Ecofasten Solar, LLC

Patent Trials and Appeals Board

Oct 1, 2021

IPR2021-00733 (P.T.A.B. Oct. 1, 2021)

Trials@uspto.gov Paper 7
571-272-7822 Entered: October 1, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIRAC, INC.,
Petitioner,
v.
ECOFASTEN SOLAR, LLC,
Patent Owner.

IPR2021-00733
Patent 10,676,929 B2

Before SCOTT B. HOWARD, SEAN P. O’HANLON, and
BRENT M. DOUGAL, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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Patent 10,676,929 B2
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INTRODUCTION
A. Background and Summary
Unirac, Inc. (“Petitioner”) filed a Petition requesting inter partes
review of claims 1–3, 5, and 7–14 of U.S. Patent No. 10,676,929 B2
(Ex. 1001, “the ’929 patent”). Paper 2 (“Pet.”). EcoFasten Solar, LLC
(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
We have authority, acting on the designation of the Director, to
determine whether to institute an inter partes review under 35 U.S.C. § 314
and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless
“the information presented in the petition filed under section 311 and any
response filed under section 313 shows that there is a reasonable likelihood
that the petitioner would prevail with respect to at least 1 of the claims
challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When
instituting inter partes review, the Board will authorize the review to
proceed on all of the challenged claims and on all grounds of unpatentability
asserted for each claim.” PTAB Rules of Practice for Instituting on All
Challenged Patent Claims and All Grounds and Eliminating the Presumption
at Institution Favoring Petitioner as to Testimonial Evidence, 85 Fed. Reg.
79,120, 79,129 (Dec. 9, 2020) (to be codified at 37 C.F.R. § 42.108(a)).
B. Real Parties in Interest
Petitioner identifies itself as the real party in interest. Pet. 89.
Patent Owner identifies itself as the real party in interest. Paper 5, 1.
C. Related Matters
The parties identify the following pending district court proceeding in
which the ’929 patent is asserted: EcoFasten Solar, LLC v. Unirac, Inc.,
No. 1:20-CV-01008 (D.N.M.). Pet. 89–90; Paper 5, 1. The parties also
identify the following pending patent application which claims the benefit of
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the application that issued as the ’929 patent: 16/863,997. Pet. 90; Paper 5,
1.
D. The ’929 Patent
The ’929 patent is entitled “Roof Mounting System” and is directed
“to mounting assemblies for supporting solar panels and other structures on
roof tops.” Ex. 1001, code (54), 3:8–9. Figure 105, colorized and annotated
by Petitioner, is reproduced below.

Pet. 3. Figure 105 is an exploded view of a tile mount assembly 4010 which
can be coupled to the upper surface of a roof. Ex. 1001, 7:30–31, 43:36–39.
“The tile mount 4010 includes a base 4020 [(yellow)], a block or standoff
4030 [(purple)], a flashing 4040 [(red)], and a bracket 4050 [(blue)].” Id. at
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43:39–41. “[F]lashing 4040 includes [(1)] an embossed portion or boss
4120” with a hole 4130 and (2) “a grommet or seal 4140 [(green)] . . .
positioned within the hole 4130.” Id. at 44:4–10. “In general, the flashing
4040 is formed in a shape that corresponds to the shape of the other tiles
supported on the roof so that that flashing 4040 will mate with the other tiles
and blend in with the other tiles by mimicking their appearance.” Id. at
44:45–49. “The flashing 4040 is formed to replace an existing tile on a roof
and interlock with the adjacent tiles. . . .” Id. at 44:49–52.
Figure 117, colorized and annotated by Petitioner, is reproduced
below.

Pet. 6. Figure 117 is an exploded view of a tile mount assembly. Ex. 1001,
7:58–59. “The components of this embodiment are substantially similar to
the components of the tile mount 4010 [shown above in Figure 105], and are
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indicated with similar reference numbers, plus 400.” Id. at 45:8–11. This
embodiment also includes “shims 4428 [(brown)] . . . positioned between the
standoff 4430 and the base 4420. The shims 4428 provide an additional
height adjustment to position the flashing 4440 at the desired elevation
above the roof 4012 with respect to adjacent tiles.” Id. at 45:17–21.
E. Illustrative Claims
Claims 1 and 10 are independent claims, are illustrative of the
challenged claims, and are reproduced below.
1. A mount assembly, comprising:
a base comprising a pair of flanges extending
longitudinally along the base, and a central portion between the
pair of flanges;
a standoff positionable on the central portion of the base,
the standoff secured to the base with a fastener, wherein a height
of the standoff is adjustable;
a tile flashing above the base and the standoff, the tile
flashing including a first aperture;
a bracket having a second aperture, wherein the bracket is
installable on the tile flashing and is supported by the standoff;
and
a preformed rubber seal having a first end portion, a
second end portion and a middle portion, the preformed rubber
seal defining a third aperture through the first end portion, the
second end portion and the middle portion,
wherein the first aperture, the second aperture and the third
aperture are concentrically aligned.
Ex. 1001, 47:51–48:2.
10. A tile mount assembly, comprising:
a base comprising a pair of flanges including a first flange
and a second flange that extend longitudinally along the base,
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and a base central portion between the first flange and the second
flange,
a standoff comprising a top surface, the standoff is coupled
to and supported by the base central portion;
a tile flashing comprising an embossed portion installable
on the base and the standoff, the tile flashing defining a first
aperture wherein the top surface of the standoff aligns with the
embossed portion of the tile flashing;
a bracket having a second aperture, wherein the bracket is
installable on the embossed portion of the tile flashing and is
supported by the standoff; and
a rubber seal comprising a first end portion having a first
diameter, a second end portion having a second diameter, and a
seal central portion having a third diameter between the first end
portion and the second end portion, the rubber seal defining a
third aperture through the first end portion the seal central
portion, and the second end portion,
wherein the third diameter is less than the first and
second diameters forming a notch between the first end
portion and the second end portion, and
wherein the first aperture, the second aperture and
the third aperture are concentrically aligned in the tile
mount assembly.
Ex. 1001, 48:23–49.
F. Prior Art and Asserted Grounds
Petitioner asserts that claims 1–3, 5, and 7–14 would have been
unpatentable on the following grounds:
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Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis
1–3, 7–14 103 McPheeters,2 Plaisted,3 Thaler4
5 103 McPheeters, Plaisted, Thaler, Glicksman5
Petitioner also relies on the declaration testimony of Philip D. Dregger
(Ex. 1003). Patent Owner relies on the declaration testimony of Barry
Cinnamon (Ex. 2001) and Bart Leusink (Ex. 2004).
ANALYSIS
A. Legal Standards
In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the
Supreme Court set out a framework for assessing obviousness under
35 U.S.C. § 103 that requires consideration of four factors: (1) the “level of
ordinary skill in the pertinent art,” (2) the “scope and content of the prior
art,” (3) the “differences between the prior art and the claims at issue,” and
(4) if in evidence, “secondary considerations” of non-obviousness such as
“commercial success, long-felt but unsolved needs, failure of others, etc.”
Id. at 17–18. “While the sequence of these questions might be reordered in

1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. The
application for the ’929 patent was filed on December 10, 2018. Although
the ’929 patent claims priority to applications filed before March 16, 2013,
Patent Owner has not shown that the written description of the earlier
applications supports the challenged claims. See Dynamic Drinkware, LLC
v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378–79 (Fed. Cir. 2015).
Accordingly, we apply the AIA version of the statute.
2 US 8,250,819 B2, issued Aug. 28, 2012 (Ex. 1006).
3 US 7,857,269 B2, issued Dec. 28, 2010 (Ex. 1009).
4 US 6,185,885 B1, issued Feb, 13, 2001 (Ex. 1007).
5 US 3,168,321, issued Feb. 2, 1965 (Ex. 1008).
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any particular case,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407
(2007), the U.S. Court of Appeals for the Federal Circuit has repeatedly
emphasized that “it is error to reach a conclusion of obviousness until all
those factors are considered,” WBIP v. Kohler, 829 F.3d 1317, 1328 (Fed.
Cir. 2016).
B. Level of Ordinary Skill in the Art
In determining whether an invention would have been obvious at the
time it was made, we consider the level of ordinary skill in the pertinent art
at the time of the invention. Graham, 383 U.S. at 17. “The importance of
resolving the level of ordinary skill in the art lies in the necessity of
maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person having
ordinary skill in the art” is a hypothetical construct, from whose vantage
point obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir.
1998).
Factors pertinent to a determination of the level of ordinary skill in the
art include “(1) the educational level of the inventor; (2) type of problems
encountered in the art; (3) prior art solutions to those problems; (4) rapidity
with which innovations are made; (5) sophistication of the technology; and
(6) educational level of active workers in the field.” Envtl. Designs, Ltd. v.
Union Oil Co. of Cal., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing
Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every
case, and one or more of these or other factors may predominate in a
particular case.” Id.
Petitioner argues that a person having ordinary skill in the art would
have had “a Bachelor of Science degree in a relevant engineering discipline,
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such as mechanical, structural, civil, or industrial engineering, and a couple
of years of experience.” Pet. 13; see also Ex. 1003 ¶¶ 21–23. Petitioner
argues in the alternative that instead of an engineering degree, the person
having ordinary skill in the art “would have at least several years of
experience designing, investigating, repairing, or installing roof mounting
systems or roof assembly systems.” Pet. 13; see also Ex. 1003 ¶¶ 21–23.
Petitioner also argues that “[h]igher levels of education may substitute for
less experience, and more experience may substitute for the specified level
of education.” Pet. 13; see also Ex. 1003 ¶¶ 21–23.
Patent Owner “does not challenge” Petitioner’s proposed level of
ordinary skill. Prelim. Resp. 6.
Accordingly, for purposes of this Decision, we adopt Petitioner’s
proposed formulation of the level of ordinary skill in the art, except that we
delete the qualifier “at least” to eliminate vagueness as to the amount of
practical experience. The qualifier expands the range indefinitely without an
upper bound, and thus, precludes a meaningful indication of the level of
ordinary skill in the art.
C. Claim Construction
We apply the same claim construction standard used in the federal
courts, in other words, the claim construction standard that would be used to
construe the claim in a civil action under 35 U.S.C. § 282(b), which is
articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
banc). 37 C.F.R. § 42.100(b) (2020). Under the Phillips standard, the
“words of a claim ‘are generally given their ordinary and customary
meaning,’” which is “the meaning that the term would have to a person of
ordinary skill in the art in question at the time of the invention, i.e., as of the
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effective filing date of the patent application.” Phillips, 415 F.3d at 1312–
13.
Petitioner proposes a construction for the term “tile flashing.” See
Pet. 12–13.
Patent Owner does not provide any proposed claim constructions. See
Prelim. Resp.
1. Tile Flashing
Petitioner argues that, based on the portion of the specification
describing Figures 104–128, a person having ordinary skill in the art would
have understood the term to include “a flashing that mimics the shape of a
tile and is integrated with adjacent tiles.” Pet. 13 (citing Ex. 1001,
44:45–52; Ex. 1003 ¶¶ 50–52).
We agree with the first part of Petitioner’s proposed construction: “a
flashing that mimics the shape of a title.” That language is supported by the
specification of the ’929 patent, which describes the flashing used in Figures
104–128 as follows:
In general, the flashing 4040 is formed in a shape that
corresponds to the shape of the other tile supported on the roof
so that that flashing 4040 will mate with the other tiles and blend
in with the other tiles by mimicking their appearance. The
flashing 4040 is formed to replace an existing tile on a roof and
interlock with the adjacent tiles (e.g., by grooves 4242 and/or
tabs 4244).
Ex. 1001:44:45–52 (emphases added). As the emphasized language makes
clear, flashing 4040—that is the tile flashing—will mimic the shape of the
tiles.
However, we disagree with the second portion of Petitioner’s
proposed construction—“integrated with adjacent tiles.” The “integrated
with adjacent tiles” portion of the proposed construction would require the
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tile flashing to be located on a roof with tiles. However, both independent
claims 1 and 10 are directed to a mount assembly and the claims do not
recite any requirement that the mount assembly be connected with a roof, let
alone a roof with tiles. See Ex. 1001, 47:51–48:2, 48:23–49. In fact, the
claims simply recite the individual elements of the assembly and how they
are to be assembled without requiring them to be assembled. See id.
(reciting elements are positionable and installable, not positioned and
installed). Because the ordinary meaning of the claims does not require an
assembled mount assembly placed on a roof, we will not read such a
limitation into the claims.
Accordingly, based on the current record, we conclude that the term
“tile flashing” means “a flashing that mimics the shape of a tile.”
2. Remaining Terms
For purposes of this Decision, we need not construe expressly any
other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only
construe terms ‘that are in controversy, and only to the extent necessary to
resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
D. Asserted Obviousness in View of McPheeters, Plaisted, and
Thales
Petitioner argues that claims 1–3 and 7–14 would have been obvious
over McPheeters, Plaisted, and Thales. See Pet. 41–75. Based on the
current record, we are not sufficiently persuaded that Petitioner has
established a reasonable likelihood of prevailing on this asserted
obviousness ground with respect to any of claims 1–3 and 7–14.
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1. McPheeters
McPheeters is entitled “Module Attachment Apparatus” and is
directed “to securing a solar module or other component to a surface.”
Ex. 1005, code (57), 1:19–20. McPheeters Figure 3a is reproduced below.

Figure 3a “shows a perspective view of a base according to an exemplary
embodiment.” Ex. 1006, 3:60–61. “In this exemplary embodiment, a base
330a is secured to a roof 320 by a bolt 330 . . . extending from the base 330a
[and] away from the roof 320.” Id. at 7:38–41.
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McPheeters Figure 3b is reproduced below:

Figure 3b “shows a perspective view of a flashing according to an
exemplary embodiment.” Ex. 1006, 3:62–63. More specifically, Figure 3b
depicts “flashing 340 . . . installed over the base 330a and substantially over
the post 330b.” Id. at 7:41–43. “The flashing has a substantially flat
rectangular component 340a and a post flashing component 340b that
substantially covers the base 330a and the post 330b. The post flashing
component 340b can be substantially cone-shaped.” Id. at 7:43–47.
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McPheeters Figure 3c is reproduced below.

Figure 3c “shows a perspective view of a flashing according to an alternative
exemplary embodiment.” Ex. 1006, 3:64–65. In this modification to the
embodiment shown in Figure 3b above, substantially flat rectangular
component 340a is replaced by rectangular component 340c which “can
mimic the undulating shape of the roof 320 to allow for better protection of
the base 330a.” 8:45–50. Id. After the flashing has been installed, a clamp
can be placed over the exposed portion of the post. See id. at Fig. 3d.
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McPheeters Figure 5d is reproduced below.

Figure 5d “shows a cross sectional view of a clamp assembly according to
an exemplary embodiment.” Ex. 1006, 4:15–16. Figure 5d depicts “a post
500 . . . secured to a standoff base 510 using a bolt 520” and a clamp 520
securing a rail 540 to the post 500. Id. at 8:40–42. Figure 5d further shows
two spacers 550 which provides height adjustment. See id. at 8:42–46,
8:49–57. Use of the post 500 alone, with one spacer 550, or two spacers 550
allow the clamp to be adjusted from a height of about 7.5 inches to about
10.5 inches. Id. at 8:55–60, Figs. 5a–5d.
2. Plaisted
Plaisted is entitled “Mounting Assembly for Arrays and Other
Surface-Mounted Equipment” and is directed to a “mounting system . . . for
supporting equipment such as solar module arrays on a rooftop or other
underlying surface.” Ex. 1009, codes (54), (57).
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Plaisted Figures 4A and 4B are reproduced below.

Figures 4A “is a mounting assembly shown with multiple water proofing
features” and Figure 4B “is a side cross-sectional view of FIG. 4A, cut along
lines B-B.” Ex. 1009, 1:46–49.
Plaisted describes two waterproofing features. Ex. 1009, 6:1–49. One
waterproofing feature is skirt 360. Id. at 6:15–16. The shape of the skirt is
used to direct water outward to avoid the assembly: “[S]kirt 360 may
correspond to a structure that has a cross-section 361 of maximum
dimension and taper to a cross-section 363 of minimum dimension at a
height above. With this geometry, rainwater or other moisture may be
directed outward while falling downward to the mounting assembly and
underlying surface.” Id. at 6:7–12. “[S]kirt 360 may be integrally or
unitarily formed or attached onto the upper connector 310.” Id. at 6:6–7.
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The second waterproofing feature is flashing sub-assembly 410. See
Ex. 1009, 6:19–27. “[T]he flashing sub-assembly 410 includes a conically
shaped flashing member 412 that is unitarily or otherwise integrated with a
platform 414. The platform 414 may be planar and thin in dimension to
form a suitable flashing surface.” Id. at 6:21-25.
Skirt 360 and flashing sub-assembly 410 work together to provide
waterproofing:
In combination, skirt 360 diverts rainwater from coming
into contact with the pipe 120. An embodiment recognizes that
the pipe 120 is a most likely place for water leakage onto the
underlying body, and reduction of water that falls into this area
when the mounting assembly is assembled further reduces the
possibility of leakage. In this manner, the skirt 360 provides a
weatherproofed counter-flashing over the flashing member 412,
which may be integrated with a rooftop or other surface through
platform 414 to seal the pipe 120 and foot 430 against water
intrusion.
Ex. 1009, 6:28–37 (emphasis added).
As shown in Figure 4B, “the flashing sub-assembly 410 includes the
extension 412 that extends conically from the platform 414 to taper into top
section 419.” Ex. 1009, 6:39–41. “The skirt 360 extends outward over the
top section 419.” Id. at 6:41–42. As described in Plaisted, skirt 360 is
separate from and not a part of flashing sub-assembly 410. See id. at 6:1–49,
Figs. 4A, 4B.
3. Thaler
Thaler is entitled “Roof Flashing Assembly” and is directed “to roof
flashings of the type which provide a waterproof and weather resistant seal
between a roof of a building structure and pipes, vent stacks, support
members for roof mounted apparatus, or other elongate members projecting
from the roof.” Ex. 1007, code (54), 1:4–10.
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Thaler Figure 1 is reproduced below.

Figure 1 is a sectional view of the roof flashing assembly and shows, inter
alia, (1) an assembly comprising a flashing with base portion 32 and
(2) boss portion 34 extending from base portion 32 and inserted into resilient
grommet 40. Ex. 1007, 4:17–19, 5:1–12, 6:49–53.
Thaler Figure 5 is reproduced below.

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Figure 5 “is a perspective view of the resilient grommet of FIG. 1, shown
partially in phantom outline.” Ex. 1007, 4:26–27.
[T]he resilient grommet 40 comprises an annular grommet body
82, having a groove 84 extending circumferentially around an
outer base surface 85 of the grommet body 82, with said resilient
grommet 40 being assembled on the upper end 35 of the boss
portion 34 in resilient sealing engagement with the annular
flange portion 80 of the body member 30, by means of frictional
engagement between said annular flange portion 80 and said
groove 84.
Id. at 6:54–62.
4. Analysis of Claims 1–3 and 7–9
Claim 1 recites “a tile flashing above the base and the standoff.”
Ex. 1001, 47:58–62. Claims 2, 3, and 7–9 depend, directly or indirectly,
from claim 1.
a) Petitioner’s Argument
Petitioner argues that McPheeters teaches using flashing that mimics
the shape of the tiles of the roof. Pet. 45–46 (citing Ex. 1006, 7:37–52, Fig.
3a–3d; Ex. 1003 ¶ 98). Petitioner directs our attention to an annotated and
colorized version of McPheeters Figure 3c, reproduced below.

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Id. at 46. Petitioner modified McPheeters Figure 3c (previously discussed)
by coloring the flashing red, coloring the standoff purple, and adding a “Tile
Flashing” annotation pointing towards the portion of the flashing that is
undulating. Id.
Petitioner also argues that a person having ordinary skill in the art
would have modified “McPheeters with the teachings of Plaisted to include a
bracket connector having an integral skirt that performs the function of
flashing.” Pet. 46 (citing Ex. 1003 ¶ 99). According to Petitioner, “[w]ith
the teachings of McPheeters modified according to the teachings of Plaisted,
the portion of the connector covering the post or standoff and having the
integral skirt performs the function of flashing, working in conjunction with
other flashing elements to divert water.” Id. (citing Ex. 1003 ¶ 100).
Petitioner further argues that “in the modified assembly, the McPheeters’
flashing (comprising components 340a, 340b and which mimics a tile roof)
working in conjunction with the portions of Plaisted’s connector 310
performing the flashing function together constitute a ‘tile flashing,’ as
indeed McPheeters and Plaisted themselves teach that flashing can comprise
multiple elements.” Id. at 47 (citing Ex. 1003 ¶ 101); see also Ex. 1003
¶ 101 (citing Ex. 1009, 6:1–49). Petitioner also argues that this tile flashing
is above the base and the standoff and directs our attention to an annotated
and colorized version of Plaisted Figure 4B, reproduced below.
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Id. at 48. Petitioner annotated Plaisted Figure 4B (previously discussed) by
using red to identify what Petitioner calls the flashing and purple to identify
what Petitioner calls the standoff. Id.
b) Patent Owner’s Arguments
Patent Owner argues that none of the prior art Petitioner relies on
teaches “a tile flashing above the base and the standoff” as recited in claim
1. Prelim. Resp. 24 (emphasis omitted). Specifically, Patent Owner argues
that Petitioner “identifies a flashing in McPheeters with a standoff that
protrudes through the flashing, like many flashings used on all types of roofs
to create water tight vents and the like.” Id. (citing Ex. 2001 ¶ 68). Patent
Owner then argues that Petitioner “modifies the McPheeters flashing to
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include a structural connector with a skirt from Plaisted. [Petitioner] states
that the structural connector is a flashing, but it is not.” Id. Instead,
according to Patent Owner, Plaisted’s skirt is “counter flashing” which is not
recited in claim 1. Id. at 25. Patent Owner also argues that the conical skirt
is not tile flashing but “is part of a structural connector.” Id.
Patent Owner further argues that Plaisted’s connector—including the
skirt—“neither mimics the shape of a tile nor is integrated with adjacent
tiles. The connector of Plaisted is structural and could not practically be
fabricated with a curved lower section to match with the flashing below or
adjacent tiles. The connector is a rigid member designed to support solar
arrays.” Prelim. Resp. 25 (citations omitted).
c) Our analysis
Based on the current record, we are not sufficiently persuaded by
Petitioner’s argument.
Petitioner has sufficiently shown that McPheeters teaches using “tile
flashing.” McPheeters describes a first embodiment shown in Figure 3b that
describes flashing 340 that is installed over base 330a and substantially over
post 330b. Ex. 1006, Fig. 3b, 7:37–43. As shown in Figure 3b and
described in the Specification, “[t]he flashing has a substantially flat
rectangular component 340a and a post flashing component 340b that
substantially covers the base 330a and the post 330b. The post flashing
component 340b can be substantially cone-shaped.” Id. at Fig. 3b, 7:42–47.
McPheeters further describes an alternate embodiment in which the
flashing’s substantially flat rectangular component 340a is replaced with a
section of flashing that mimics the undulating shape of the roof: “In an
alternative embodiment shown in FIG. 3c, a rectangular component 340c
can mimic the undulating shape of the roof 320 to allow for better protection
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of the base 330a.” Ex. 1006, 7:47–50. As shown in Figure 3c—reproduced
supra—the flashing consists of post flashing component 340b that is a cone-
shaped portion over the base and post and an undulating portion for the rest
of the flashing. Id. at Fig. 3c. However, as post 330b extends through post
flashing component 330b, flashing 340 is not “above . . . the standoff” as
recited in claim 1. See Ex. 1006, 7:41–43, Figs. 3b, 3c.
Petitioner has sufficiently shown that a person having ordinary skill in
the art would have added Plaisted’s upper connector 310—including skirt
360—to McPheeters design. See Pet. 34–37. Specifically, Petitioner has
sufficiently shown that McPheeters “integral skirt serves to counter-flash or
divert water away from the opening in the post flashing.” Pet. 37; Ex. 1003
¶ 84. Based on the current record, Petitioner has sufficiently shown that a
person having ordinary skill in the art would have added Plaisted’s
connector with a skirt for improved waterproofing. See Ex. 1003 ¶¶ 84–85.
However, Petitioner has not sufficiently shown that Plaisted’s skirt
360 is part of McPheeters’s “tile flashing” in the modified assembly. This is
of critical importance because Petitioner identifies Plaisted’s skirt 360 as the
portion of the tile flashing that is above the base and the standoff. See Pet.
47 (“This combination of McPheeters and Plaisted further teaches that the
tile flashing is ‘above the base and the standoff’” in that the portion of
Plaisted’s connector that covers the post or standoff is above the base and
standoff of the modified McPheeters’ assembly.” (citing Ex. 1003 ¶ 102)).
We agree with Petitioner that flashing can comprise multiple
elements. See Pet. 47 (“McPheeters and Plaisted themselves teach that
flashing can comprise multiple elements.”); Ex. 1003 ¶ 101 (same). Both
McPheeters and Plaisted do just that. McPheeters describes how flashing
340 comprises “a substantially flat rectangular component 340a and a post
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flashing component 340b that substantially covers the base 330a and the post
330b. Ex. 1006, 7:43–46. In an alternate embodiment, flashing 340
comprises undulating rectangular component 340c and post flashing
component 340b. Id. at 7:43–50, Fig. 3c. Similarly, Plaisted describes
flashing sub-assembly 410 as including “a conically shaped flashing member
412 that is unitarily or otherwise integrated with a platform 414.” Ex. 1009,
6:21–23, Fig. 4A. In both McPheeters and Plaisted, the elements that make
up the flashing are either a unitary piece (McPheeters and Plaisted) or
integrated with each other (Plaisted). See Ex. 1009, 6:21–23, Fig. 4A;
Ex. 1006, Fig. 3b-3c, 7:43–50. However, neither reference describes two
unconnected pieces as a single flashing. See id.
Petitioner has not sufficiently shown that Plaisted’s skirt 360 and
flashing sub-assembly 410 constitute a single flashing. Plaisted’s upper
connector 310—including skirt 360—is not a unitary piece or otherwise
integrated with flashing sub-assembly 410. See Ex. 1009, Fig. 4B.
Moreover, the very section of Plaisted cited by Petitioner’s expert describes
upper connecter 310 as a separate element from the flashing with a different
function. See Ex. 1009, 6:1–49, cited by Ex. 1003 ¶ 101.6 Under the current
record, Petitioner has not sufficiently demonstrated that skirt 360 is part of
flashing sub-assembly 410.

6 It is for this reason that we do not find Mr. Degger’s testimony (paragraph
101) persuasive and give it no weight. In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the
declarations and conclude that the lack of factual corroboration warrants
discounting the opinions expressed in the declarations.”); Ashland Oil, Inc.
v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)
(noting that the “[l]ack of factual support” for an expert opinion “may render
the testimony of little probative value”).
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Similarly, when Plaisted’s upper connector 310 with skirt 360 is
attached to McPheeters’s post 330b, Petitioner has not sufficiently shown
that it would be considered part of McPheeters’s flashing 340. That is, for
the reasons set forth above, Petitioner has not sufficiently shown that, when
the teachings of McPheeters and Plaisted are combined, Plaisted’s skirt 360
would be unitary or otherwise integrated with McPheeters’s flashing 340
such that they would be considered a single tile flashing.
However, that does not end our inquiry. Instead, we must consider
whether Petitioner has sufficiently shown that skirt 360, when considered by
itself, is tile flashing. The answer to that question is no. Petitioner has not
argued either that skirt 360 mimics the shape of the tiles or that a person
having ordinary skill in the art would have modified the shape of the skirt to
mimic the shape of the tiles. See Pet. 46–48. Because Plaisted’s skirt 360
does not mimic the shape of the tiles, it is not “tile flashing” as recited in
claim 1.
Accordingly, because Petitioner has not persuasively identified a
portion of the “tile flashing above the base and the standoff,” Petitioner has
not set forth a reasonable likelihood of showing that claim 1 is unpatentable
based on McPheeters, Plaisted and, Thaler.
Similarly, because claims 2, 3, and 7–9 depend, either directly or
indirectly, from claim 1, Petitioner has not set forth a reasonable likelihood
of showing that claims 2, 3, and 7–9 are unpatentable based on McPheeters,
Plaisted, and Thaler. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
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(“[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious.”).7
5. Analysis of Claims 10–14
Claim 10 recites “a tile flashing comprising an embossed portion
installable on the base and standoff . . . wherein the top surface of the
standoff aligns with the embossed portion of the tile flashing” and “a bracket
. . . installable on the embossed portion of the tile flashing and is supported
by the standoff.” Ex. 1001, 48:30–36.
a) Petitioner’s Argument
With respect to the “tile flashing,” Petitioner relies on its arguments
set forth in claim 1 and discussed in the preceding section. Pet. 65.
With regard to the “embossed” portion of tile flashing, Petitioner
argues that a person having ordinary skill in the art would have “understood
that one or both of the protruding post flashing component and the
undulating shape of the rectangular component [of McPheeters] could be
made by forming or stamping such features into pieces of material.” Pet. 61,
65. Specifically, Petitioner directs us to an annotated and colorized version
of McPheeters Figure 3c, reproduced below.

7 Because we find that Petitioner has not satisfied its burden, Patent
Owner’s remaining arguments are moot.
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Patent 10,676,929 B2
27

Id. at 61. Petitioner modified McPheeters Figure 3c (previously discussed)
by coloring the flashing red, coloring the standoff purple, and adding a “Tile
Flashing” annotation pointing towards the portion of the flashing that is
undulating. Id. Petitioner further argues that a person having ordinary skill
in the art would have “understood that the upwardly extending post flashing
component is a ‘boss.’” Id. (citing Ex. 1011; Ex. 1007, code (57), 5:1–11,
Fig. 1, Ex. 1033 ¶ 122).
With regard to the “bracket” limitation, Petitioner relies on the
discussion of the boss above. Pet. 65. Petitioner further relies on Plaisted’s
upper connector 310 and grasping member 350 and directs us to an
annotated and colorized version of Plaisted Figure 3A, reproduced below.
Id. at 49–54, 65.
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Patent 10,676,929 B2
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Id. at 50. Plaisted Figure 3A “illustrates a leveling sub-assembly or structure
that may be attached or otherwise integrated into a mounting system.”
Ex. 1009, 1:41–43. Petitioner identifies (1) pipe 120 as a standoff (purple)
and (2) connector 310 (red) and grasp 350 (blue) as a connector. Pet. 50.
According to Petitioner, “Plaisted discloses or teaches a ‘bracket’ integral
with the connector that includes grasp structure 350 and hinged connector
358.” Id. (citing Ex. 1009, 5:44–55, Figs. 3A–5A).
Petitioner also draws our attention to two differently annotated
versions of Plaisted Figure 4B (not reproduced) that “shows how Plaisted’s
connector 310 includes flashing and the bracket integral to each other, with
various portions performing the functions of the ‘bracket’ (as indicated in
blue) and the ‘flashing’ (as indicated in red).” Id. at 51; see also id. at 52–53
(annotated versions of Plaisted Figure 4B).
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Patent 10,676,929 B2
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b) Patent Owner’s Argument
Patent Owner argues “Plaisted does not describe upper connector 310
as a flashing because the upper connector 310 of Plaisted is not a flashing.
Upper connector 310 is a load-bearing connector capable of supporting an
array as described in Plaisted and excerpted above.” Prelim. Resp. 15; see
also id. at 29 (“[Petitioner] states that the structural connector is a flashing,
but it is not. The connector in Plaisted is a structural member meant to
support the weight of a roof-mounted solar installation.”).
Patent Owner also argues that “[l]ooking at the totality of the claim
for context, the claim element - ‘a tile flashing comprising an embossed
portion installable on the base and the standoff’–requires that the base and
standoff be covered by the ‘tile flashing’ because the ‘tile flashing … [is]
installable on the base and the standoff’” and that “[n]one of the flashings in
the prior art disclose the claimed structural arrangement.” Prelim. Resp. 29–
30 (alterations in original) (citing Ex. 2001 ¶ 80).
c) Our Analysis
Based on the current record, we are not sufficiently persuaded by
Petitioner’s argument. Specifically, Petitioner has not sufficiently shown
that “the top surface of the standoff aligns with the embossed portion of the
tile flashing” as recited in claim 10. Rather, McPheeters Figure 3b shows
that the top surface of the post 330b (which Petitioner maps to the standoff)
is above, not aligned with, the top of the flashing post component 340b. See
Ex. 1006, Fig. 3c; see also id. at 7:41–42 (stating that the flash is only
“substantially over the post 330b,” not completely over the post). Neither
Petitioner nor Mr. Dregger explains how post flashing component 340b is
aligned with the upper surface of the standoff. See Pet. 65; Ex. 1003 ¶ 129.
Although both the Petition and the testimony incorporate the arguments and
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Patent 10,676,929 B2
30
evidence from other sections, we fail to see any discussion in those sections
on the relative alignment of the elements. See Pet. 60–62; Ex. 1003
¶¶ 121–122.
Moreover, Petitioner has not sufficiently shown that “the bracket is
installable on the embossed portion of the tile flashing” as recited in claim
10. Plaisted shows grasp 350 (which Petitioner maps to the bracket)
installed on the upper portion of connector 310 through the hinged connector
358. See Ex. 1009, 5:43–67, Figs. 3A, 4B. Plaisted also shows connector
310 placed over pipe 120. Id. Petitioner does not argue that connector 310
or pipe 120 is “the embossed portion of the tile flashing.” See Pet. 49–54.
Nor does Petitioner argue that a person having ordinary skill in the art would
attach Plaisted’s grasp 350 to McPheeters’s post flashing 340b. See id.
Based on the current record, although Petitioner has sufficiently
shown that McPheeters teaches “tile flashing comprising an embossed
portion,” Petitioner has not sufficiently shown that the combination of
McPheeters and Plaisted teaches a “tile flashing comprising an embossed
portion . . . wherein the top surface of the standoff aligns with the embossed
portion of the tile flashing” or “a bracket . . . wherein the bracket is
installable on the embossed portion of the tile flashing” as recited in claim
10. Accordingly, Petitioner has not shown a reasonable likelihood of
showing that claim 10 is unpatentable based on McPheeters, Plaisted and,
Thaler.
Similarly, because claims 11–14 depend directly from claim 10,
Petitioner has not shown a reasonable likelihood of showing that claims 11–
14 are unpatentable based on McPheeters, Plaisted, and Thaler. See Fritch,
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972 F.2d at 1266 (“[D]ependent claims are nonobvious if the independent
claims from which they depend are nonobvious.”).8
E. Asserted Obviousness in View of McPheeters, Thales, Plaisted,
and Glicksman
Petitioner argues that claim 5 would have been obvious over
McPheeters, Thales, Plaisted, and Glicksman. See Pet. 76–83. Based on the
current record, we are not sufficiently persuaded that Petitioner has
established a reasonable likelihood of prevailing on this asserted
obviousness ground with respect to claim 5.
1. Glicksman
Glicksman is entitled “Composite Washer Construction” and is
directed “to the field of sealing washers, of a type adapted to be disposed
beneath a screw head or similar fastening structure, and to be pressed against
the flat surface of a sheet metal body or casing to effect a hermetic seal.”
Ex. 1008, 1:2, 1:8–12. Glicksman Figure 1 is reproduced below.

Figure 1 “is a plan view” device 10, which includes “a metallic washer
element 11 and a resilient washer element 12.” Ex. 1008 1:60–61, 2:1–4.

8 Because we find that Petitioner has not satisfied its burden, Patent
Owner’s remaining arguments are moot.
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2. Analysis of Claim 5
Claim 5 depends from claim 1. Ex. 1001, 48:11–12. Because
Petitioner does not argue that Glicksman cures the deficiency with claim 1
set forth above, Petitioner has not shown a reasonable likelihood of showing
that claim 5 is unpatentable based on McPheeters, Plaisted, Thaler, and
Glicksman. See Fritch, 972 F.2d at 1266 (“[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious.”).
CONCLUSION
For the foregoing reasons, we determine that Petitioner fails to show a
reasonable likelihood that it would prevail with respect to at least one of the
claims challenged in the Petition. We, therefore, do not institute an inter
partes review of the challenged claims based on the Petition.
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, no inter partes review is instituted as to any claim of
the ’929 patent.

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Patent 10,676,929 B2
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FOR PETITIONER:
Philip Woo
Patrick McPherson
Paul Belnap
DUANE MORRIS LLP
pwwoo@duanemorris.com
pdmcpherson@duanemorris.com
phbelnap@duanuemorris.com

FOR PATENT OWNER:
Mark Williams
Nicholas Kirby
KW LAW, LLP
mark@kwlaw.com
nick@kwlaw.com