CONTAINS STORMSEAL CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`INFORMATION
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF FLORIDA
`
`
`
`
`Case No.: 9:22-cv-81726-AHS
`
`CONTAINS STORMSEAL
`CONFIDENTIAL – OUTSIDE
`ATTORNEYS’ EYES ONLY
`INFORMATION
`
`
`STORMSEAL USA, LLC and SYSTEM
`STORMSEAL PTY LTD,
`
`
`
`v.
`
`ABC SUPPLY CO., INC., MULE-HIDE
`PRODUCTS CO., INC., and STRUCTURAL
`WRAP, LLC,
`
`
`
`
` Plaintiffs,
`
` Defendants.
`
`
`
`
`
`STRUCTURAL WRAP, LLC’S INITIAL INVALIDITY CONTENTIONS
`
`Pursuant to the proposed Scheduling Order (ECF No. 36-1), Defendant Structural Wrap,
`
`LLC (“Structural Wrap”), by and through its undersigned attorneys, hereby submits its Initial
`
`Invalidity Contentions to Plaintiffs Stormseal USA, LLC and System Stormseal Pty Ltd.
`
`(collectively, “Stormseal”) with respect to U.S. Patent No. 11,168,484 (“’484 Patent” or “Asserted
`
`Patent”) and Claims 1–3 of the ’484 Patent (“Asserted Claims”).
`
`Structural Wrap submits these initial contentions without prejudice to Structural Wrap’s
`
`right to supplement or revise them, including but not limited to Structural Wrap’s right to assert
`
`additional contentions based on additional analysis and/or further information obtained during
`
`discovery, which has just begun, including third party discovery. The prior art and other evidence
`
`cited in these initial contentions is exemplary and is not intended to be limiting. Structural Wrap
`
`reserves the right to use additional evidence and prior art to support its invalidity claims.
`
`Structural Wrap reserves the right to modify or further supplement these contentions,
`
`including in any final invalidity contentions, based on, among other things, production of
`
`additional documents, discovery of additional facts and materials (including by third parties), and
`
`1
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`Exhibit 2005, Page 1 of 31
`IPR2024-00084
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`

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`CONTAINS STORMSEAL CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`INFORMATION
`other developments in this action, including any claim construction positions by Stormseal or
`
`claim construction ruling by the Court. Structural Wrap also reserves the right to submit expert
`
`opinions and analyses of the invalidity and unenforceability of the Asserted Patent and the
`
`Asserted Claims in accordance with the schedule for expert discovery.
`
`Structural Wrap provides these Initial Invalidity Contentions prior to the parties’ claim
`
`construction briefing and a claim construction order from the Court, while Structural Wrap’s
`
`investigation regarding the invalidity of the ’484 Patent is ongoing. Structural Wrap’s Initial
`
`Invalidity Contentions do not represent its agreement or view as to the proper construction of any
`
`term in any of the Asserted Claims. Thus, to the extent that Structural Wrap provides contentions
`
`regarding, for example, a broader interpretation of a claim term than Structural Wrap believes is
`
`appropriate, that is not a waiver of Structural Wrap’s claim construction position. Structural Wrap
`
`thus reserves all rights to present arguments and evidence regarding the proper claim scope and
`
`claim construction for all Asserted Claims. Structural Wrap’s contentions also should not be seen
`
`as a suggestion that the terms of those claims would have had definite meanings to one of skill in
`
`the art or that there is any guidance in the specification as to the enablement, possession, or
`
`meaning of the terms of those claims. These contentions are made in the alternative and are not
`
`necessarily intended to be consistent with each other.
`
`Structural Wrap reserves the right to rely on prior art not included in this initial disclosure,
`
`whether now known or not known to Structural Wrap. For example, Structural Wrap is currently
`
`unaware of the extent to which Stormseal will contend that limitations of the ’484 Patent are not
`
`disclosed in the prior art identified by Structural Wrap, or other challenges Stormseal may raise to
`
`Structural Wrap's invalidity contentions. To the extent Stormseal raises any such challenges,
`
`Structural Wrap reserves the right to identify other prior art that discloses or would render obvious
`
`
`
`2
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`Exhibit 2005, Page 2 of 31
`IPR2024-00084
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`

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`CONTAINS STORMSEAL CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`INFORMATION
`the allegedly missing limitation(s) of the Asserted Claims, that would provide the motivation to
`
`combine or reasonable expectation of success, or would demonstrate that the cited prior art is
`
`analogous.
`
`The references cited herein disclose the limitations of the Asserted Claims of the ’484
`
`Patent either explicitly and/or inherently and/or may be relied upon to show the state of the art
`
`during the relevant time frames. Structural Wrap endeavored to identify the most relevant portions
`
`of each reference. The references, however, may contain additional support for particular claim
`
`limitations. Structural Wrap may rely on uncited portions of the prior art references, other
`
`documents, and expert testimony to provide context or to aid in understanding the cited portions
`
`of the references. Where Structural Wrap cites to a particular figure in a reference, the citation
`
`should be understood to encompass the caption and description of the figure and any text relating
`
`to or discussing the figure, and, where Structural Wrap cites to particular text referring to a figure,
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`the citation should be understood to include the figure as well.
`
`Subject to the foregoing, Structural Wrap provides the following information with respect
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`to the Asserted Claims of the ’484 Patent. Each of the Asserted Claims is invalid because it fails
`
`to meet one or more of the requirements for patentability under 35 U.S.C. §§ 101, 102, 103, and/or
`
`112.
`
`This disclosure is without any concession, agreement, admission, or waiver of any ultimate
`
`determination of relevance, admissibility, or discoverability of particular information for any
`
`purpose and without waiver of any attorney-client, work product, or other privilege or immunity.
`
`Exhibits A through DD are attached to these contentions and are hereby incorporated by
`
`reference.
`
`
`
`3
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`Exhibit 2005, Page 3 of 31
`IPR2024-00084
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`

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`CONTAINS STORMSEAL CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`INFORMATION
`I.
`Prior Art Invalidity
`
`Subject to the foregoing, each of the Asserted Claims is invalid based on the prior art
`
`references and/or prior knowledge, use, or invention by others listed or described below and/or in
`
`the Exhibits attached hereto and incorporated herein, under 35 U.S.C. § 102 and/or under 35
`
`U.S.C. § 103.
`
`A.
`
`Identification of Prior Art
`
`Each of the Asserted Claims is invalid because they are anticipated under 35 U.S.C. § 102
`
`and/or rendered obvious under 35 U.S.C. § 103, by at least the prior art identified in Exhibit A to
`
`these contentions. Exhibit A identifies the production Bates number, where applicable, at which
`
`copies of the prior art has been produced. Structural Wrap incorporates by reference the prior art
`
`documents in Exhibit A. To the extent a prior art patent or patent application publication claims
`
`priority to one or more priority applications (including provisional applications), the prior art
`
`reference as cited herein is to both the patent or patent application publication itself as well as any
`
`priority applications within the priority chain of that patent or patent application publication.
`
`Exhibit A also identifies prior art systems, uses, and methods that were known, used, and/or
`
`invented by others, prior to the earliest priority date of the Asserted Claims.
`
`Charts in Exhibits B through DD provide exemplary citations identifying where in the prior
`
`art references, systems, uses, and methods each element of the Asserted Claims is found.
`
`Stormseal contends that “all of the Asserted Claims are entitled to a priority date of at least
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`as early as June 2, 2008, based on the filing date of Australian application 2008202416.” See
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`Stormseal’s June 12, 2023 Responses and Objections to Structural Wrap’s First Set of
`
`Interrogatories, at 5–6 (Response to Interrogatory No. 2). Structural Wrap reserves the right to
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`challenge the alleged priority date of the Asserted Claims, as discovery continues. While
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`Structural Wrap does not agree that the Asserted Claims are entitled to a priority date “at least as
`
`
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`4
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`Exhibit 2005, Page 4 of 31
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`

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`CONTAINS STORMSEAL CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`INFORMATION
`early as June 2, 2008,” Structural Wrap has provided prior art in these contentions responsive to
`
`Stormseal’s contention that it is entitled to a June 2, 2008 priority date, and Structural Wrap may
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`rely on additional prior art if the Asserted Claims are not entitled to such a priority date. Structural
`
`Wrap reserves the right to supplement its invalidity contentions to the extent Stormseal alleges that
`
`the ’484 Patent is entitled to a priority date earlier than June 2, 2008.
`
`To establish the scope and content of the prior art, a motivation to combine or modify the
`
`prior art, or the knowledge and level of skill of those of ordinary skill in the art, Structural Wrap
`
`may rely on additional prior art or other evidence, including, but not limited to, patents, patent
`
`applications or other publications, the prosecution history files of the ’484 Patent and of U.S. and
`
`foreign patent applications related to the ’484 Patent, testimony of fact and expert witnesses, expert
`
`declarations and reports, admissions by Stormseal or its agents, and responses to discovery.
`
`Structural Wrap expects that further discovery, including third-party discovery, will reveal
`
`additional prior art, including related disclosures for many of the prior art references, systems,
`
`uses, and methods identified herein. Structural Wrap reserves the right to present additional prior
`
`art located during the course of discovery or further investigation, and to assert additional
`
`invalidity grounds based on such additional prior art, including in Structural Wrap’s Final
`
`Invalidity Contentions (see ECF No. 36). In addition, prior art not included in this disclosure,
`
`whether now known or not known to Structural Wrap, may become relevant. In particular,
`
`Structural Wrap is currently unaware of the extent, if any, to which Stormseal will contend that
`
`limitations of the Asserted Claims are not disclosed in the prior art identified by Structural Wrap.
`
`To the extent such an issue arises, Structural Wrap reserves the right to identify other prior art that
`
`discloses or would render obvious the allegedly missing limitation(s) of the Asserted Claims. The
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`prior art references identified in Exhibit A are presumed to be enabled for all that they disclose.
`
`
`
`5
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`Exhibit 2005, Page 5 of 31
`IPR2024-00084
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`

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`CONTAINS STORMSEAL CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`INFORMATION
`Structural Wrap reserves the right to identify additional prior art evidencing enablement of these
`
`references should Stormseal challenge the presumption of enablement. Additionally, Structural
`
`Wrap is currently unaware of the extent, if any, to which Stormseal will contend that any of the
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`references, systems, uses, and methods identified by Structural Wrap are not prior art. To the
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`extent such an issue arises, Structural Wrap reserves the right to present additional evidence that
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`the references, systems, uses, and methods identified by Structural Wrap are prior art to the
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`Asserted Claims.
`
`In addition to the prior art described above, Structural Wrap incorporates by reference each
`
`and every prior art reference of record in the prosecution of the ’484 Patent and related United
`
`States and foreign applications, including, but not limited to abandoned U.S. Application No.
`
`17/519,787 and pending U.S. Application No. 17/977,136, and including the statements made
`
`therein by the applicant, as well as the prior art discussed in the specification of the ’484 Patent.
`
`B.
`
`Identification of Exemplary Anticipation and Obviousness Grounds
`1.
`
`Anticipation
`
`The following prior knowledge, use, and/or invention by others anticipate one or more of
`
`the Asserted Claims of the ’484 Patent under at least 35 U.S.C. § 102(a), (b), and (g)(2).
`
` Global Wrap Method. Upon information and belief, and as will be further developed
`during discovery, including third-party discovery, the invention claimed in the ’484 Patent
`was known and/or was used and/or was conceived and reduced to practice by individuals
`affiliated with Global Wrap and individuals using Global Wrap’s system/method/use or
`using Global Wrap products/services (“Global Wrap Method”), prior to the priority date of
`the ’484 Patent. See Exhibit B, which is incorporated by reference herein. For example,
`Anthony Seraphin of Global Wrap demonstrated the Global Wrap Method at a convention
`prior to the priority date of the Asserted Claims. Additionally, for example, before the
`priority date of the Asserted Claims, Global Wrap installed shrink wrap containments for
`its customers in accordance with the methods of the Asserted Claims. The following
`references evidence the prior knowledge, use, and/or invention of the Global Wrap Method,
`prior to the priority date of the Asserted Claims, but Structural Wrap intends to rely on
`additional evidence as discovery,
`including
`third-party discovery, progresses:
`
`
`
`6
`
`Exhibit 2005, Page 6 of 31
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`

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`CONTAINS STORMSEAL CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`INFORMATION
`Globalwrap.com Webpage; Globalwrap.com Webpage 2; Global Wrap Video; NYT
`Shrink Wrap; Global Wrap Demonstration; Talbot 509; Talbot 783; Talbot 911.1
`
` Americover Method. Upon information and belief, and as will be further developed
`during discovery, including third-party discovery, the invention claimed in the ’484 Patent
`was known and/or was used and/or was conceived and reduced to practice by individuals
`using Americover’s system/method/use/products (“Americover Method”), prior to the
`priority date of the ’484 Patent. See Exhibit D, which is incorporated by reference herein.
`The following references evidence the prior knowledge, use, and/or invention of the
`Americover Method, prior to the priority date of the Asserted Claims, but Structural Wrap
`intends on relying on additional evidence as discovery, including third-party discovery,
`progresses: Americover Webpage; Americover FAQ; Fine Homebuilding.
`
`The following reference anticipates one or more of the Asserted Claims of the ’484 Patent
`
`under at least 35 U.S.C. § 102(a), (b), and (e).
`
` Panasik. See Exhibit G, which is incorporated by reference herein.
`
`This identification of anticipatory prior art under 35 U.S.C. § 102 is merely exemplary and
`
`is not intended to be exhaustive. Structural Wrap may also point to additional anticipatory prior
`
`art identified in these contentions, in the prosecution history, or that is discovered or found to be
`
`relevant during discovery. Structural Wrap is currently unaware of the extent, if any, to which
`
`Stormseal will contend that limitations of the Asserted Claims are not disclosed or enabled in the
`
`prior art identified by Structural Wrap. To the extent that an issue arises with any such limitations,
`
`Structural Wrap reserves the right to identify other prior art evidencing such disclosure or
`
`enablement.
`
`2.
`
`Obviousness
`
`The prior art identified in Exhibit A renders obvious the Asserted Claims, under 35 U.S.C.
`
`§ 103, either alone or in combination with the knowledge of one of ordinary skill in the art at the
`
`time of the alleged invention and/or one or more prior art references or systems/methods/uses
`
`identified in Exhibit A.
`
`
`1 Short cites for the prior art referenced throughout are identified in Exhibit A.
`7
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`
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`Exhibit 2005, Page 7 of 31
`IPR2024-00084
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`

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`CONTAINS STORMSEAL CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`INFORMATION
`
`1.
`
`Prosecution History
`
`Structural Wrap incorporates by reference the full prosecution history of the ’484 Patent,
`
`as well as the prosecution histories of related U.S. and foreign applications, including, but not
`
`limited to, abandoned U.S. Application No. 17/519,787 and pending U.S. Application No.
`
`17/977,136.
`
`During the prosecution of the ’484 Patent, the examiner determined that Crook teaches:
`
`“a method of covering a roof structure (See Abstract), the method comprising:
`selecting a roll (37,520) of shrink wrap material; cutting a required number of strips
`(33,35,233,235,270,272) from the roll, wherein the strips are of sufficient length to
`extend from one end of roof structure to an opposite end thereof; positioning the
`strips over the roof structure by attaching a leading edge of a strip to a first edge of
`the roof structure and attaching a trailing edge of the strip to a second edge of the
`roof structure which is opposite the first edge; applying multiple strips to the roof
`structure with overlapping portions between adjacent strips; applying adhesive tape
`to the overlapping portions such that the strips are assembled into a sheet
`(100,200,250,300); and using a heat gun to apply heat to the sheet such that
`shrinking occurs and a tight fit between the sheet and the roof structure is achieved
`(See Figures; [0022]-[0066]).”
`
`E.g., ’484 Patent Prosecution History, 10/6/2020 Office Action, at 3. The examiner also
`
`determined that “the heating of the sheet of Crook causes the sheet to shrink and thereby conform
`
`tightly against the roof structure (See Figures; [0008]) which meets the claim.” E.g., ’484 Patent
`
`Prosecution History, 2/25/2021 Office Action, at 2. The examiner determined that it would have
`
`been obvious to use low density polyethylene firm as the material in Crook, in light of the teachings
`
`of Lachapelle (US 6,425,213) and Myhre. E.g., ’484 Patent Prosecution History, 10/6/2020 Office
`
`Action, at 3; '484 Patent Prosecution History, 2/25/2021 Office Action, at 3. Additionally, the
`
`examiner determined that it would have been obvious to use batten strips as a fastener for holding
`
`the sheet of Crook, in light of the teachings of Starr (US 6,206,991). E.g., ’484 Patent Prosecution
`
`History, 10/6/2020 Office Action, at 4; ’484 Patent Prosecution History, 2/25/2021 Office Action,
`
`at 3-4. The examiner also determined that placement of the batten strips under the eaves or to the
`
`
`
`8
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`Exhibit 2005, Page 8 of 31
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`CONTAINS STORMSEAL CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`INFORMATION
`facia of the built structure was “a routine matter of design choice for one of ordinary skill in the
`
`art such that the use of a batten strip on eaves, rafters, walls, or any other portion of a building
`
`structure would have been obvious depending upon where it is desired to fasten the sheet.” E.g.,
`
`’484 Patent Prosecution History, 2/25/2021 Office Action, at 4.
`
`The examiner, nevertheless, allowed the Asserted Claims, mistakenly stating that the “prior
`
`art fails to teach or fairly suggest applying a film strip to a roof structure by wrapping leading and
`
`trailing ends around battens and securing said battens to the structure.” ’484 Patent Prosecution
`
`History, Notice of Allowability, dated 09/13/2021.
`
`The examiner erred in stating that the prior art failed to teach or suggest this fastening
`
`technique, admitting as much by subsequently rejecting nearly identical claims in the now
`
`abandoned U.S. Application No. 17/519,787. During the prosecution of U.S. Application No.
`
`17/519,787, the same examiner rejected then-pending claims 1, 10, and 15, as obvious over Crook,
`
`Best Pat., Kelly Pat. 958, and Inzeo. As in the prosecution of the application that led to the ’484
`
`Patent, the examiner determined that the prior art disclosed or rendered obvious a method of
`
`covering a roof with heat shrinkable film made of low density polyethylene, and attaching the film
`
`under the eaves or at the facia of the built structure. ’787 App Prosecution History, 12/19/2022
`
`Office Action, at 6-10. The examiner, by this time, also discovered prior art Kelly Pat. 958, which
`
`“teaches a method of attaching a waterproof membrane to a roof assembly, the method comprising:
`
`wrapping a membrane (46) around a stiff member (40) and attaching the stiff member to a side
`
`face of a wall (12) with fasteners (42) (See Figs. 2A and 2B; col. 2, line 62 to col. 3, line 62).”
`
`’787 App Prosecution History, 12/19/2022 Office Action, at 6-7, 9. The examiner determined that
`
`the “stiff member” of Kelly Pat. 958 “functions as a batten as claimed.” ’787 App Prosecution
`
`
`
`9
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`Exhibit 2005, Page 9 of 31
`IPR2024-00084
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`CONTAINS STORMSEAL CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`INFORMATION
`History, 12/19/2022 Office Action, at 6-7, 9. Thus, the prior art teaches what the examiner
`
`mistakenly believed was novel during the ’484 Patent prosecution.
`
`Moreover, the examiner acknowledged that pending (and now abandoned) claims 1, 10,
`
`and 15 claimed the “same invention as” claims 1, 2, and 3, respectively, of the ’484 Patent. ’787
`
`App Prosecution History, 12/19/2022 Office Action, at 12. The claims are nearly identical.
`
`Stormseal failed to respond to the office action, and the application is abandoned. ’787 App
`
`Prosecution History, 6/23/2023 Notice of Abandonment.
`
`Accordingly, the examiner erred in allowing the Asserted Claims. The Asserted Claims
`
`are invalid as obvious for the same reasons the examiner rejected claims 1, 10, and 15 of the ’787
`
`Application.
`
`2.
`
`Disclosure, Teaching, Motivation, or Suggestion of the
`Elements of the Asserted Claims in the Prior Art / Motivations
`to Combine the Prior Art
`(1)
`
`Shrink Wrap Elements
`
`As described herein and in the attached exhibits, the prior art identified as “Shrink Wrap
`
`Art” in Exhibit A discloses, teaches, motivates, or suggests (expressly or inherently or in view of
`
`the knowledge of a person of ordinary skill in the art) at least the following elements of the
`
`Asserted Claims:
`
`
`
`
`
`
`
`
`
`[1.pre] A method of providing covers over at least a portion of a roof of a storm
`damaged built structure
`
`[1.d] heating the sheet of heat shrinkable film to bring the film into conformity with
`the portion of the roof, wherein said heating step shrinks the sheet of film tight
`against the built structure to cover over the portion of the roof
`
`[2.pre] A method of covering at least a portion of a roof of a [built] structure
`
`[2.a] cutting a sheet of film from a roll of heat shrinkable film
`
`
`
`10
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`Exhibit 2005, Page 10 of 31
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`CONTAINS STORMSEAL CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`INFORMATION
`
`[2.b] after said cutting step, applying the sheet of film over the portion of the roof
`to extend from a first edge to a second edge of the [built] structure, wherein the film
`includes a leading edge and a trailing edge
`
`
`
`
`
`
`
`[2.e] heating the film to cause the film to conform to the portion of the roof
`
`[3.pre] A method of covering at least a portion of a roof of a [built] structure
`
`[3.a] applying a pre-cut sheet of heat shrinkable film over the portion of the roof to
`extend from a first edge to a second edge of the [built] structure, wherein the film
`includes a leading edge and a trailing edge
`
`
`
`[3.d] heating the film to cause the film to conform to the portion of the roof
`
`The Shrink Wrap Art discloses the use of shrink wrap as a roof covering material. The Shrink
`
`Wrap Art describes reasons why a Person of Ordinary Skill in the Art (“POSITA”) would select
`
`shrink wrap as a roof cover material. For example, it is waterproof and lightweight, it conforms
`
`to different structures, and has been used with success in similar applications, such as wrapping
`
`boats. See Shrink Wrap Art, including citations provided for Shrink Wrap Art in the attached
`
`exhibits.
`
`(2)
`
`Polyethylene Elements
`
`As described herein and in the attached exhibits, the prior art identified as “Polyethylene
`
`Art” in Exhibit A discloses, teaches, motivates, or suggests (expressly or inherently or in view of
`
`the knowledge of a person of ordinary skill in the art) at least the following element of the Asserted
`
`Claims:
`
`
`
`[1.a] applying a sheet of heat shrinkable film over the portion of the roof, the sheet
`having a leading edge and a trailing edge and being a film of low density
`polyethylene including shrinking resins
`
`It would have been obvious to choose low density polyethylene as the material for the
`
`roofing membrane in any of the Shrink Wrap Art because a POSITA would understand low density
`
`polyethylene is one of the possible materials that can be heat welded and heat sealed. See
`
`Polyethylene Art, including citations provided for Polyethylene Art in the attached exhibits. For
`
`
`
`11
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`Exhibit 2005, Page 11 of 31
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`CONTAINS STORMSEAL CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`INFORMATION
`example, Americover Method, Americover Website, Myhre Pat., and Best Pat. disclose low
`
`density polyethylene as a heat sealable material that is used for shrink wrap, including for roofs.
`
`A POSITA would have known that low density polyethylene is one possible option for heat
`
`sealable material. For example, while Crook and other Shrink Wrap Art teach a shrink wrap
`
`material, one of ordinary skill in the art would look to other prior art references to determine which
`
`types of shrink wrap materials were conventionally used, such as the Polyethylene Art, such as
`
`Americover Method, Americover Website, Myhre Pat., and Best Pat. See '484 Patent Prosecution
`
`History, 2/25/2021 Office Action, at 3. Shrink film was well known and conventionally used at
`
`the time of invention. The Polyethylene Art, such as Myhre Pat., Best, and Americover Method,
`
`teach that shrink resins containing low density polyethylene and shrink resins are well known and
`
`conventionally used, including to protect building structures and roofs. A POSITA would be
`
`motivated to select low density polyethylene given its properties, such as strength, stability,
`
`shrinkage percentage, and activation temperature. Therefore, it would have been obvious to one
`
`of ordinary skill in the art to use low density polyethylene shrink film as the shrink film of Crook
`
`or other Shrink Wrap Art.
`
`Additionally, the motivation to use a film of low density polyethylene would have been
`
`provided by the teaching of, for example, Lachapelle (US 6,425,213 at 6:57-61) and Polyethylene
`
`Art, that to do so would predictably allow for easy installation. Further, since the shrink film
`
`shrinks upon heating, a POSITA would understand that it must inherently include at least some
`
`shrinking resins as claimed. See, e.g., ’484 Patent Prosecution History, 2/25/2021 Office Action,
`
`at 3; ’787 App Prosecution History, 12/19/2022 Office Action, at 8 (“there must be some polymeric
`
`component in the blend which shrinks in order to form a shrink wrap film, so the formulations of
`
`Best which form shrink wrap must therefore include some type of ‘shrinking resins’ as claimed.”).
`
`
`
`12
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`Exhibit 2005, Page 12 of 31
`IPR2024-00084
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`CONTAINS STORMSEAL CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`INFORMATION
`
`(3)
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`Attachment Point Elements
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`As described herein and in the attached exhibits, the prior art identified as “Attachment
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`Point Art” in Exhibit A discloses, teaches, motivates, or suggests (expressly or inherently or in
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`view of the knowledge of a person of ordinary skill in the art) at least the following elements of
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`the Asserted Claims:
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`
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`
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`
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`
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`
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`[1.b] attaching the first batten to an underside of a first eave or to a facia of the built
`structure
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`[1.c] attaching the second batten to an underside of a second eave or to the facia of
`the built structure at a location different than the first batten
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`[2.c] attaching the first batten to an underside of a first eave or to a facia of the
`[built] structure
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`[2.d] attaching the second batten to an underside of a second eave or to the facia of
`the built structure at a location different than the first batten
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`[3.b] attaching the first batten to an underside of a first eave or to a facia of the
`[built] structure
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`[3.c] attaching the second batten to an underside of a second eave or to the facia of
`the built structure at a location different than the first batten
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`It would have been obvious to attach the batten to an underside of an eave or to the facia
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`of the built structure because a POSITA would understand that those are two of a small, finite
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`number of attachment points for the battens. The placement of the battens would have been a
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`routine matter of design choice for one of ordinary skill in the art such that the use of a batten on
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`eaves, rafters, walls, or any other portion of a building structure would have been obvious
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`depending upon where it is desired to fasten the sheet. See, e.g., ’484 Patent Prosecution History,
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`10/6/2020 Office Action, at 4. For example, it would have been obvious to one of ordinary skill
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`in the art at the time of invention that the films of Crook or other Shrink Wrap Art and the battens
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`of Kelly Pat. 958, Lowe’s, Plastic Sheeting, Blue Roof Tarps, and other Batten Art could be
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`attached to an underside of an eave or to the facia of the built structure, rather than the wall or roof
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`13
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`Exhibit 2005, Page 13 of 31
`IPR2024-00084
`
`

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`CONTAINS STORMSEAL CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`INFORMATION
`surface. There is no advantage, or new or unpredictable result, achieved by attaching to eaves or
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`fascia rather than a wall or roof. As long as the point of attachment is structurally sound, the result
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`is the same and predictable. Therefore, any attachment point, including a wall, eaves, fascia, soffit,
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`rafters, nailers, or any other roof structure would have been obvious to one of ordinary skill in the
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`art. See, e.g., ’787 App Prosecution History, 12/19/2022 Office Action, at 9-10.
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`Moreover, the Attachment Point Art, such as Inzeo, Blue Roof Tarps, Global Wrap Video,
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`and Fine Homebuilding, teach a membrane that is attached to an underside of an eave or to the
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`facia of the built structure. See Attachment Point Art, including citations provided for Attachment
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`Point Art in the attached exhibits. Since it was known in the prior art to attach membranes to
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`various points on the structure, including to the roof surface, to the wall, to an underside of an
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`eave, or to the facia of the built structure, the substitution of one known attachment point for
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`another would have been obvious.
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`To the extent a POSITA did not already know where to attach the membrane to the roof, a
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`POSITA would have been motivated to look for ways to attach the roof cover to the roof because
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`a POSITA would have understood that it is desirable to secure the covering to the roof such that it
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`would not blow away during subsequent windy or storm conditions. A POSITA would have
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`readily come across the Attachment Point Art, which is in the same field as the Shrink Wrap Art
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`and Batten Art.
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`(4)
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`Batten Elements
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`As described herein and in the attached exhibits, the prior art identified as “Batten Art” in
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`Exhibit A discloses, teaches, motivates, or suggests (expressly or inherently or in view of the
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`knowledge of a POSITA) at least the following elements of the Asserted Claims:
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`
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`
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`[1.b] wrapping portions of the leading edge around a first batten
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`[1.c] wrapping portions of the trailing edge around a second batten
`14
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`Exhibit 2005, Page 14 of 31
`IPR2024-00084
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`

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`CONTAINS STORMSEAL CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`INFORMATION
`
`[2.c] wrapping portions of the leading edge around a first batten
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`
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`
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`
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`[2.d] wrapping portions of the trailing edge around a second batten
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`[3.b] wrapping portions of the leading edge around a first batten
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`[3.c] wrapping portions of the trailing edge around a second batten
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`It would have been obvious to wrap the films of the Shrink Wrap Art and Attachment Point
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`Art around a batten as a means for the attachment. For example, it would have been obvious to
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`one of ordinary skill in the art at the time of invention to use batten strips as a fastener for holding
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`the sheet of Crook or other Shrink Wrap Art and Attachment Point Art to the roof structure. Crook,
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`for example, teaches that any suitable fastener may be used. See Crook at [0049]. The Batten Art,
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`such as Fine Homebuilding, Kelly Pat. 958, Panasik, Blue Roof Tarps, Lowe’s, and Plastic
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`Sheeting,