IPR2024-00084
`U.S. Patent 11,168,484
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`STRUCTURAL WRAP, LLC,
`Petitioner
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`v.
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`SYSTEM STORMSEAL PTY LTD, STORMSEAL USA, LLC,
`Patent Owner
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`
`IPR2024-00084
`U.S. PATENT NO. 11,168,484
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`IPR2024-00084
`U.S. Patent No. 11,168,484
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`TABLE OF CONTENTS
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`TABLE OF EXHIBITS .............................................................................................. v
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`Background ...................................................................................................... 1
`A.
`The ’484 Patent ..................................................................................... 1
`B.
`Crook (Ex. 1004) ................................................................................... 4
`C.
`Lowe’s (Ex. 1016) ................................................................................. 6
`D.
`Related Proceedings .............................................................................. 8
`E.
`Prosecution History of Petitioner’s ‘827 Patent .................................... 9
`F.
`Legal Standards ...................................................................................14
`G.
`Level of Ordinary Skill in the Art .......................................................14
`H.
`Claim Construction..............................................................................14
`III. The Board Should Deny Institution Because the Petitioner Has
`Not Satisfied Its Burden ................................................................................15
`A. Grounds 1-4 and 7-8: The Crook-Kelly-Inzeo Combinations
`do Not Render Obvious Claims 1-3 ....................................................17
`1.
`Kelly Does not Disclose the Claimed Wrapping of
`the Trailing and Leading Edges Around a Batten ....................17
`Inzeo Does not Disclose Attaching a Wrapped
`Batten to a Facia or Eaves .........................................................24
`The Petition Does Not Provide a Sufficient Reason
`to Wrap the Edge of Battens in the Proposed
`Combinations ............................................................................28
`The Petitioner’s Proposed Modifications are Odds
`with the Teachings of the References .......................................31
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`2.
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`3.
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`4.
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`ii
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`

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`IPR2024-00084
`U.S. Patent No. 11,168,484
`a) Crook and Kelly Teach Attaching a Membrane
`to a Wall; Kelly Teaches not to Attach to a Nailer
`as in Inzeo ...........................................................................32
`b) Kelly Discloses Using More Membrane – Not
`Less – as Alleged by Petitioner ..........................................33
`c) Petitioner’s Motivation to Avoid Nails in a Wall
`is Already Accomplished by the Primary Reference .........34
`Petitioner’s Proposed References are Incompatible .................34
`a) Inzeo’s Teachings are Incompatible with Crook
`and Would Yield a Tear in Crook’s Roof Cover ...............35
`b) Kelly’s Permanent Roof Teachings are
`Incompatible with Crook’s Temporary Roof
`Teachings ............................................................................36
`Grounds 5-6 AND 9-10: The Crook-Lowe’s Combinations
`do Not Render Obvious Claims 1-3 ....................................................39
`1.
`Lowe’s Does not Disclose the Claimed Wrapping
`of the Trailing and Leading Edges Around a Batten ................39
`The Petition Fails to Provide the Requisite
`Particularity for Combining and/or Modifying
`Crook and Lowe’s .....................................................................42
`IV. Petitioner is Estopped from Arguing that it Would be Obvious
`to Attach a Wrapped Batten to a Facia for Shrinking Wrapping. .................44
`The Board Should Exercise Its Discretion To Deny Institution
`Considering Fintiv .........................................................................................46
`A. Whether a stay exists or evidence exists that one is likely
`to be granted if a proceeding is instituted ...........................................49
`Proximity of the court’s trial date to the Board’s projected
`statutory deadline ................................................................................49
`Investment in the parallel proceeding by the court and parties...........50
`C.
`D. Overlap between issues raised in the petition and in the
`parallel proceeding ..............................................................................51
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`V.
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`B.
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`B.
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`5.
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`2.
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`iii
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`IPR2024-00084
`U.S. Patent No. 11,168,484
`E. Whether the petitioner and the defendant in the parallel
`proceeding are the same party .............................................................53
`Other circumstances that impact the Board’s exercise
`of discretion, including the merits .......................................................53
`VI. CONCLUSION ..............................................................................................54
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`F.
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`iv
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`IPR2024-00084
`U.S. Patent No. 11,168,484
`
`TABLE OF EXHIBITS
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`
`Exhibit
`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`Description
`Florida Litigation, Dkt. 60 (Order Denying Motion to Stay Pending
`IPR), Nov. 22, 2023.
`Florida Litigation, Dkt. 63 (Amended Scheduling Order), Feb. 1,
`2024.
`Florida Litigation, Dkt. 61 (Joint Motion to Amend Scheduling
`Order), Jan. 31, 2024.
`Florida Litigation, Petitioner’s Invalidity Contentions, June 26,
`2023.
`Texas Litigation, Email Chain Identifying Petitioner’s Counsel as
`Lead Counsel and Seeking Extension of Time, Dec. 8, 2023 and
`Dec. 11, 2023.
`Texas Litigation, Dkt. 7 (Answer and Counterclaim), Jan. 12,
`2024.
`Prosecution History of United States Patent Application No.
`16/294,55 (filed March 6, 2019)
`Continuity information related to United States Patent No.
`11,041,312
`Continuity information related to United States Patent No.
`11,168,484
`Florida Litigation, Dkt. 44 (Plaintiffs’ Answer to Defendant’s
`Counterclaims), April 10, 2023.
`Declaration of Ryan Loveless
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`
`v
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`IPR2024-00084
`U.S. Patent No. 11,168,484
`System Stormseal Pty Ltd. (“Patent Owner” or “Stormseal”) submits this
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`preliminary response in accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107,
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`responding to the Petition for Inter Partes Review (“Petition”) of claims 1-3 of U.S.
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`Patent No. 11,168,484 (the “’484 Patent”) filed by Structural Wrap, LLC
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`(“Petitioner” or “Structural Wrap”).
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`I.
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`INTRODUCTION
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`The Board should deny institution because the Petition fails to establish the
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`obviousness of combining all the references in each Ground—up to five references
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`in each ground—in a manner that would result in the claimed subject matter and that
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`would have been obvious to a POSITA.
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`Additionally, Petitioner is estopped from making the arguments it now makes
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`due to contrary arguments and a declaration it made to the USPTO in seeking its
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`own patent.
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`The Board should also deny institution on Fintiv grounds considering the
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`earlier filed underlying Florida Litigation where trial is set in approximately seven
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`months in September of 2024.
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`II. BACKGROUND
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`A. The ’484 Patent
`Each of the Petitions’ ten Grounds is directed to one of Independent Claims
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`1, 2, or 3. As relevant to this Preliminary Response, each of these independent
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`1
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`

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`IPR2024-00084
`U.S. Patent No. 11,168,484
`claims recite the application of a sheet or film of heat shrinkable film over a portion
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`of a roof. The sheet or film has both a “leading edge” and a “trailing edge.” Prior to
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`the heating of the sheet or film to cause it to conform to the portion of the roof, each
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`claim specifies:
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`wrapping portions of the leading edge around a first batten and
`attaching the first batten to an underside of a first eave or to a facia of
`the built structure
` and
`wrapping portions of the trailing edge around a second batten and
`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
`(Ex. 1001; Claims 1, 2, and 3). An example of this was provided with reference to
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`Figure 2 where a trailing edge is shown.
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`2
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`IPR2024-00084
`U.S. Patent No. 11,168,484
`(Ex. 1001, Fig. 2, Annotations Added). The ‘484 Patent explains that the leading
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`edge is installed similarly: “[t]he leading edge is now passed over the roof to the
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`opposite edge shown) of the roof and the leading edge secured to the opposite side
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`eaves in similar manner to that already described.” Ex. 1001, 6:36-39.
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`
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`These summarized features of Independent Claims 1, 2, and 3 addressed in
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`this Preliminary Response are seen in the text below. The Challenged Claims specify
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`many more features, as seen in the claim, which would need to be addressed if there
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`were an institution.
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`Claims
` 1. A method of providing covers over at least a portion of a roof of a storm
`damaged built structure comprising the steps of:
` 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;
` wrapping portions of the leading edge around a first batten and attaching
`the first batten to an underside of a first eave or to a facia of the built structure;
` wrapping portions of the trailing edge around a second batten and 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; and
` 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.
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` 2. A method of covering at least a portion of a roof of a built structure
`comprising the steps of:
` cutting a sheet of film from a roll of heat shrinkable film;
` 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;
` wrapping portions of the leading edge around a first batten and attaching
`the first batten to an underside of a first eave or to a facia of the built structure;
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`3
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`IPR2024-00084
`U.S. Patent No. 11,168,484
` wrapping portions of the trailing edge around a second batten and 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; and
` heating the film to cause the film to conform to the portion of the roof.
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` 3. A method of covering at least a portion of a roof of a built structure
`comprising the steps of:
` 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;
` wrapping portions of the leading edge around a first batten and attaching
`the first batten to an underside of a first eave or to a facia of the built structure;
` wrapping portions of the trailing edge around a second batten and 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; and
` heating the film to cause the film to conform to the portion of the roof.
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`B.
` Crook (Ex. 1004)
`Crook was cited in the specification of the ‘484 Patent (Ex. 1001, 1:59-61)
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`and, also, distinguished in the prosecution history despite being combined with up
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`to four secondary references. See e.g., Ex. 1002 at 216 (citing as a rejection Crook
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`being combined with Starr (US 6,206,991 – Ex. 1008), Lachapell (US 6,452,213
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`– Ex. 1009), Myrhe (US 7,517,941 – Ex. 1010), and Bettencourt (US
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`2002/0095898 – Ex. 1031)).
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`In addition to Crook failing to disclose the correct material for the film or
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`sheets for select claims, both the USPTO and the Petition recognize Crook’s
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`failure to disclose the ‘484 Patent claimed features concerning how and where
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`leading and trailing edges of the claimed sheets or film were secured. For example,
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`4
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`

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`IPR2024-00084
`U.S. Patent No. 11,168,484
`with reference to Figure 2A, roof cover 200 is attached to wall 218 “without
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`fasteners.” According to Crook, this is due to “inherent physical properties that
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`allow [the roof cover] to cling to other materials without fasteners.” (Ex. 1004,
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`¶[0029]). Crook describes this material as high-strength cellophane. (Ex. 1004,
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`¶[0062]).
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`(Ex. 1004, Fig. 2A, Coloring and Annotations Added).
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`5
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`IPR2024-00084
`U.S. Patent No. 11,168,484
`As another example, with reference to Figure 2B, roof cover 250 is attached
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`to wall 218 with fasteners or strips of tape (such as water-resistant tape) 276. Ex.
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`1004, [0029].
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`(Ex. 1004, Fig. 2A, Coloring and Annotations Added).
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`C. Lowe’s (Ex. 1016)
`For purposes of this Patent Owner Preliminary Response only, Patent Owner
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`addresses the merits of the purported Lowe’s reference (Ex 1016) and explains why
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`6
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`IPR2024-00084
`U.S. Patent No. 11,168,484
`Petitioner has failed to establish its burden in combining such a reference with other
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`references. However, Patent Owner challenges the Lowe’s video status as prior art
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`and reserves the right to further challenge its status should institution be granted.
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`Petitioner has stringed together various resources, leading a reader to believe
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`the video it presents comes from Lowe’s website. However, there are numerous
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`problems with these allegations.
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`First, the very evidence Petitioner cites from Archive.org points out that “one
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`must be a registered Lowe’s.com user to view these videos.” Ex. 1029. Thus, Ex.
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`1029 presents nothing more than a page indicating there are videos available. There
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`is no evidentiary connection to Ex 1016.
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`Second, Petitioner points to an unknown user with the name “ajdanciu” that
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`is listed along a Youtube video at a specified URL. To support alleged availability
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`of a video at the URL, Petitioner provides select portions (but not all)1 of the files
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`produced in response to a subpoena to Google. See Ex. 1049. However, none of the
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`evidence Petitioner supplies indicates the video was “searchable” or its general
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`availability over time. As a non-limiting example, there is no indication as to
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`whether the video was “listed” or whether the video was public or private (and
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`when).
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`1 Ex 1050 is purportedly the content of one of the files, but Ex. 1049 indicates two
`were produced.
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`7
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`IPR2024-00084
`U.S. Patent No. 11,168,484
` Third, Petitioner acknowledges that Ex. 1016 is a “video screen recording”
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`of a video played from a website on August 15, 2023, which purportedly was placed
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`into six PDF files.2 See Ex. 1051. Such evidence lacks the requisite connection
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`establishing the video from August 15, 2023, is the same as what would have been
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`searchable and accessible before Applicant’s priority date.
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`D. Related Proceedings
`The ’484 patent is involved in: (1) System Stormseal Pty Ltd. Et al v. American
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`Builders & Contractors Supply Co., Inc., d/b/a ABC Supply Co., Inc., et al., No. 9-
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`22-cv-81726, filed in the Southern District of Florida on November 4, 2022 (the
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`“Florida Litigation”); and (2) System Stormseal Pty Ltd. Et al v. SRS Distribution,
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`Inc., No. 2-23-cv-391, filed in the Eastern District of Texas on August 29, 2023 (the
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`“Texas Litigation”). In the Florida Litigation, Petitioner counterclaimed that Patent
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`Owner infringes Petitioner’s patent, U.S. Patent No. 11,041,312 (the ‘312 Patent).
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`See e.g., Ex. 2011. Patent Owner has asserted that Petitioner’s ‘312 Patent is invalid.
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`Id. Among other things, Patent Owner’s ‘484 Patent is prior art to Petitioner’s ‘312
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`Patent.
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`2 Patent Owner’s representatives have been unable to play the video from the PDF
`files submitted to the PTAB. Rather, error messages are returned. For the purpose
`of this Patent Owner Preliminary Response, Patent Owner refers to Petitioner’s
`Transcript (Ex. 1037) and, also, screen grabs from the current version of the video
`at the indicated URL: https://www.youtube.com/watch?v=2PKUMDmVRMY
`(“Youtube Video”).
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`8
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`

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`IPR2024-00084
`U.S. Patent No. 11,168,484
`E.
`Prosecution History of Petitioner’s ‘827 Patent3
`The Florida Litigation is not the first time Patent Owner’s patents have been
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`cited against Petitioner’s patents. Petitioner’s ‘312 Patent (currently at issue in the
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`Florida Litigation) is a continuation of U.S. Patent No. 10,472,827 (the ‘827 Patent)
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`and claims its priority from the ‘827 Patent application, U.S. Application No.
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`16/294,554 (‘554 Application). See Ex. 2009. Patent Owner’s ‘484 Patent is a
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`continuation of an application resulting in U.S. Patent No. 9,822,536 (the ‘536 Patent
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`or “Lennox”). See Ex. 2010.
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`Petitioner’s ‘554 Application (filed on March 6, 2019) had figures similar to
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`Crook – dated some 15 years earlier on February 27, 2004. See Ex. 1004, Fig. 1 –
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`top and Ex. 2008, pg. 85, Fig. 1 – bottom.
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`3 The prosecution history of the ‘827 Patent is relevant to Petitioner’s judicial
`estoppel argument below.
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`9
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`IPR2024-00084
`U.S. Patent No. 11,168,484
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`
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`In the prosecution history of Petitioner’s ‘554 Application, Lennox was
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`applied as the principle prior art reference rejecting Petitioner’s claims. See Ex.
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`2008 at 58. In response, Petitioner amended it claims to recite that the wrapped
`10
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`

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`IPR2024-00084
`U.S. Patent No. 11,168,484
`construction material—that was rolled in the end of the strip—was attached to the
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`“vertical, outward-facing fascia of the eaves of the roof” and cited Figures 4 and 5:
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`(Ex. 2008 at 32, 38). To distinguish from Lennox, Petitioner falsely claimed—either
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`intentionally or by mistake—that Lennox did not teach attaching a wrapped batten
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`
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`to a facia:
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`Lennox discloses attaching the construction material 20 to the
`underside of the eaves of the roof, i.e., the horizontal, downward-facing
`element of the eaves of the roof. See FIG. 2 of Lennox below, which
`shows Lennox attaching the construction material 20 to the underside
`of the eaves of the roof.
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`11
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`

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`IPR2024-00084
`U.S. Patent No. 11,168,484
`
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`(Ex. 2008 at 40). Petitioner now implicitly acknowledges it was wrong about
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`
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`Lennox’s teachings.4 Petitioner further argued that placement of rolled material on
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`the eaves would not have been obvious. (Ex. 2008 at 40-41). In support of this
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`argument, Petitioner provided and cited evidence in the form of a declaration. The
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`declaration recited in part:
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`7. Our amended claim 1 recites attaching the construction
`material that was rolled in the end of the strip to the vertical, outward-
`facing fascia of the eaves of the roof. The claim language above recites
`attaching the construction material to a specific component of a roof,
`namely, the vertical, outward facing facias of the eaves of the roof.
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`8. In my academic experience and my experience as a general
`contractor, it is not well known by persons of ordinary skill in the field
`of structural waterproofing and maintenance that the component of the
`roof to which a waterproofing membrane is attached is a variable that
`can be varied to obtain desired results, namely, better waterproofing.
`Specifically, the roof component to which a waterproofing membrane
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`4 See e.g., Pet. at 1 (recognizing disclosure of attaching to facias or underside of the
`eaves).
`
`
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`12
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`

`

`IPR2024-00084
`U.S. Patent No. 11,168,484
`is attached is not recognized as a particular parameter that can be
`experimented with, in order to increase or optimize the waterproofing
`process in a structural waterproofing system. Nowhere in the academic
`literature or in the prior art is there any mention of testing or varying
`the roof component to which a waterproofing membrane is attached in
`order to increase waterproofing in a structural waterproofing system.
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`9. The fact that the waterproofing membrane is attached to the
`specific roof component recited above (i.e., the recited vertical,
`outward-facing facia of the eaves of the roof) is significant because it
`is the result of over 18 months of testing in the field of
`the claimed invention to find the correct roof component to which the
`roof membrane should be attached, in order to maximize and achieve
`the desired waterproofing characteristics. Depending on certain
`environmental conditions, such as rain, wind, humidity and heat, the
`environmental water and humidity can creep in behind a roof
`membrane. We discovered during testing of the claimed invention that
`the roof component to which the roof membrane is attached can affect
`how and whether environmental water and humidity can seep in behind
`the roof membrane. Attaching the roof membrane to the recited vertical,
`outward-facing facia of the eaves of the roof is significant because it
`reduces or eliminates the amount of environmental water and
`humidity that can seep in behind the roof membrane, which results in
`better waterproofing characteristics the purpose of the claimed
`invention. The next figure (from Applicants specification) illustrates
`the location of the recited vertical, outwardfacing facia of the eaves of
`the roof (indicated by arrow).
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`(Ex. 2008 at 25-26). The USPTO’s next action was an allowance of the Petitioner’s
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`application, which issued as the ‘827 Patent. (Ex. 2008 at 11). Petitioner
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`subsequently obtained the ‘312 Patent, which claimed priority to the ‘827 Patent.
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`See Ex. 2009.
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`13
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`

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`F.
`Legal Standards
`The Petition must both “clearly point out the differences between the claimed
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`IPR2024-00084
`U.S. Patent No. 11,168,484
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`
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`invention and [the prior art]” and “explain why a person of ordinary skill in the art
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`would have found the claimed subject matter obvious in spite of those differences.”
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`Synopsys, Inc. v. Mentor Graphics Corp., IPR2012-00041, Paper 16 at 14 (P.T.A.B.
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`Feb. 22, 2013). Petitioner must specifically recite where the challenged limitation is
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`found in the secondary reference(s) and explain why a POSITA would have
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`modified the primary reference with the recited limitation from the secondary
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`reference(s). See Microsoft Corp. v. Secure Web Conf. Corp., IPR2014-00745, Paper
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`12 at 11-13 (P.T.A.B. Sept. 29, 2014). “[M]ere conclusory statements” are not
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`sufficient. Wowza Media Sys., LLC v. Adobe Sys. Inc., IPR2013-00054, Paper 12 at
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`15 (P.T.A.B. April 8, 2013).
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`G. Level of Ordinary Skill in the Art
`For purposes of this Patent Owner’s Preliminary Response, Patent Owner
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`
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`does not challenge the Petitioner’s definition of a POSITA proposed by Petitioner.
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`See Pet. at 22. Patent Owner reserves the right to further address the level of ordinary
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`skill in the art if this proceeding is instituted.
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`H. Claim Construction
`For purposes of this Patent Owner’s Preliminary Response, Patent Owner
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`
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`applies the plain meaning of any claim terms in view of the ’484 Patent’s
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`
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`14
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`IPR2024-00084
`U.S. Patent No. 11,168,484
`specification. Patent Owner reserves the right to further address claims that may
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`require construction if this proceeding is instituted.
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`III. The Board Should Deny Institution Because the Petitioner Has Not
`Satisfied Its Burden
`Petition has the burden of demonstrating unpatentability by a preponderance
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`of the evidence. However, Petitioner never identifies a single reference that discloses
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`the claimed wrapping of both of the film’s respective edges around a batten for
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`attachment to the underside of the eaves or a facia. Petitioner admits that its primary
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`reference, Crook, does not disclose these features. Thus, to remedy Crook’s
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`deficiencies, Petitioner turns to other references, a combination of Kelly and Inzeo
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`for a first set of grounds and Lowe’s for a second redundant set of grounds.5 In both
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`sets, the Petitioner misunderstands and only partially references the references’
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`respective teachings.
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`With regard to Kelly, one particularly cited embodiment (Figure 2B)
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`unambiguously does not wrap the film’s edge around a batten and the other
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`unambiguously connects a membrane to a wall without wrapping (Figure 2A).
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`Moreover, because Crook and Kelly do not disclose attaching a batten to the
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`The Petitioner acknowledges that each ground is “based on one of two basic
`5
`combinations: Crook in view of Kelly and Inzeo, or Crook in view Lowe’s.” Pet. 31.
`Combinations based on these are referred to as the “Crook-Kelly-Inzeo
`Combination” and the “Crook-Lowe’s” Combination, respectively.
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`15
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`IPR2024-00084
`U.S. Patent No. 11,168,484
`underside of an eaves or facia, the Petitioner turns to Inzeo. However, Inzeo also
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`doesn’t disclose such a teaching; rather, Inzeo teaches attaching a membrane to a
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`“nailer,” which specifically contradicts Kelly’s teaching to not attach to such a
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`“nailer.”
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`With regard to Lowe’s, the Petitioner disregarded the teachings concerning
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`attachment to a roof and attempted to double the teaching concerning one side –
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`without explanation.
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`Petitioner’s sparse motivations to combine these references in these sets fare
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`no better. With regards to the Crook-Kelly-Inzeo combinations, the alleged reasons
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`for wrapping a membrane edge with a batten (uniform distribution and sealing edge
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`of roof) are already described in Kelly as being accomplished without wrapping an
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`edge of the membrane. Also, Kelly teaches away from Inzeo’s disclosure of
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`attaching to a nailer. Further, Petitioner’s alleged motivation to modify Crook and
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`use less membrane is at odds with Kelly’s disclosure of using more membrane.
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`Likewise, Petitioner’s motivation to avoid nails in a wall is due to Petitioner’s
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`ignoring Kelly’s permanent roof design. Further, Petitioner has proposed a
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`combination that would tear a roof’s cover.
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`With regard to the Crook-Lowe combinations, the Petitioner simply alleges
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`the motivation is the same for combining the different references of Crook, Kelly,
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`IPR2024-00084
`U.S. Patent No. 11,168,484
`and Inzeo (with Lowe’s taking the place of Kelly and Inzeo). Such is insufficient to
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`provide the particularity required for combining or modifying references.
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`Moreover, with regards to both the Crook-Kelly-Inzeo combinations and
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`Crook-Lowe combinations, Petitioner chooses to disregard the teachings of such
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`references as a whole and, instead, only selectively picks elements from each of the
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`references.
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`Petitioner thus fails to satisfy its burden. Dynamic Drinkware, LLC v. Nat’l
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`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting 35 U.S.C. § 316€)
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`(stating that “the burden of persuasion is on the petitioner to prove ‘unpatentability
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`by a preponderance of the evidence’ . . . and that burden never shifts to the patentee”).
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`A. Grounds 1-4 and 7-8: The Crook-Kelly-Inzeo Combinations do
`Not Render Obvious Claims 1-3
`1. Kelly Does not Disclose the Claimed Wrapping of the Trailing
`and Leading Edges Around a Batten
`Petitioner acknowledges that Crook does not expressly disclose the claimed
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`wrapping of trailing and leadings edges around a batten. (Pet. at 57); see, also,
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`EX1011 at 286. Accordingly, the Petition relies on Kelly, alleging:
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`Kelly discloses wrapping a roof covering’s edge around a batten . . .
`and attaching it to a built structure.
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`(Pet. at 58); see, also, Pet. at 25 (“Secondary reference Kelly (Grounds 1-4, 7-8, all
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`Claims) is relied on for its teachings concerning wrapping a roof covering’s edges
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`around a batten. EX1003, ¶¶96-101.”) In making such an allegation, the Petition
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`IPR2024-00084
`U.S. Patent No. 11,168,484
`points to Figures 2A and 2B of Kelly, but ignores what Kelly is disclosing
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`concerning such embodiments. Neither discloses “wrapping a roof covering’s edge
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`around a batten . . . and attaching it to a built structure” as alleged.
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`Kelly provides a prior-art context for its disclosure with reference to Figure 1.
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`A permanent roof contains roof deck panel 16 on top of a structural roof beam 14.
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`The insulation layer 22 is installed on the roof deck panels 16 using fasteners 18. A
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`membrane 24 is attached using adhesive 26. A nailer 28 is anchored to the building
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`wall 12 by fasteners 30 and capped by gravel stop metal edging 32 over which
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`flashing 36 is installed. Ex. 1005, 1:45-60. Gravel 34 can also be placed over the
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`membrane.
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`U.S. Patent No. 11,168,484
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`(Ex. 1005, Fig. 1, Coloring and Annotations Added).
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`Kelly indicates that there are two primary problems with such a prior art
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`configuration: (1) pulling of the membrane due to high winds, and (2) moisture
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`finding its way into the nailer, causing rot. Ex. 1005, 1:21-30.
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`Accordingly, with reference to Figure 2A, Kelly disclosed extending the
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`membrane 44 over the edge of the roof and down the building wall 12 for attachment
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`with the same adhesive 26 used on the roof.
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`(Ex. 1005, Fig. 2A, Coloring and Annotations Added). Further, rather than secure
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`
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`the extended membrane 44 to the nailer 38 (Ex. 1005, 3:20-21), the membrane 44
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`could be “sandwich[ed]” to the wall using a stiff member 40. Ex. 1005, 3:31-33.
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`Additional portions of membrane 44 could be wrapped over stiff member 40
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`(using adhesive 26 again) and ultimately back over itself on top of the roof via
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`welding or glue to encapsulate the stiff member 40. Ex. 1005, 3:8-11.
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`According to Kelly, the configuration combatted the two-fold negative effects
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`of traditional designs. The “sandwiching” of the membrane along the wall prevents
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`the negative effects of the wind. Ex. 1005, 3:30-39. The encapsulation of stiff
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`member allowed the new additional member to remain dry and not rot. Ex. 1005,
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`3:39-41.
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`Figure 2B of Kelly presents an alternative embodiment. Kelly explains that
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`
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`due to cost reasons, membranes are only waterproofed on one side. Ex. 1005, 5:24-
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`27. Thus, with reference to Figure 2A, since the membrane is continuous, waterproof
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`side 76 is not facing the right direction, namely outward towards the elements. Ex.
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`1005, 5:28-32. To “overcome this problem,” Figure 2B splits the membrane to allow
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`the waterproof side 76 face outward to the elements. Ex. 1005, 5:28-46.
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`(Ex. 1005, Fig. 2B, Coloring and Annotations Added). Kelly explains that the
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`embodiment of Figure 12 can be used in Figure 2B, namely where a separate piece
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`of membrane is used to seal the newly added piece.
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`Putting aside the fact that Kelly is a permanent roof that uses adhesive to
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`secure a membrane (and has gravel placed over it), Kelly has no interest in
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`“wrapping” the trailing and leading edges for attachment as claimed. In the
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`U.S. Patent No. 11,168,484
`embodiment of Figure 2B of Kelly, the edge of membrane ends partially down the
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`wall.
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`(Ex. 1005, Fig. 2B, Coloring and Annotations Added). Accordingly, the edge is
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`wrapped around nothing.
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`In the embodiment of Figure 2A of Kelly, the edge of the membrane is secured
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`first by adhesive 26 and then by attaching a stiff member 40 to create the
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`aforementioned “sandwiching” effect to avoid upward movement of wind.
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`(Ex. 1005, Fig. 2A, Coloring and Annotations Added). In this alternative
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`configuration, there is no wrapping of the edge around a batten and then securing as
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`claimed. Rather, the stiff member is secured to the wall before any encapsulation has
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`occurred.
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`To encapsulate both the stiff member and the heads of the fasteners, the
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`membrane can be extended back over the fasteners (using the adhesive again).
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`(Ex. 1005, Fig. 2A, Coloring and Annotations Added). However, the stiff member
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`and membrane have already been secured to the wall. The encapsulation here serves
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`the purpose of preventi