like substrates as in the secondary references). Therefore, Petitioner’s
`
`obviousness assertions cannot withstand scrutiny when they are viewed in light of
`
`the admissions of its own expert and the complete record. Indeed, consideration of
`
`2
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`
`all of the evidence and a complete record reveals that Petitioner has failed to meet
`
`its burden to show obviousness.
`
`II. Nail Tabs for Reinforcing Roofing Cover Materials
`
`It appears from the various deficiencies in the Petition that a general
`
`discussion of nail tabs, roofing cover materials, and the ‘757 Patent may be
`
`beneficial. Roofs are typically covered by installing weather or water resistant
`
`materials, i.e., roofing or building cover materials, to the roof deck by overlapping
`
`individual layers. In North America the predominant roofing cover materials are
`
`heavily asphalt coated materials manufactured in web-based processes, e.g., from
`
`large diameter rolls of substrate materials. A fast moving, heavily asphalt coated
`
`web is common to both the manufacture of underlayment rolls and shingle
`
`materials, each of which is a roofing cover material layer in the ‘757 Patent. (Ex.
`
`1001, col. 1, lines 35-51). Typically, the web, after cooling, is cut into rolls to
`
`make the first roofing cover material layer, e.g., the underlayment. Usually each
`
`roll is rounded with a dimension of, for example, 3-feet wide by 70 to 200 feet
`
`long. At a jobsite, an underlayment roll is unwound, cut and affixed directly to the
`
`roof deck. (Ex. 2003, Todd Decl. ¶¶43-44).
`
`When making shingles, the second layer of cover material, the heavily
`
`asphalt coated substrate web will usually have rock granules deposited onto it. The
`
`granules are deposited onto, and pressed into, the heavy asphalt coating before it
`
`3
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`
`completely cools and usually while the asphalt coating is hot, soft and tacky. Once
`
`cooled, the granule-topped and asphalt coated substrate web may then be cut into
`
`individual shingles. Each shingle is roughly 1-foot wide by 3-feet long. The
`
`shingles will be installed as the second and top, weather-facing layer on the
`
`building’s roof as stated in the ‘757 Patent. (Ex. 1001, col. 1, lines 42-44 and Ex.
`
`2003 Todd Decl., ¶45).
`
`Installing overlapping rows of underlayment in the first layer and
`
`overlapping individual shingles in the second layer usually requires thousands of
`
`nails or more depending upon the roof size. Typically, a full roll of underlayment
`
`could use 300 roofing nails or more while each shingle could use five or more nails
`
`to adequately secure it to the roof deck. (See, e.g., Ex. 2001, “Product Details”,
`
`pp. 2-3 and Ex. 2013, Owens Corning on-line shingle installation instructions).
`
`A. Non-Integral, Manually-Applied Tabs to Reinforce Nails in Roofing
`Cover Materials
`
`Historically, roofing nails with large heads were used to securely install the
`
`heavily asphalt coated substrates. The large nail heads assisted the roofing cover
`
`material in resisting tear through when subjected to wind or other adverse weather
`
`conditions. As an alternative to large nail heads, which cannot be used with
`
`conventional power equipment, large washers or tabs were sometimes separately
`
`installed beneath the nail head on the roofing or building cover material. (See, e.g.,
`
`Ex. 1003, Lassiter ‘409 col. 2, lines 2-3). These reinforcing tabs which were not
`
`4
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`
`integral with the asphalt coated roof covering and sometimes referred to as “discs”
`
`or “tin caps” when metal, became mandatory in building codes in some areas such
`
`as Miami-Dade County, South Florida and other U.S. coastal areas subsequent to
`
`the massive rebuilding after Hurricane Andrew. (Ex. 2002 and Ex. 2003 Todd
`
`Decl., ¶¶49-50).
`
`The reinforcing “tin caps” or tabs described above were manually placed
`
`onto the roofing or building cover material during installation and prior to the
`
`installer securing these materials to the roof deck or building panel. To secure the
`
`materials, nails or staples would be driven through the caps, through the weather or
`
`water proofing materials, and into the roof deck or building panel. The caps or
`
`tabs were necessarily much larger than either the head of a nail or the top of a
`
`staple so as to slow or stop the head of a nail (or the top of a staple) from pulling
`
`through these materials after their installation. (Ex. 2003 Todd Decl., ¶¶49-50).
`
`Certain prior art describes these tabs as follows:
`
`• U.S. Patent No. 4,624,721 – Sadler et al, 1986:
`“We have invented a simple but unique reinforcing (styrene)
`roofing tab for use in securing stapled roofing paper …” (Ex. 2017,
`col. 1, lines 59-60).
`• U.S. Patent No. 5,067,865 – Zylka et al, 1991:
`“Essentially, the staples or nails are driven through these tabs or
`discs such that the upper part of the inverted U-shaped staple, or
`the head of a nail, contact the top of the disc or tab surface while
`
`5
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`
`the legs of the staple or the shank of the nail protrude through the
`tab, through the tar paper or other generally waterproof building
`cover, and into the underlying plywood or other type of solid roof
`structure.” (Ex. 2018 col. 1, lines 21-28).
`• U.S. Patent No. 6,021,616 – Mayle, 2000:
`“A fastener is driven through the tab and into the roofing substrate
`thereby securely attaching the material to the roof.” (Ex. 2019,
`col. 1, lines 21–23)
`• U.S. Patent No. 6,550,660 B1 – Chlebowski et al, 2003:
`“One known way of improving a staple’s fastening effectiveness is
`to increase the staple’s effective holding area by first driving the
`staple through a narrow strip of high tensile strength material such
`as plastic or metal. (Ex. 2020, col. 2, lines 33-36). This narrow
`strip of plastic or metal, commonly referred to as a tab, has
`substantially more surface area in contact with stapled material
`than a staple would alone. Consequently, a staple used in
`conjunction with a tab is significantly more effective as a fastener,
`so much more …” (Ex. 2020, col. 2, lines 40-44). “The relatively
`large area of the tab prevents the roofing felt from tearing away
`from the roof substrate even in windy conditions.” (Ex. 2020, col.
`2, lines 59-61).
`• U.S. Patent No. 4,641,472 – Young et al, 1987:
`“A fastener for securing built-up roofing membranes used to
`waterproof … combines the conventional nail used for this purpose
`having a head and a shank portion … with a non-integral tab
`penetrated by the shank of the nail and of a larger diameter than
`the nail head …” (Ex. 2021, Abstract).
`
`6
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`• U.S. Patent No. 6,109,474 – Haugen, 2000:
`“Roofing nails are relatively short, broad headed nails. Staples, if
`employed, are of the type having a U-shape providing a relatively
`broad central member which bears against the article being
`fastened in a manner corresponding to that provided by the broad
`head of a roofing nail.” (Ex. 2022, col. 1, lines 18-23) “When the
`roofing nail or staple is driven through the tab, a correspondingly
`greater area of the roof is securely engaged by the combined nail
`… and … tab. The benefit of this process is similar in principal to
`that provided by placing a large flat washer beneath the head of a
`bolt or nail.” (Ex. 2022, col. 1, lines 33-37).
`Integral Tabs Were Introduced by Lassiter ‘709 and Lassiter ‘409 But
`Were Not Approved For Use by Building Codes
`
`B.
`
`A precursor patent to the primary Lassiter ‘409 reference, which is at issue
`
`here and labeled Exhibit 1003, was another Lassiter patent, which is labeled as
`
`Exhibit 1010 (Lassiter ‘709). This precursor Lassiter ‘709 patent, Exhibit 1010,
`
`sought to replace the historically used, non-integral tabs, for example metal or
`
`plastic tabs, discs, or caps, with integral (incorporated into the substrate)
`
`reinforcing tabs of plastic or other materials in part due to the tendency of metal
`
`caps to cause injuries to roofers and consumers due to their sharp edges and barbs.”
`
`(Ex. 1010, col. 2, line 9). The precursor Lassiter ‘709 patent did so by simply
`
`gluing on each reinforcing tab. (Ex. 1010, col. 2, lines 58-61). Finding that
`
`adhering individual tabs was grossly inefficient, Lassiter sought a way to integrate
`
`7
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`
`the addition of nail tabs into the manufacturing line of asphalt saturated felt and
`
`that integration effort resulted in the Lassiter ‘409 primary reference at issue here.
`
`(Ex. 1003).
`
`Specifically, the Lassiter ‘409 primary reference dispensed polymer tab
`
`material onto the hot asphalt saturated felt in the manufacturing line area 18
`
`located immediately after the application of hot asphalt to substrate 14 and prior to
`
`the cooling or free looper 34. (Ex. 1003, Fig. 1). Importantly, Lassiter ‘409
`
`disclosed only being able to do this so long as (1) the tab was solid before leaving
`
`the line area 18 (Ex. 1003, col. 5, lines 45-46) and (2) equipment was employed
`
`that allowed the tabs to pass through “without being subject to possible scraping
`
`action.” (Ex. 1003, col. 6, lines 5-7). That is, Lassiter repeatedly cautioned against
`
`any contact with the tab material prior to the web’s entry into the cooling or free
`
`looper 34. (Ex. 1003, col. 5, lines 44-46 and col. 6, lines 4-8).
`
`Unfortunately, these tabs resided on the surface of the asphalt coating and
`
`could be easily peeled off. Based upon these shortcomings of the Lassiter ‘409
`
`nail tabs and the development of tougher U.S. building codes, inventive processes
`
`were developed which led to the Collins ‘757 Patent (Ex. 1001) at issue here and
`
`its parent patents: the Collins ‘498 (Ex. 1018) and the Collins ‘946 (Ex. 1019)
`
`patents.
`
`8
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`C. The 2 Collins Parent Print-Related Patents and the Collins ‘757 Non-
`Print, Lamination Patent Made Integrated Tabs Strong Enough to Meet
`and Be Approved for Use by the Toughest U.S. Building Codes
`
`The Collins ‘757 Patent is related to two provisional patent applications, No.
`
`60/474,194 filed May 29, 2003 and No. 60/485,774 filed July 9, 2003, both titled
`
`“Machine and Method for Applying Thermoplastics or Adhesives to Roofing
`
`Materials with Nail Tabs”. (Ex. 1001, col. 1, lines 14-19).
`
`The 2003 provisional patent applications disclose at least two inventions.
`
`INVENTION ONE:
`
`“It is an advantage of the present invention to
`
`provide a gravure printing or offset printing process …” (Ex. 1001, Col. 2, lines
`
`64-67). The claims of this gravure printing or offset printing process invention are
`
`not contested in this IPR and are in the following issued U.S. patents: U.S. Patent
`
`No. 7,666,498 (Ex. 1018); U.S. Patent No. 7,201,946 (Ex. 1019); and are included
`
`as an additional step in dependent Claim 5 of the Collins ‘757 Patent (Ex. 1001).
`
`Despite Petitioner’s view of the entirety of the ‘757 patent as somehow print-
`
`related, ONLY dependent Claim 5 of the Collins ‘757 Patent remotely relates to
`
`printing in that it specifies using an engraved pattern print roll as part of Claim 1’s
`
`lamination process, which lamination process is well-known to NOT be a print
`
`process. (Ex. 2004 Bohan Decl., ¶61).
`
`INVENTION TWO:
`
`“It is another advantage of the present invention to
`
`provide a lamination process for the deposition of polymer material to form nail
`
`9
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`
`tab or continuous strips on underlayment or other roofing material.” (Ex. 1001,
`
`Col. 3, lines 1-4). The method claims of this process invention are in the Collins
`
`‘757 Patent. Claims Nos. 1, 2, 4, 6, and 7 of the Collins ‘757 Patent that are the
`
`subject of this Inter Partes Review (“IPR”).
`
`The Collins ‘757 Patent, like the Lassiter primary reference1, allows one to
`
`integrate the addition of nail tabs into the manufacturing of asphalt coated roofing
`
`or building cover materials.2 The specification common to the Collins ‘757 Patent
`
`and its parent patents, describes a number of alternative embodiments to make
`
`heavily asphalt coated roofing materials with reinforcing nail tabs as a replacement
`
`
`1 Both Lassiter patents pertain to underlayment nail reinforcement tabs while the
`
`Collins ‘757 Patent pertains to nail reinforcement for both underlayments and
`
`shingles. (Ex. 1001, col. 6 line 65 – col. 7 line 4 and col. 7 lines 27-32).
`
`2 For example, the first step of Claim 1 of the ‘757 Patent -- “treating an extended
`
`length of substrate” --
`
`involves
`
`impregnating, saturating, or otherwise
`
`surrounding the mat fibers with asphalt as stated in the specification. (Ex. 1001,
`
`col. 7, lines 50-54). Similarly, the Lassiter ‘409 Patent teaches “First, the dry felt
`
`material undergoes treatment in conventional fashion to produce asphalt saturated
`
`felt material from the dry felt material.” (Ex. 1003-Lassiter ‘409, col. 3, lines 30-
`
`32).
`
`10
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`
`for prior art “roofing nails with large heads” or “washers” to resist tear through.
`
`(Ex. 1001, col. 2, lines 44-63). In express contravention of Lassiter’s warnings
`
`against contact with the tab material in the nail tab production area 18, which is the
`
`manufacturing line area located immediately after the hot asphalt treatment area 14
`
`(Ex. 1003, Fig. 1, and col. 5, lines 9-11), each of the alternatives described in the
`
`common specification involves using direct pressure for bonding or adhering the
`
`nail tab. For example, the claims of the first Collins parent patent (INVENTION
`
`ONE) pertained to a method of depositing material in a liquid state using an
`
`engraved pattern print roll (Ex. 1019, Collins ‘946 p.18). The second Collins
`
`parent patent covered products made in that manner (Ex. 1018, Collins ‘498 p.18).
`
`These parent patents were the first reference ever to employ an inventively
`
`modified,3 gravure-like methodology to manufacture heavily asphalt coated
`
`substrates with nail tabs. Practicing any of the above three Collins patents’
`
`methods enables a nail tab to be formed or applied during the manufacture of
`
`
`3 The conventional gravure methodology was modified in many respects but
`
`perhaps most importantly used engraved indentations with a closed polymer
`
`pressurized supply in order to supply adequate volumes of material to the heavily
`
`asphalt coated substrate without contamination. (See, e.g., Ex. 1001, Fig. 7B and
`
`col. 7, lines 5-8 and col. 8, lines 33-47 and col. 11, lines 7-44).
`
`11
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`
`asphalt roofing or building cover materials. These nail tabs have met and been
`
`approved for use by the toughest U.S. building codes for securing asphalt roofing
`
`material. (Ex. 2002).
`
`Unlike its two parent patents, the instant ‘757 independent claims are not
`
`directed to depositing liquid material or using an engraved pattern print roll in a
`
`modified, gravure-like methodology.4 Instead, the ‘757 claims are directed to
`
`methods of “making a roofing or building cover material” that require either (1)
`
`“depositing tab material …from a lamination roll” and bonding by pressure (Claim
`
`1) or (2) “first depositing nail tab material” and then “pressure adhering said nail
`
`tab material into nail tabs on said roofing or building cover material with a
`
`pressure roll.” (Claim 7). In this manner a suitable roofing or building cover
`
`material with nail tabs can be made in an efficient and cost-effective manner.
`
`
`4 Unlike the parent patent claims relating to liquid deposition, the tab material in
`
`the ‘757 claims can be “pre-formed”, i.e., solid, as specified by dependent Claim
`
`6. Additionally, unlike its parent patents, dependent Claim 5 of the ‘757 Patent
`
`(which is not part of the IPR) is the only claim pertaining to a gravure-like
`
`methodology as it specifies using an engraved pattern print roll to provide tab
`
`material as an additional step to Claim 1’s lamination process.
`
`12
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`III. The Level of Ordinary Skill in the Art Requires Experience with
`Roofing Materials Such as Heavily Asphalt Coated Substrates and
`Reinforcement of Such Materials
`
`The ‘757 Patent claims are directed to “A method of making a roofing or
`
`building cover material.” (Ex. 1001). The example used and described throughout
`
`the specification is that of heavily asphalt coated substrates for underlayment or
`
`shingles. (Ex. 1001, col. 1, lines 36-44). Accordingly, Patent Owner submits that
`
`the ordinary skilled artisan would be a person skilled in the field of roofing
`
`materials such as asphalt shingles. Such a person would have a bachelor's degree
`
`and approximately 3-5 years of additional training and experience in the field of
`
`manufacturing roofing materials with asphalt substrates. (Ex. 2003 Todd Decl.,
`
`¶22 and Ex. 2004 Bohan Decl., ¶22).
`
`Even though the ‘757 Patent expressly pertains to and claims methods of
`
`making roofing materials with nail tabs, Petitioner attempts to describe the
`
`ordinary skilled artisan as one solely experienced with printing (Petition, p.14
`
`stating POSA “would possess at least a bachelor’s degree with knowledge of
`
`various printing methods and several years of industry experience in the printing
`
`field.”). Of course, that is because Petitioner seeks to apply unrelated and non-
`
`analogous print/non-asphalt-roofing references using an expert that lacks any
`
`relevant experience in the field of asphalt roofing or building cover materials, their
`
`reinforcement, or methods of their manufacture. (See Section IV below). In fact,
`
`13
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`
`Petitioner’s expert could not even confirm the first step of Claim 1 of the ‘757
`
`Patent -- “treating an extended length of substrate” -- involves the conventional
`
`impregnating, saturating, or otherwise surrounding or coating the mat fibers with
`
`asphalt -- as stated in the specification. (Ex. 1001, col. 7, lines 50-54). Petitioner’s
`
`expert could only respond that “perhaps someone in the business of manufacturing
`
`roofing materials can answer that.” (Ex. 2005, p.40 of depo.).
`
`Petitioner’s position that an ordinarily skilled artisan need not have roofing
`
`experience is wrong. This is confirmed by Petitioner’s position in its other IPRs
`
`involving reinforced shingles. Petitioner’s SureNail shingle products having nail
`
`tabs are alleged to infringe the ‘757 patent at issue here. (Ex. 1015, complaint ¶7).
`
`Additionally, the same SureNail products are alleged to infringe other patents
`
`which patents are involved in other ongoing IPRs. (See, e.g., Ex. 2025, complaint
`
`for 1:14-cv-00510-SLR ¶¶16-18 and Ex. 2026 – 2033, IPR Petitions). In each of
`
`these other eight IPRs involving patents relating to “Shingles with Reinforced Nail
`
`Zone”, Petitioner has described the level of ordinary skill by stating:
`
`The person of ordinary skill has a bachelor's degree, and potentially
`some advanced schooling, in chemistry, engineering (such as
`chemical, civil, or mechanical engineering), materials science,
`physical science, or a related discipline, and approximately 3-5 years
`of additional training and experience in the field of roofing materials
`and asphalt shingles. (Ex. 2026, IPR2014-01397 Petition p. 26
`referring to Bryson Decl. at §44).
`
`14
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`
`Patent Owner submits that the same or similar level of ordinary skill in the
`
`art should apply here as the ‘757 Patent is in the same field. (Ex. 2003 Todd Decl.,
`
`¶36 and Ex. 2004 Bohan Decl., ¶27). If a person is not knowledgeable about the
`
`manufacturing of roofing or building cover material and the basic function and
`
`purpose of nail tabs, then one is not skilled in the relevant field of the ‘757 patent.
`
`(Ex. 2003 Todd Decl., ¶38 and Ex. 2004 Bohan Decl., ¶31). That is, an ordinarily
`
`skilled artisan in the field of the ‘757 patent would minimally understand the
`
`following about roofing or building cover materials: (1) basic requirements of
`
`roofing or building cover materials as related to “adverse weather conditions” (See
`
`e.g., Ex. 1001, col. 2, lines 30-41); (2) the manufacturing of heavily asphalt coated
`
`and/or saturated substrates as roofing or building cover materials (See e.g., Ex.
`
`1001, col. 7, lines 50-54); and (3) the basic properties of such substrates. (See, e.g.,
`
`Ex. 2003 Todd Decl., ¶¶22-23). That an ordinarily skilled artisan in the context of
`
`the ‘757 patent must possess these basic and fundamental understandings was
`
`confirmed by both an expert in roofing and an expert in printing. (Ex. 2003 Todd
`
`Decl., ¶¶22-33 and Ex. 2004 Bohan Decl., ¶¶20-26). What’s more, contrary to
`
`Petitioner’s position, the same experts confirmed that an understanding solely of
`
`printing/graphics is insufficient for one to even be considered an ordinarily skilled
`
`artisan in the context of the ‘757 Patent. (Ex. 2003 Todd Decl., ¶¶37-41 and Ex.
`
`2004 Bohan Decl. Ex., ¶¶28-30).
`
`15
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`
`Printing/graphics simply relate to putting an image on a substrate such as
`
`paper or cardboard for a visual or decorative effect. (Ex. 2004 Bohan Decl., ¶60).
`
`A person solely skilled in the art of printing/graphics and substrates used therein
`
`would not understand the processing issues associated with applying polymer
`
`materials to roofing materials such as heavily asphalt coated substrates to obtain
`
`nail tabs. (Ex. 2004 Bohan Decl., ¶30). Petitioner’s own expert confirmed that
`
`such asphalt coated substrates are outside the printing/graphics field when he could
`
`not identify a single reference in his vast library that referred to any type of
`
`“printing on asphalt”. (Ex. 2005, p. 10, 12, 14 of depo.). In sum, both Patent
`
`Owner’s roofing expert and printing expert agree that roofing, not solely printing, is
`
`a necessary field of expertise with respect to the ‘757 Patent. (Ex. 2003 Todd
`
`Decl., ¶¶22, 37-41 and Ex. 2004 Bohan Decl., ¶¶20-22, 28-30).
`
`IV. Petitioner’s “Printing” Expert is Not Even One of Ordinary Skill in the
`Art to Which the ‘757 Patent Relates, i.e., Reinforcement of Roofing
`Cover Materials, and Misunderstands the ‘757 Patent
`
`Petitioner’s expert is, self-admittedly, a less than ordinarily skilled artisan in
`
`the roofing and building cover materials field as evidenced by the following
`
`admissions:
`
`• Petitioner’s expert could not agree “that a shingle is a heavily saturated
`
`asphalt felt” stating “I'm not an expert in shingles. So I would leave the
`
`16
`
`

`
`IPR2015-00650
`Patent Owner’s Response
`
`definition of what that shingle is made of to someone in the roofing
`
`business.” (Ex. 2005 p.13 of depo.).
`
`• Petitioner’s expert could not explain how “paper is changed into what
`
`becomes the roofing or building cover material” stating, “Well, that's out of
`
`my scope of experience. I'm an expert in printing, not in roofing, creating
`
`roofing material.” (Ex. 2005 p.15 of depo.).
`
`• Petitioner’s expert admitted the sum total of roofing experience was that he
`
`“personally applied shingles to a house” and “What [he] learned in this
`
`case.” (Ex. 2005 p.15 of depo.).
`
`• Petitioner’s expert could not describe other purposes of a nail tab stating, “I
`
`would say that an individual involved in the manufacture of the roofing
`
`material can answer that question.” (Ex. 2005 p.27 of depo.).
`
`• Petitioner’s expert could not comment on the first step of Claim 1 of the
`
`‘757 patent that states “treating an extended length of substrate” stating, “I
`
`couldn't comment on
`
`that….Perhaps someone
`
`in
`
`the business of
`
`manufacturing roofing materials can answer that question.” (Ex. 2005 p.39-
`
`40 of depo.).
`
`17
`
`

`
`IPR2015-00650
`Patent Owner’s