IPR2015-00650, Paper No. 31
`June 3, 2016
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`trials@uspto.gov
`571-272-7822
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`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`OWENS CORNING
`Petitioner
`vs.
`FAST FELT CORPORATION
`Patent Owner
`- - - - - -
`Case IPR2015-00650
`Application 12/704981
`Technology Center 1700
`Patent 8,137,757 B2
`- - - - - -
`Oral Hearing Held: May 11, 2016
`
`Before: JO-ANNE M. KOKOSKI, KRISTINA M. KALAN
`(via video), and BRIAN P. MURPHY (via video), Administrative Patent
`Judges
`
`The above-entitled matter came on for hearing on Wednesday,
`May 11, 2016 at the U.S. Patent and Trademark Office, 600 Dulany Street,
`Alexandria, Virginia in Courtroom A, at 1:00 p.m.
`
`
`
`BEFORE: KAREN BRYNTESON, RMR, CRR, FAPR
`
`
`June 3, 2016
`
`
`
`
`
`trials@uspto.gov
`571-272-7822
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`OWENS CORNING
`Petitioner
`vs.
`FAST FELT CORPORATION
`Patent Owner
`- - - - - -
`Case IPR2015-00650
`Application 12/704981
`Technology Center 1700
`Patent 8,137,757 B2
`- - - - - -
`Oral Hearing Held: May 11, 2016
`
`Before: JO-ANNE M. KOKOSKI, KRISTINA M. KALAN
`(via video), and BRIAN P. MURPHY (via video), Administrative Patent
`Judges
`
`The above-entitled matter came on for hearing on Wednesday,
`May 11, 2016 at the U.S. Patent and Trademark Office, 600 Dulany Street,
`Alexandria, Virginia in Courtroom A, at 1:00 p.m.
`
`
`
`BEFORE: KAREN BRYNTESON, RMR, CRR, FAPR
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`NED PEJIC, ESQ.
`JENNIFER B. WICK, ESQ.
`Calfee, Halter & Griswold LLP
`1405 East Sixth Street
`Cleveland, OH 44114
`216-622-8823
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`ON BEHALF OF THE PATENT OWNER:
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`GREG L. PORTER, ESQ.
`JAMES C. WILLSON, ESQ.
`Andrews Kurth LLP
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`600 Travis Street, Suite 4200
`Houston, TX 77002
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`713-220-4621
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`JAMES D. PETRUZZI, ESQ.
`The Petruzzi Law Firm
`4900 Woodway Drive, Suite 745
`Houston, TX 77056
`713-840-9993
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`ALSO PRESENT:
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`JAMES A. GIBB, Owens Corning
`STEPHEN L. SCHARF, Owen Corning
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`Case IPR2015-00650
`Application 12/704981
`Patent 8,137,757 B2
`
`
`P R O C E E D I N G S
`
`(1:00 p.m.)
`
`JUDGE KOKOSKI: Please be seated.
`Good afternoon. We will now hear argument in
`Case Number IPR2015- 00650, Owens Corning versus Fast Felt
`Corporation, which concerns U.S. Patent Number 8,137,757.
`I am Judge Kokoski. And Judges Kalan and
`Murphy are appearing remotely. At this time we would like
`counsel to state their appearances for the record. Please speak
`into the microphone at the podium and also let us know who
`you have with you, beginning with Petitioner, please.
`MR. PEJIC: Ned Pejic, lead counsel for
`Petitioner. With me as back- up counsel, Jennifer Wick. And
`on behalf of Owens Corning, Jim Gibb and Steve Scharf.
`JUDGE KOKOSKI: Thank you.
`MR. PORTER: Greg Porter on behalf of Patent
`Owner, Fast Felt. And I have Jim Petruzzi and James Willson
`with me.
`
`JUDGE KOKOSKI: Thank you.
`Before we begin, I would like to remind the parties
`this hearing is open to the public and a full transcript of the
`hearing will be made part of the record.
`Also, please keep in mind that whatever is
`projected on the screen will not be viewable by Judges Kalan
`and Murphy. When you refer to an exhibit on the screen,
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`Case IPR2015-00650
`Application 12/704981
`Patent 8,137,757 B2
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`please state the slide or page number to which you are
`referring for the record.
`This is also important for clarity in the transcript.
`And also make sure that you are speaking into the
`microphone, so that the remote judges can hear you.
`In order to keep this hearing focused on the merits
`of the case, we ask counsel not to interrupt each other to make
`objections. Any objections can be discussed during response
`and rebuttal time.
`Petitioner bears the burden of proof that the claims
`at issue are unpatentable and may proceed first. You have a
`total of 30 minutes, and may reserve some of that time for
`rebuttal.
`
`How much time would you like to reserve, if any?
`MR. PEJIC: 15 minutes for rebuttal.
`JUDGE KOKOSKI: Okay. You can see we have
`the countdown clock there, so I won't be giving you a warning
`when we get to 15 minutes.
`MR. PEJIC: Thank you.
`JUDGE KOKOSKI: You can proceed when you are
`
`ready.
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`MR. PEJIC: Good afternoon. Thank you for the
`opportunity to be heard.
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`Case IPR2015-00650
`Application 12/704981
`Patent 8,137,757 B2
`
`
`There is no dispute in this case that depositing
`polymers on roofing and building cover materials is old and
`well-known. I would like to refer to slide 2.
`Lassiter Exhibit 1003 teaches nozzles 26 for
`depositing polymer nail tabs on roofing or building cover
`material 17. I would like to refer to slide 3, please.
`There is also no dispute that many different
`techniques can be interchangeably used to deposit polymers
`on roofing and building cover materials. In particular, the art
`of record teaches nozzles and rolls can be interchangeably
`used.
`
`Allman Exhibit 1006 teaches rolls or nozzles as
`alternative techniques for depositing polymers on roofing or
`building cover materials. I would like to refer you to slide 4.
`Indeed, Patent Owner's expert agreed that nozzles
`like ink jet and rolls, like in gravure, can be used to print on
`building cover materials, such as wallpaper. Let me refer you
`to slide 5.
`There is also no dispute that using rolls to deposit
`polymers offers recognized advantages over nozzle-type
`deposition techniques. These recognized advantages include
`the ability to deposit polymers on a wide range of substrates,
`including surfaces otherwise difficult to deposit on and with
`high quality and speed.
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`Case IPR2015-00650
`Application 12/704981
`Patent 8,137,757 B2
`
`
`It is also recognized that roll-based techniques
`offer simplicity and components, reliability, and
`predictability. Roll-based techniques are one of a finite
`number of solutions for depositing polymers on substrates and
`with predictable results.
`This is evidence in the record by Hefele
`Exhibit 1004, Bayer Exhibit 1007, Eaton Exhibit 1005, and
`gravure process reference, Exhibit 1011, and Petitioner's
`expert, Dr. Levenson.
`One of ordinary skill in the art would recognize
`these well-known advantages and substitute a roll-based
`system for depositing polymers instead of a nozzle-based
`system. I would like to refer you now to slide 46.
`Slide 46 comes from the prior art Bohan article
`and illustrates the tool chest that a person of ordinary skill in
`the art of printing would have available. It is clear that one
`of ordinary skill in the art would understand many
`characteristics of how to print on a wide variety of substrates
`and using a wide variety of polymers.
`I would like to go to slide 6, please.
`I guess as background, the Board instituted review
`on three grounds of obviousness; Lassiter in view of Hefele,
`Lassiter in view of Bayer, and Lassiter in view of Eaton. We
`believe these decisions are correct, and we believe the
`evidence accumulated since then supports these decisions.
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`Case IPR2015-00650
`Application 12/704981
`Patent 8,137,757 B2
`
`
`Slide 7.
`Faced with overwhelming evidence of obviousness,
`the Patent Owner resorts to arguing many limitations that are
`not in the claims. And even if such limitations were in the
`claims, they are all disclosed in the primary reference,
`Lassiter.
`
`Patent Owner further argues the references cannot
`be combined based on their physical structures, but that is not
`the law. Patent Owner also argues the references somehow
`teach away, but fails to indicate specifically where the
`references criticize, discredit, or otherwise indicate the
`undesirability of the proposed solutions.
`Our petitions and briefs explain our positions and
`explain why each of the challenged claims are unpatentable
`and why Patent Owner's arguments all miss the mark. Slide 8,
`please.
`
`At the outset one of the issues in this case is
`whether the '757 patent and its claims are directed to printing.
`Patent Owner argues, no, but we believe the answer is
`undeniably yes. The title of the '757 patent says Print
`Methodology.
`The summary of the invention says the invention is
`to the print method, and then goes on to describe printing
`components and printing process steps. Indeed, the word
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`Case IPR2015-00650
`Application 12/704981
`Patent 8,137,757 B2
`
`"print" or "printing" is used over 100 times in the
`specification of the '757 patent.
`Slides 9 through 11, please.
`Patent Owner's expert, Dr. Bohan, further
`conceded that each of the '757 patent figures show printing or
`print components and that the claims included printing steps.
`
`
`
`Slide 12, please.
`So one of the issues is what do the claims recite
`and what do they not recite? The Institution decision
`indicated no express construction of any claim terms was
`necessary.
`Patent Owner similarly asserted no express
`construction of any claim terms was necessary.
`Slide 13, please.
`Nevertheless, Patent Owner heavily argues the
`claims are distinguished based on saturated or coated
`substrates. However, looking at the claim language, it is clear
`that these are not claimed and, therefore, cannot distinguish
`the claims.
`The '757 patent claims do not recite any type of
`saturated or coated substrate.
`JUDGE MURPHY: Mr. Pejic, this is Judge
`Murphy. If I could stop you there for a moment, please.
`MR. PEJIC: Sure.
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`Case IPR2015-00650
`Application 12/704981
`Patent 8,137,757 B2
`
`
`JUDGE MURPHY: So in reading Patent Owner's
`response, they seem to be focusing on the first comprising
`clause in the claim, claim 1, which comprises treating an
`extended length of substrate.
`How do you read that portion of the claim?
`MR. PEJIC: So initially it does appear to -- it
`does appear in the preamble. So there is a question and an
`analysis which needs to occur, whether the preamble is
`limiting. There is legal precedent for analyzing that.
`That precedent and argument does not appear in
`Patent Owner's response. Patent Owner is very clear that no
`construction is necessary, so it is not quite clear how Patent
`Owner's interpreting it.
`Our position is it is preamble language and,
`therefore, it is not limiting.
`JUDGE MURPHY: Let me just follow up with one
`more question before you continue. If it is not limiting as a
`preamble, in the following step that is in the body of the -- of
`the methods claim, it refers to said roofing or building cover
`materials and the antecedent basis for that, at least, appears to
`be in the preamble.
`And so I recognize that this wasn't briefed and
`that's one of our -- one of the things we have to grapple with
`now. So we will do our best. And I know it wasn't briefed,
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`Case IPR2015-00650
`Application 12/704981
`Patent 8,137,757 B2
`
`but it seems to me it is an important issue that needs to get
`resolved.
`
`So there is a line of cases that suggests if there is
`antecedent basis in the preamble, they -- in this case, for
`roofing or building cover materials, they could be or perhaps
`should be considered substantive limitations. And I want to
`know what your response to that would be.
`MR. PEJIC: Sure. So it seems like that might be
`a separate argument. If you are going to -- if one could focus
`on roofing or building cover material and then its subsequent
`use in the body of the claim, that appears to be a different
`argument than focusing on the word treating an extended
`length of substrate, which does not appear literally anywhere
`in the body of the claim.
`And, in fact, one might also question under the
`broadest reasonable interpretation if treating an extended
`length of substrate should be construed that it may even be the
`body of the rest of the claim, that that is the treatment that is
`going on. It is the depositing. So how is the substrate being
`treated?
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`Is it being treated by depositing tab material on to
`the surface, or roofing or building cover material. So there is
`several ways you can look at it. None of it has been briefed
`or brought up in this manner by Patent Owner.
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`Case IPR2015-00650
`Application 12/704981
`Patent 8,137,757 B2
`
`
`JUDGE MURPHY: Okay. And just so I am clear
`then, so your view of it is that the substrate, which is being
`processed in the steps of the claim, does not necessarily have
`to be treated or pretreated, for example, with asphalt
`saturation or that type of thing?
`MR. PEJIC: That's correct, Your Honor. If I
`could direct you to a slide that refers to what is disclosed in
`the '757 patent regarding what types of substrates can be
`deposited upon, so I would like to go to slide 17.
`So on slide 17, what we have there are excerpts
`from the '757 patent which plainly indicate that the nail tab
`material can be deposited on a base substrate material or a
`saturated or coated material. That's the first quote in the top
`left.
`
`In the lower left it says, "the process to make nail
`tabs or continuous reinforcing strips is to convey the substrate
`material and/or the saturated underlayment." In the third
`quote, it says, "in a preferred embodiment, roofing material
`104 may be comprised of a composite of materials, including
`the base substrate roofing material (roofing material prior to
`its saturation or coating)."
`And then the last quote on the page indicates that
`they may be deposited on the roofing material, including
`immediately before or after dipping of a substrate material.
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`Case IPR2015-00650
`Application 12/704981
`Patent 8,137,757 B2
`
`
`So if you turn to the specification for guidance,
`what you see is a very clear indication in multiple places that
`the roofing or building cover material does not have to be a
`saturated substrate. And, in fact, the treating can be the
`depositing of the nail tab material on to the surface.
`And I will further add that the '757 patent is not
`limited to roofing materials. In fact, the '757 patent states
`that it could be for -- the building cover material can be for
`stud walls, which are distinct from a roof.
`JUDGE MURPHY: And, Mr. Pejic, this is Judge
`Murphy again. In that regard, for a building cover material as
`opposed to a roofing material, does a building cover material
`that is used for the purpose that is described in the patent and
`as you were just mentioning, can it be used without any
`'pretreatment" or asphalt treatment at all or must it be treated
`in some way?
`MR. PEJIC: Sure, so I am not an expert in the
`area, but I will tell you I have driven by many houses being
`built that have the white paper that is a synthetic weave that
`is a house wrap, I believe they call it. When I built my house
`I had a white synthetic wrap that was simply plastic. It had
`no coating on it whatsoever.
`So just from my ordinary daily experience and
`when I see homes being built on. So it would not require a
`coating of any kind.
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`Case IPR2015-00650
`Application 12/704981
`Patent 8,137,757 B2
`
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`JUDGE MURPHY: Thank you.
`MR. PEJIC: Okay. So let me go here. So in a
`parallel fashion, the primary reference, Lassiter, similarly
`discloses that nail tabs can be deposited on either a saturated
`or unsaturated substrate.
`Referring to slide 18, the Lassiter reference
`indicates that in addition to saturated felt material used in the
`roofing application, suitable nail tabs can be similarly
`installed using liquid thermal plastic tab material to other
`base sheeting materials, such as siding materials used for
`wrapping the side of a framed house or other structure prior to
`securing the finished siding.
`And the specific example that Lassiter gives for
`covering a wall is a Styrofoam board. And he does not
`disclose that there is any coating. In fact, he says you can
`skip the coating process and jump right to the nail tab
`deposition process in Lassiter.
`So Lassiter very much like the patent in question
`discloses the deposition of nail tabs on either saturated or
`unsaturated building cover materials.
`JUDGE KALAN: I have a question about Lassiter.
`There is no point during the Lassiter process where those nail
`tabs, once being deposited, are subject to any sort of pressure,
`is there?
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`Case IPR2015-00650
`Application 12/704981
`Patent 8,137,757 B2
`
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`MR. PEJIC: The word pressure in that context is
`not specifically mentioned in Lassiter. There is at most --
`JUDGE KALAN: I am looking at -- go ahead.
`MR. PEJIC: I was going to say there is a
`disclosure after the tabs are deposited. And let's jump to the
`figure. I think it is -- let's go to slide 2. Yeah, slide 2.
`So Lassiter discloses that reference Number 32 is a
`grooved wheel. And Lassiter states that the wheel is grooved
`in order to minimize any possible scraping action.
`So it is --
`JUDGE KALAN: Does that scraping indicate that
`the tabs are avoiding pressure in order to maintain their shape
`or is there some other interpretation?
`MR. PEJIC: Well, just by the word scraping, I
`guess the ordinary meaning of scraping would mean to, by
`some action, scrape the object off of, you know, where it is.
`It doesn't actually speak to pressure. It really
`speaks to minimizing scraping on the nail tabs. So there may
`or may not be pressure. It is just --
`JUDGE KALAN: Does it rise to the level of --
`would you say that rises to a level of teaching away from
`applying pressure on the nail tabs of Lassiter or is there some
`other interpretation we should be considering?
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`Case IPR2015-00650
`Application 12/704981
`Patent 8,137,757 B2
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`MR. PEJIC: Yeah, so what is important to note
`here is that that wheel 32 is done after the deposition process.
`So it is not being used at all to deposit the nail tabs.
`What is being used in Lassiter to deposit nail tabs
`are the nozzles 26.
`And the proposed combinations are saying that
`instead of using nozzles to deposit nail tabs, we can use rolls
`to deposit them. So the argument that the rolls that are used
`for depositing would somehow scrape off the nail tabs doesn't
`make much sense because the rolls actually have little
`etchings in them. And these etchings are filled with a tab
`material. And as the rolls rotate, the rolls actually deposit the
`tab material. They don't scrape them off. They are the
`depositing structure.
`JUDGE MURPHY: Mr. Pejic, it is Judge Murphy.
`Just a quick follow- up on that. So if we're looking at Lassiter
`and I am looking at your slide 2, which has Lassiter figure 1,
`and the nozzle element 26 depositing the -- sort of what you
`have labeled as nail tabs 29A, B, et cetera, your argument is
`that the pressure rolling mechanism from the other secondary
`references is replacing the, simply the nozzle portion or would
`be in place of -- used in place of Lassiter's nozzle deposition
`step or -- or apparatus before you got to roll 32?
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`Case IPR2015-00650
`Application 12/704981
`Patent 8,137,757 B2
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`MR. PEJIC: Yes, that's correct. And the art of
`record on the next page, Allman, indicates that you can use
`either rolls or nozzles to deposit. They are interchangeable.
`JUDGE MURPHY: Okay. Thank you.
`MR. PEJIC: The next thing I would like to note on
`slide 20 to 21, is neither of Patent Owner's experts considered
`the disclosure in the '757 patent that the building or roofing
`cover material can be uncoated or unsaturated.
`They simply said that wasn't what we were told to
`do. We just started with a saturated coating. So they, indeed,
`performed an incomplete analysis.
`I would refer you to slide 22. An argument made
`over and over by Patent Owner is that the proposed grounds
`can be distinguished on the basis of the explicit content of the
`secondary references and that that explicit content prevented
`their bodily incorporation into Lassiter.
`We know that's not the law. And we also know
`that that ignores the broader teaching provided in these
`references, which is that polymer tabs can be deposited using
`gravure or roll-based systems. Nowhere in the record does
`Patent Owner dispute that gravure and roll-based systems can
`be used to deposit polymer tab material.
`Patent Owner also argues significantly that
`Lassiter is limited to a hot asphalt environment -- I am
`referring to slide 24 -- to a hot asphalt environment that
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`Application 12/704981
`Patent 8,137,757 B2
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`would contaminate and render inoperable the secondary
`references.
`The problem with that is Lassiter is not limited to
`a hot asphalt environment. Lassiter discloses that if you are
`going to saturate the substrate, that you can use a chill roll to
`cool it or you can drive a coated substrate through a cool
`ambient environment so that by the time it reaches the
`deposition area, which is reference number 18 in Lassiter
`figure 1, there isn't a hot asphalt environment. It is a cooled
`substrate.
`Furthermore, Lassiter discloses it doesn't even to
`have to be coated or saturated at all, like the Styrofoam
`boards we talked about earlier. So the issue of contamination
`is not a significant one. And Lassiter, it is not even supported
`by Lassiter, because Lassiter cools the asphalt or doesn't even
`put it on.
`
`Furthermore, Patent Owner has argued that the
`secondary references have an open polymer supply, which
`would get contaminated by a hot asphalt environment. Well,
`if that was indeed the case, well then Lassiter teaches a closed
`polymer supply, and we would not need to look to Hefele,
`Bayer or Eaton or any of the secondary references for a closed
`polymer supply.
`In Lassiter we have a pressurized tank and pump
`29 that feeds the nozzles 26, so it has a closed polymer
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`supply, which would not be subject to contamination. And we
`would not need to look any further in that regard as well.
`Patent Owner also heavily argues unrecited nail
`tab limitations. Slide 28, please.
`Patent Owner argues that the claims are somehow
`limited to nail tab thickness, volume, shape, visibility,
`reinforcement, pullout, pull-through, burst strength, tear
`resistance, and rupture strength. None of those are recited in
`any of the challenged claims.
`Further, as a reminder Patent Owner asserted in its
`briefing that no claim terms required any express
`construction. And on slides 29 through 30, both of Patent
`Owner's experts conceded that these limitations are not
`present in the recited claims.
`And yet, further, even if they were recited,
`Lassiter discloses all of these nail tab limitations. I would
`like to refer to slides 31 through 33. Slide 31, Lassiter
`discloses size, width, thickness, volume, and shape. In slide
`32, Lassiter discloses pulling out, tearing, pull- through and
`reinforcement.
`And in slide 33, color contrasting dye and
`visibility. I would like to reserve the rest of my time for
`rebuttal.
`
`JUDGE KOKOSKI: Okay, thank you.
`
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`Case IPR2015-00650
`Application 12/704981
`Patent 8,137,757 B2
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`
`Patent Owner, when you are ready, you have 30
`minutes for your response.
`MR. PORTER: Thank you, Your Honor. We will
`just work from the paper slides as opposed to interrupting to
`put it up on the screen.
`JUDGE KOKOSKI: Okay.
`MR. PORTER: I wanted to start, first of all, by
`correcting one thing Mr. Pejic said. And that was he said that
`the treating step was not briefed. And that's not correct.
`In Patent Owner statements at pages 10, 14, 17,
`and 21, it talks about that treating step that is an express
`limitation of claim 1. And it was also the fact that a roofing
`or building cover material before the -- after the treating step
`is a saturated asphalt is discussed in both of the Patent
`Owner's expert declarations, which are the only direct
`testimony or any testimony in this case as to what a roofing or
`building cover material is.
`JUDGE MURPHY: Mr. Porter, this is Judge
`
`Murphy.
`
`Do you agree, however, that those terms are in the
`preamble of the claim as it is drafted?
`MR. PORTER: I believe that is the first step of
`the claim is the treating step, which then leads to the roofing
`or building cover material, which is the depositing step of
`claim 1.
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`And so the difference between independent claim 1
`and independent claim 7 is exactly that treating step. In claim
`7, it starts with the roofing or building cover material and
`then deposits on to that. It doesn't have that limitation of
`first doing the treating step.
`Does that answer your question, Your Honor?
`JUDGE MURPHY: I think so. So you are
`suggesting that the treating step is actually part of the claimed
`process and it is not merely part of a preamble?
`MR. PORTER: Correct, Your Honor, it is.
`JUDGE MURPHY: Was that briefed?
`MR. PORTER: As I said, it was discussed in the
`Patent Owner response at page 10, 14, 17, and 21 where it was
`discussed that the treating step specifically describes the
`treating of an extended length of substrate with the asphalt.
`And it is in reference to column 7, lines 50 to 54, of the
`specification.
`And if you have the slides there on slide 17 of our
`slide deck, we have that precise language that pertains to the
`treating step of claim 1.
`JUDGE MURPHY: Okay. So we understand the
`issue because it is an important issue for us to resolve, right?
`I mean, Patent Owner is taking the view that the nail tabs with
`the tabbed material in the process must be deposited on a
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`Application 12/704981
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`treated substrate, not an unsaturated or untreated substrate; is
`that correct?
`MR. PORTER: That -- that is correct, Your
`Honor, that the roofing or building covering material as that
`term is used in the claims is a saturated asphalt material. And
`that was described by both of Patent Owner's experts. And it
`is the only evidence in the case of what a roofing or building
`cover material means in the context of the '757 patent.
`The Petitioner's expert originally thought, and the
`thrust of the petition and what they were asserting was that
`the -- the roofing or building covering material was simply
`paper, which when the Petitioner's expert was deposed, he
`admitted it is steps removed from being a roofing or building
`cover material. And I have that --
`JUDGE KALAN: Counsel, somewhere between
`uncoated material and asphalt coated material, the
`specification seems to allow for cover materials that would be
`used, for example, on a stud wall.
`Are those coated with asphalt or something else or
`nothing at all?
`MR. PORTER: That's not part of the claim. Those
`may be embodiments of other inventions, but the claims at
`issue pertain to the roofing or building covering material,
`which is the external part of a building or roof. And it is
`subjected to the weather and the wind conditions, so that the
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`nail tab, which has a reinforcing function, can help hold that
`and sustain the roofing or building cover material from the
`weather.
`
`JUDGE KALAN: But in the specification in the
`background of the invention, it does discuss cover materials
`that might be applied to a wall, for example, in column 1, line
`30 or so.
`
`Are you saying that is not the subject of the claims
`
`at issue?
`
`MR. PORTER: No, that could be the subject of
`the claims at issue, but that would be on, again, on the
`exterior of a roofing or building cover material. So -- does
`that answer your question, Your Honor? Because stud wall,
`you are going to have the inside and you are going to have the
`outside.
`
`And when we're talking about a building, a roofing
`cover material, we're talking about the exterior of the building
`or the roof.
`JUDGE KALAN: I am just having a difficult time
`reconciling the use of the term building cover material in the
`claims with the descriptions in the specification of cover
`material, as something that it seems to me might not be
`asphalt coated or might not necessarily be used on the exterior
`of the building.
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`Case IPR2015-00650
`Application 12/704981
`Patent 8,137,757 B2
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`
`MR. PORTER: In the context of these claims and
`on this record, the only evidence of what a building and
`roofing cover material is that it is an asphalt saturated
`substrate. And that was in Exhibit 2003, which is the direct
`testimony of the roofing expert; the only person in this case,
`which has a roofing background at paragraphs 37 and 55.
`He was very direct. And it is unrebutted that a
`roofing or building cover material, as understood in the
`context of these claims, is an asphalt saturated substrate.
`JUDGE KALAN: So you are saying the language
`of the specification wouldn't cover, for example, the Tyvek
`that Petitioner's counsel is talking about or some other wrap
`or lighter material?
`MR. PORTER: Potentially not. The claims of this
`patent are -- of the building and roofing cover material, which
`results from the treating step of claim 1. And that's also
`found in column 7, line 50 to 54.
`But to make a decision in this case, the Board
`doesn't have to reach that step. It doesn't have to make that
`decision because the nail tab itself has a reinforcing function.
`And that's something that the Petitioner's expert and the
`petition didn't leave room for.
`Nail tab as its plain and ordinary meaning has a
`reinforcing function. That is, it is an alternative to the tin
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`Case IPR2015-00650
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`caps and the prior caps that were used, washers, to hold the
`roofing or other building cover material in place.
`And the combinations that are suggested by the
`Petitioner simply can't make a nail tab. The Hefele reference
`is just some powder, discontinuous powder, which wouldn't
`slow or stop the head of a nail. The Bayer is simply a Post- It
`note with some adhesive on the back. Again, that wouldn't
`meet a nail tab.
`JUDGE KOKOSKI: But, excuse me, counsel. Isn't
`it the case that Lassiter does disclose a nail tab as you are
`describing it with the reinforcing function?
`MR. PORTER: It does, Your Honor. And that's an
`excellent point because Lassiter has a nail tab, but what the
`simple substitution that is set up by the petition is to
`substitute the thing, the nozzle, and what does form a nail tab
`with -- with these three systems that do not and cannot form a
`nail tab.
`
`JUDGE KOKOSKI: So -- well, I don't know that
`that's the case. I mean, if you are substituting in the rollers
`for the nozzles, why can't you just -- I guess my question is
`why can't you just substitute in the roller part of Bayer or
`Hefele or Eaton into where the nozzles are in Lassiter? Why
`would you need to bodily incorporate all of Bayer, Eaton, or
`Hefele into Lassiter?
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`Case IPR2015-00650
`Application 12/704981
`Patent 8,137,757 B2
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`
`MR. POR
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