United States Court of Appeals
`for the Federal Circuit
`______________________
`
`OWENS CORNING,
`Appellant
`
`v.
`
`FAST FELT CORPORATION,
`Appellee
`______________________
`
`2016-2613
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2015-
`00650.
`
`______________________
`
`Decided: October 11, 2017
`______________________
`
` CONSTANTINE L. TRELA, JR., Sidley Austin LLP, Chi-
`cago, IL, argued for appellant. Also represented by
`THOMAS D. REIN, STEVEN J. HOROWITZ, STEPHANIE P. KOH,
`BRYAN C. MULDER; PETER S. CHOI, ANNA MAYERGOYZ
`WEINBERG, Washington, DC.
`
`SCOTT A. BRISTER, Andrews Kurth Kenyon LLP,
`
`Austin, TX, argued for appellee. Also represented by
`GREGORY LAWRENCE PORTER, Houston, TX; JAMES D.
`PETRUZZI, The Petruzzi Law Firm, Houston, TX.
`______________________
`
`
`

`

`
`
` 2
`
` OWENS CORNING v. FAST FELT CORPORATION
`
`Before NEWMAN, DYK, and TARANTO, Circuit Judges.
`TARANTO, Circuit Judge.
`Fast Felt Corporation owns U.S. Patent No.
`8,137,757, which describes and claims methods for print-
`ing nail tabs or reinforcement strips on roofing or building
`cover material. Fast Felt sued Owens Corning for in-
`fringement, and Owens Corning then filed a petition with
`the Patent and Trademark Office (PTO) seeking an inter
`partes review of claims 1, 2, 4, 6, and 7 under 35 U.S.C.
`§§ 311–19. The Patent Trial and Appeal Board, acting as
`the delegate of the PTO’s Director under 37 C.F.R.
`§ 42.4(a), instituted a review of all of the challenged
`claims on grounds of obviousness. Institution of Inter
`Partes Review at 26, Owens Corning v. Fast Felt Corp.,
`No. IPR2015-00650 (P.T.A.B. Aug. 13, 2015), Paper No. 9
`(Institution Decision). After conducting the review, the
`Board concluded that Owens Corning had failed to show
`obviousness of any of the challenged claims. Final Writ-
`ten Decision, Owens Corning v. Fast Felt Corp., No.
`IPR2015-00650, 2016 WL 8999740, at *23 (P.T.A.B. Aug.
`11, 2016) (Final Decision).
`Owens Corning appeals from the Board’s decision. It
`contends that, once the key claim term is given its broad-
`est reasonable interpretation, the record conclusively
`establishes obviousness. We agree, and we reverse the
`Board’s decision.
`
`I
`A
`The ’757 patent addresses applying polymer “nail
`tabs” on “roofing and building cover material.” ’757
`patent, abstract; id., col. 1, lines 29–34 (“The invention
`relates generally to roofing materials or other building
`materials normally employed as cover materials over a
`wood roof deck or stud wall and more specifically to such
`cover materials and methods for incorporating therein a
`
`

`

`OWENS CORNING v. FAST FELT CORPORATION
`
`3
`
`plurality of integrally formed nail tabs or a continuous
`reinforcing strip.”). The specification explains that nail
`tabs have been used to reinforce specific locations on
`roofing or building cover material at which nails will be
`driven through the material to attach it to a wood roof
`deck or a building stud wall. See id., col. 1, lines 29–34.
`Such reinforcement helps prevent the nails from tearing
`through the cover material. See id., col. 2, lines 20–26.
`Commonly, the specification observes, separate washers
`or tabs are applied with every nail to provide reinforce-
`ment, but that practice is expensive, inefficient, and
`dangerous. Id., col. 2, lines 44–63.
`The ’757 patent proposes an asserted improvement:
`use of an “automated” process to “permanently and relia-
`bly” affix or bond “tab material that quickly solidifies and
`adheres or bonds to the surface.” Id., col. 5, line 63–col. 6,
`line 2. The surface to which the tab material is affixed or
`bonded can be “either dry felt, saturated felt, a fiberglass,
`polyester or other inorganic substrate roofing material
`whether or not coated with asphalt or an asphalt mix, or
`roll roofing material or shingles.” Id., col. 5, lines 64–67.
`The automated process can be “gravure, rotogravure or
`gravure-like transfer printing (the ‘gravure process’) or
`offset printing.” Id., col. 3, lines 24–26.1
`Claim 1 is one of two independent claims. It reads:
`A method of making a roofing or building cov-
`er material, which comprises treating an extended
`length of substrate, comprising the steps of:
`
`
`1 Gravure printing transfers a print material from
`an engraved cylinder directly onto a substrate. Appel-
`lant’s Br. 7. Offset-gravure printing uses a second roller
`to pick up the print material from the engraved cylinder
`and transfer the print material onto the substrate. Id. at
`8.
`
`

`

`
`
` 4
`
` OWENS CORNING v. FAST FELT CORPORATION
`
`depositing tab material onto the surface of
`said roofing or building cover material at a plural-
`ity of nail tabs from a lamination roll, said tab
`material bonding to the surface of said roofing or
`building cover material by pressure between said
`roll and said surface.
`Id., col. 13, lines 13–20. All of the challenged claims
`contain the claim term “roofing or building cover materi-
`al.” Id., col. 13, line 13–col. 14, line 17. Claim 7, the
`second independent claim, is similar to claim 1 but does
`not require a lamination roll. Id., col. 14, lines 11–17. On
`appeal, the parties treat independent claims 1 and 7 as
`substantively equivalent. Several dependent claims add
`narrowing limitations, but Fast Felt does not argue them
`separately here.
`
`B
`The Board instituted review on three grounds, all un-
`der 35 U.S.C. § 103 (2006). Institution Decision at 26.2
`Owens Corning does not press one of those grounds on
`appeal, so we discuss only two of the grounds. U.S. Pa-
`tent No. 6,451,409 (Lassiter) is the key piece of prior art.
`It specifically teaches a process of using nozzles to deposit
`polymer nail tabs on roofing and building cover materials
`to solve some of the same industry problems as are identi-
`fied in the ’757 patent. Lassiter, abstract, col. 1, lines 10–
`15, col. 2, lines 3–18.
`The first ground of asserted unpatentability, applica-
`ble to claims 1, 2, 4, 6, and 7, is obviousness over a combi-
`nation of Lassiter and U.S. Patent No. 5,101,759 (Hefele).
`
`2 The ’757 patent, which issued from a 2010 appli-
`cation, is governed by the version of § 103 that was in
`effect before the provision’s amendment by the Leahy-
`Smith America Invents Act, Pub. L. No. 112-29, § 3(n)(1),
`125 Stat. 284, 293 (2011).
`
`

`

`OWENS CORNING v. FAST FELT CORPORATION
`
`5
`
`Institution Decision at 26. Hefele discloses an offset-
`gravure printing process using a pressure roller to form
`“grid-like coatings” on a variety of “web-like flexible
`planar” materials. Hefele, abstract. The other asserted
`ground of unpatentability that is presented to us, applica-
`ble to claims 1, 2, 4, 6, and 7, is obviousness over a combi-
`nation of Lassiter and U.S. Patent No. 6,875,710 (Eaton).
`Institution Decision at 26. Eaton discloses a process of
`using a transfer roll to apply “discrete polymeric regions”
`to reinforce various substrates and a process for laminat-
`ing two substrates together. Eaton, col. 2, lines 16–29,
`col. 3, lines 6–22.
`In its Final Written Decision, the Board found that,
`contrary to Fast Felt’s contentions, all of the elements of
`the independent claims are disclosed in Lassiter when
`combined with either Hefele or Eaton. See Final Decision,
`2016 WL 8999740, at *12–13, *20–21. Fast Felt has not
`meaningfully argued to this court that those findings are
`unsupported by substantial evidence.3 The Board further
`found that Owens Corning had failed to show that a
`skilled artisan would have combined Lassiter with Hefele
`or Eaton. Id. at *13–15, *21–22. On that basis, the Board
`rejected Owens Corning’s challenges to claim 1. Id.
`Finding no material difference between claim 1 and either
`claim 7 or the dependent claims 2, 4, and 6, the Board
`also rejected the challenges to those claims for the same
`reasons. Id. at *16, *22.
`Owens Corning appeals the Board’s decision. We
`have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
`
`3 The two-sentence footnote in Fast Felt’s brief re-
`asserting its position, Appellee’s Br. 5 n.2, does not suffice
`to preserve a challenge. See SmithKline Beecham Corp. v.
`Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006). In
`any event, it does not persuasively show error by the
`Board in this respect.
`
`

`

`
`
` 6
`
` OWENS CORNING v. FAST FELT CORPORATION
`
`II
`A
`Owens Corning first argues that the Board, when
`evaluating obviousness in light of the prior art, at least
`implicitly adopted an erroneous claim construction.
`Specifically, it contends that the Board effectively treated
`the “roofing or building cover material” as limited to
`material that either has been or would be coated or satu-
`rated with asphalt or asphalt mix. And it contends that
`such a construction is legally incorrect under the broad-
`est-reasonable-interpretation standard applicable in the
`IPR. We agree as to both parts of this contention.
`In the claim-construction portion of its opinion, the
`Board construed the claim term “roofing or building cover
`material” to mean “base substrate materials such as dry
`felt, fiberglass mat, and/or polyester mat, before coating
`or saturation with asphalt or asphalt mix, and asphalt
`coated or saturated substrates such as tar paper and
`saturated felt.” Final Decision, 2016 WL 8999740, at *4.
`It later noted, correctly, that this construction “does not
`require an asphalt-coated substrate.” Id. at *14. But
`when evaluating Owens Corning’s arguments regarding
`motivation to combine and reasonable expectation of
`success, the Board made clear its understanding of its
`construction, and hence of the claims, as requiring mate-
`rials that would eventually be coated with asphalt even if
`they had not already been coated before printing. Id. at
`*13–16, *21–22.
`That is evident in the Board’s determination, based on
`a statement in Lassiter and certain expert testimony, that
`Lassiter would discourage a skilled artisan from using
`“high temperatures and roller pressure” to apply nail tabs
`to a base substrate. Id. at *14, *21. The cited statement
`in Lassiter refers only to problems during an asphalt
`coating process after nail tabs have been applied. Lassit-
`er, col. 2, lines 32–40. And both of Fast Felt’s experts, Dr.
`
`

`

`OWENS CORNING v. FAST FELT CORPORATION
`
`7
`
`Bohan and Mr. Todd, testified that they considered only
`“heavily saturated asphalt” materials in their analyses.
`Bohan Dep. J.A. 1436–37, Todd Dep. J.A. 1542–43.
`The same understanding of the claims is evident in
`the Board’s rejection of Owens Corning’s argument that
`the gravure-based methods in Hefele and Eaton were
`interchangeable with Lassiter’s nozzle-based method.
`The Board reasoned that Owens Corning had not ac-
`counted for the differences in materials. Final Decision,
`2016 WL 8999740, at *15, *22. In doing so, the Board
`relied on the testimony of Fast Felt’s expert, Mr. Todd,
`that Hefele and Eaton do not “address utilizing anything
`even remotely resembling a heavily asphalt saturated
`substrate,” and “[w]ithout this link there does not seem to
`be any reason someone manufacturing a roofing product
`would ever look to a common printing or coating process.”
`Id. The Board simply did not address roofing or building
`cover materials that would never be coated in asphalt.
`The exclusion of such materials from the scope of the
`claims is mistaken. In an inter partes review proceeding,
`the Board is to give a claim “its broadest reasonable
`construction in light of the specification of the patent in
`which it appears.” 37 C.F.R. § 42.100(b). “We review
`underlying factual determinations concerning extrinsic
`evidence for substantial evidence and the ultimate con-
`struction of the claim de novo.” In re Cuozzo Speed
`Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir. 2015), aff’d
`sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131 (2016). It is not reasonable to read the claims as
`limited to materials that either have been or are to be
`coated or saturated with asphalt or asphalt mix.
`It is true that the preferred embodiments in the ’757
`patent focus on roofing materials that are or will be
`coated or saturated with asphalt or asphalt mix. See, e.g.,
`’757 patent, col. 7, lines 27–54. But that is not enough to
`narrow the claim scope in the IPR. The claims are plainly
`
`

`

`
`
` 8
`
` OWENS CORNING v. FAST FELT CORPORATION
`
`not so limited. Indeed, they are not even limited to “roof-
`ing materials,” as they all expressly include “building
`cover material” as well as roofing material. Id., col. 13,
`line 13–col. 14, line 25. Moreover, even the specification,
`when not discussing preferred embodiments, is not lim-
`ited to roofing materials: it speaks of “roofing materials or
`other building materials normally employed as cover
`materials over a wood roof deck or stud wall.” Id., col. 1,
`lines 29–31. And Fast Felt has not disputed, or pointed to
`any evidence disputing, that some building cover materi-
`als (like the common Tyvek wrap referred to in the Board
`oral argument) is commonly installed without ever being
`coated or saturated with asphalt or asphalt mix.
`In these circumstances, the broadest reasonable con-
`struction of “roofing or building cover material” would
`include materials that neither have been nor are to be
`coated or saturated with asphalt or asphalt mix. We
`conclude that the Board erred in effectively construing the
`claims to exclude such materials.
`B
`In this case, it is not necessary or appropriate to re-
`mand for the Board to reassess the evidence in light of the
`correct claim construction. On the evidence and argu-
`ments presented to the Board, there is only one possible
`evidence-supported finding: the Board’s rejection of Ow-
`ens Corning’s challenge, when the correct construction is
`employed, is not supported by substantial evidence. See,
`e.g., Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077,
`1082 (Fed. Cir. 2015) (reversing rejection of IPR chal-
`lenge). Moreover, in this court, after Owens Corning
`sought outright reversal on this ground in its opening
`brief, Fast Felt in its responsive brief did not ask for a
`remand if this court adopted a claim interpretation not
`limited by any requirement of asphalt coating or satura-
`tion. In particular, Fast Felt did not respond that this
`was a late-arising interpretation and it had lacked an
`
`

`

`OWENS CORNING v. FAST FELT CORPORATION
`
`9
`
`opportunity in the Board proceedings to introduce evi-
`dence relevant under this interpretation. Nor do we see a
`basis for such an argument. Owens Corning’s petition did
`not restrict the claim scope based on coating or satura-
`tion; the Institution Decision did not adopt such a limiting
`construction, Institution Decision at 5; and when Fast Felt
`relied on a limitation based on asphalt coating or satura-
`tion in its Patent Owner’s Response, Owens Corning
`clearly asserted in its Reply that “Asphalt Saturated
`Substrates Cannot Be Used To Distinguish The Prior Art
`Because No Such Limitation Is Recited In The Claims,”
`J.A. 339. In these circumstances, where only one answer
`is supported by substantial evidence and there is neither
`a request nor an apparent reason to grant a second rec-
`ord-making opportunity, reversal is warranted.
`Whether a claimed invention would have been obvious
`is a question of law (reviewed de novo), based on factual
`determinations (reviewed for substantial-evidence sup-
`port) regarding the scope and content of the prior art,
`differences between the prior art and the claims at issue,
`the level of ordinary skill in the pertinent art, the motiva-
`tions to modify or combine prior art, and any objective
`indicia of non-obviousness. Randall Mfg. v. Rea, 733 F.3d
`1355, 1362 (Fed. Cir. 2013). Here, as explained above, it
`is settled that the prior-art combinations at issue disclose
`all of the elements of the claims. The only question is
`whether a relevant skilled artisan would have been led to
`make the combinations with a reasonable expectation of
`success. See L.A. Biomedical Research Inst. at Harbor-
`UCLA Med. Ctr. v. Eli Lilly & Co., 849 F.3d 1049, 1064
`(Fed. Cir. 2017). As relevant here, that inquiry is to be
`conducted in light of the Supreme Court’s observation
`that “[t]he combination of familiar elements according to
`known methods is likely to be obvious when it does no
`more than yield predictable results.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 416 (2007).
`
`

`

`
`
` 10
`
` OWENS CORNING v. FAST FELT CORPORATION
`
`Lassiter itself, by its terms, suggests that a person of
`ordinary skill in the art would be motivated to print nail
`tabs on building cover materials that are not and will not
`be asphalt coated. Lassiter teaches its process for such
`building cover materials, including “covering sheets” and
`“styrofoam board sheathing” that can be attached to stud
`walls. Lassiter, col. 7, line 25–col. 8, line 2. Before the
`Board, at the oral argument, Owens Corning discussed
`covering sheets such as plastic “house wrap,” and a Board
`member specifically asked about “Tyvek . . . or some other
`wrap or lighter material.” J.A. 416, 427. Fast Felt’s
`expert, Mr. Todd, also mentioned “synthetic underlay-
`ment” materials in his declaration. Final Decision, 2016
`WL 8999740, at *10 (quoting Todd Decl. ¶ 8, J.A. 1656).
`There is no evidence that any of these materials must be
`coated with asphalt.
`As to expert testimony, the only such testimony about
`printing on materials not coated or to be coated (or satu-
`rated) with asphalt (or asphalt mix) is that of Dr. Leven-
`son, Owens Corning’s expert. The Board found that the
`knowledge of an ordinary skilled artisan would include
`“knowledge of . . . gravure/offset printing,” Final Decision,
`2016 WL 8999740, at *9, and Dr. Levenson attested to
`that knowledge. He explained, citing Hefele and a text-
`book, that a gravure process would allow for polymer nail
`tabs to be printed on a wider range of substrates (e.g.,
`“synthetic” and “polyethylene” (plastic) materials, Leven-
`son Dep. J.A. 1818) and would provide economic ad-
`vantages over nozzle-based methods. Owens Corning, No.
`IPR2015-00650, Ex. 1014, Levenson Decl. ¶¶ 40–41.
`Owens Corning provided background materials that
`clearly support Dr. Levenson’s testimony. J.A. 803, 805–
`08. Dr. Levenson further testified that the prior-art
`combinations involved “a simple substitution of one well
`known polymer deposition technique [nozzle-based print-
`ing] for another [gravure-based printing] to obtain pre-
`dictable results.” Ex. 1014, Levenson Decl. ¶¶ 43–44.
`
`

`

`OWENS CORNING v. FAST FELT CORPORATION
`
`11
`
`Fast Felt had no meaningful evidence in response to
`the foregoing that was independent of its too-narrow view
`of what materials are covered by the patent at issue. The
`testimony of its experts, Mr. Todd and Dr. Bohan, wheth-
`er as to motivation to combine or teaching away or expec-
`tation of success, was entirely based on an analysis of
`asphalt saturated substrates. J.A. 1694–96, 1698, 1704–
`05, 1738, 1757–59. Fast Felt’s evidence did not answer
`Owens Corning’s evidence as to other, building cover
`materials. And the Board’s statement that Dr. Levenson
`“does not provide any objective support for his opinion”
`about motivation to combine and expectation of success,
`Final Decision, 2016 WL 8999740, at *15, *22, not only is
`dependent on the improperly narrow focus of Fast Felt’s
`experts, but plainly contradicts the record, given the
`documentary supporting materials submitted, when the
`focus is widened, as it must be, to include substrates not
`(yet or to be) asphalt coated or saturated.
`Based on the record before us, there is only one per-
`missible factual finding—a skilled artisan would be
`motivated to combine the prior-art references to print nail
`tabs on building cover materials that are not (already or
`to be) asphalt coated or saturated. Lassiter’s nozzle-based
`printing technique and Hefele’s and Eaton’s gravure-
`based printing processes were known substitutes, with
`success predictable as to materials covered by the claims.
`There is no substantial evidence to the contrary. “[W]hen
`a patent simply arranges old elements with each perform-
`ing the same function it had been known to perform and
`yields no more than one would expect from such an ar-
`rangement, the combination is obvious.” KSR, 550 U.S. at
`417 (internal quotation marks omitted).
`That conclusion requires reversal as to claim 1. And
`Fast Felt has not made any argument to us for a different
`result as to independent claim 7 or as to dependent claims
`2, 4, and 6.
`
`

`

`
`
` 12
`
` OWENS CORNING v. FAST FELT CORPORATION
`
`III
`For the foregoing reasons, we hold that claims 1, 2, 4,
`6, and 7 of the ’757 patent are unpatentable for obvious-
`ness. The Board’s decision is reversed.
`REVERSED
`
`