Huber Engineered Woods LLC

Patent Trials and Appeals Board

Oct 5, 2020

IPR2019-00919 (P.T.A.B. Oct. 5, 2020)

Trials@uspto.gov Paper: 24
571.272.7822 Entered: October 5, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LOUISIANA-PACIFIC CORPORATION,
Petitioner,

v.

HUBER ENGINEERED WOODS LLC,
Patent Owner.
____________

IPR2019-00919
Patent 9,546,479
____________

Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
Louisiana-Pacific Corporation (“Petitioner”) filed a Petition (Paper 1,
“Pet.”) requesting inter partes review of claims 1–20 of U.S. Patent No.
9,546,479 (“the ’479 patent”). Pet. 4. We issued a decision to institute an
inter partes review of these claims. Paper 9 (“Inst. Dec.”).
After institution, Huber Engineered Woods LLC (“Patent Owner”)
filed a Patent Owner Response (Paper 12 (“PO Resp.” or “Response”)), to
which Petitioner replied (Paper 14 (“Pet. Reply” or “Reply”)). Patent Owner
also filed a Sur-Reply to Petitioner’s Reply. Paper 18 (“PO Sur-Reply” or
“Sur-Reply”).
Oral argument (hearing), was held on July 16, 2020, and the transcript
of the hearing has been entered as Paper 23.
We have jurisdiction under 35 U.S.C. § 6. Petitioner bears the burden
of proving unpatentability of the challenged claims, and the burden of
persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner
must prove unpatentability by a preponderance of the evidence. See 35
U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2019). This Final Written Decision is
issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 (2019). For the
reasons that follow, we determine that Petitioner has not shown that any of
claims 1–20 of the ’479 patent are unpatentable.

A. Related Proceedings
Petitioner represents that the ’479 patent is at issue in Huber
Engineered Woods LLC v. Louisiana-Pacific Corporation, USDC, District
of Delaware, No. 1:19-cv-00342-LPS, filed February 18, 2019, and in Huber
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Engineered Woods LLC v. Martco LLC, USDC, Eastern District of Texas,
No. 2:18-cv-00530-JRG, filed December. 7, 2018. Pet. 4–5.
We further note that Petitioner filed petitions for inter partes review
challenging patents related to the ’479 patent. In particular, Petitioner filed
petitions in IPR2020-00596, IPR2020-00600, IPR2020-00601, IPR2020-
00604, IPR2020-00605, IPR2020-00606, and IPR2020-00607 challenging
patents related to the ’479 patent. Each of the related patents claims priority
to U.S. Provisional Application No. 60/547,031, filed on Feb. 23, 2004, just
as the ’479 patent. See, e.g., Ex. 1001, code [60]. Additionally, Petitioner
filed a second, follow-on petition in IPR2020-00609, challenging the same
claims (1–20) of the ’479 patent. In each of these other inter partes review
proceedings, we denied to institute review of any of the challenged patents.

B. The ’479 Patent (Ex. 1001)
The ’479 patent, titled “Panel for Sheathing System and Method,”
describes a sheathing panel including a “water resistant barrier layer secured
atop its outward facing surface.” Ex. 1001, codes (54), (57).
To illustrate the ’479 patent’s panel and sheathing system, we first
reproduce its Figure 1, below:
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Figure 1 depicts a roof utilizing the panel and sheathing system. Ex. 1001,
3:27–28. In particular, Figure 1 depicts panelized roof sheathing
construction system 10 with panels 20 in abutting relationship attached to a
building frame structure. Id. at 4:57–61. The system preferably includes
water-resistant sealing means 40 sealing joints 25 between adjacent panels
20. Id. at 5:3–6.
Although Figure 1 depicts a panelized roofing system, the ’479 patent
describes, specifically, the panels for use in roof or wall construction. See,
e.g., id. at 4:46–54.
We also reproduce Figure 2 of the ’479 patent, below:
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Figure 2 depicts an embodiment of the panel. Ex. 1001, 3:48–51.
Specifically, Figure 2 illustrates panel 20 preferably made of an oriented
strand board (“OSB”) substrate having two surfaces 22, 24 with core layer
26 disposed between the layers. Id. at 5:7–12. Barrier layer 30 is secured to
the outward facing surface 24 of panel 20. See id. at 6:17–19 (referencing
similar Figure 3). The ’479 patent describes barrier layer 30 as resistant to
bulk water but permeable to water vapor. Id. at 6:47–48.
We next reproduce the ’479 patent’s Figure 9A, below:
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Figure 9A depicts a cross-sectional view of two adjacent panels according to
an embodiment of the invention. Ex. 1001, 3:37–39. In particular, Figure
9A depicts an embodiment of two panels 120 secured with tongue-and-
groove joint 129 (id. at 16:25–27) and with a strip of water-resistant
pressure-sensitive seam sealant 140, which is preferably a tape (id. at 17:18–
25).

C. Illustrative Claims
Claims 1, 11, and 20 are independent. Ex. 1001, 22:49–24:20.
Independent claims 1 and 11 are representative of the subject matter at issue
and are reproduced below, with emphases added to certain limitations
addressed in this decision.
1. A panelized sheathing system for external walls of a
building structure, the system comprising:
at least two adjacent structural wall panels, each panel
including an outer surface, an inner surface, and at least one edge
extending therebetween, each panel aligned with its at least one
edge proximate to the at least one edge of the adjacent panel and
defining a joint between the two adjacent panels;
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a barrier layer secured to the outer surface of each panel,
the barrier layer being bulk water resistant and water vapor
permeable; and
a bulk water resistant sealant sealing the joint between the
proximate edges of the two adjacent panels.

11. A method of sheathing external walls of a building
structure, the method comprising:
positioning at least two wall panel assemblies adjacent to
each other, each panel assembly including:
a structural wall panel including an outer surface, an
inner surface, and at least one edge; and
a barrier layer secured to the outer surface of each
panel, the barrier layer being bulk water resistant and
water vapor permeable,
wherein the respective edges of the adjacent at least
two wall panel assemblies are proximate to each other and
define a joint therebetween and such that the respective
inner surfaces contact the structure;
fastening each panel assembly to the structure; and
sealing the joint between the edges of the panel.
Id. at 22:6–18 (emphases added).

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D. References Relied Upon
Petitioner’s challenges rely on the following references (Pet. 4–5):
Name Reference Ex. No.
APA APA Engineered Wood Handbook 1005
Allen Fundamentals of Building Construction;
Materials and Methods
1010
SmartSide-
MSDS
LP SmartSide MSDS-029 1011
ICBO ICBO Evaluation Report 1012
SmartSide-
2001
LP SmartSide Installation Instructions 1013
Alaska Building in Alaska: Permeability of Common
Building Material to Water Vapor
1008
StoGuard-
2001
Sto Corp. Launches Sto Guard Housewrap
Alternative
1014
StoGuard-
20031
Sto Guard a seamless, fluid-applied air and
moisture barrier, provides superior protection
under most claddings. It does what other wraps
only pretend to do
1015
ASTM
D5795
Standard Test Method for Determination of
Liquid Water Absorption of Coated Hardboard
And Other Composite Wood Products Via ‘Cobb
Ring’ Apparatus
1006
ASTM
Report
Interlaboratory Study to Establish Precision
Statements for ASTM D5795, Test Method for
Determination of Liquid Water Permeability of
Applied Coatings on Hardboard and Other
Composite Wood Products Via “Cobb Ring”
Apparatus
1007

1 The Petition erroneously references StoGuard 2003 as StoGuard 2002 in its
“Applicable Prior Art References” table on pages 17–19. Our Decision
refers to the reference as StoGuard 2003, as this is consistent with the
remainder of the Petition.
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Name Reference Ex. No.
ASTM
E96
Standard Test Methods for Water Vapor
Transmission of Materials
1016
Van
Wagoner
US Pat. No. 4,719,723, issued Jan. 19, 1988 1018
Hsu US Pat. No. 5,616,419, issued Apr. 1, 1997 1026
Ou US Pat. No. 6,737,155 B1, issued May 18, 2004 1020
Lionel US Pat. No. 6,901,712 B2, issued June 7, 2005 1019
Arnold Installing Housewrap 1022
Grace Wall-Sheathing Seam Tape 1023
Biblis Performance of southern OSB overlaid with
resin-impregnated paper
1021
E. Alleged Grounds of Unpatentability
Petitioner contends that claims 1–20 of the ’479 patent are
unpatentable under the following grounds:
Claim(s)
Challenged
35
U.S.C. §
Reference(s)
1, 6, 7, 9–11, 16,
17, 19, 20
102(a) APA
1–20 103(a) APA, StoGuard-2001, StoGuard-2003, for claims 1
and 11, and combined with one or more of ASTM
D5795, ASTM Report, Alaska, ASTM E96, Van
Wagoner, Arnold, Hsu, and Grace for claims 2–10,
12–20 (see Pet. 17–19).
1–20 103(a) APA, SmartSide-MSDS, SmartSide-2001, ICBO,
for claims 1 and 11, and combined with one or more
of ASTM D5795, ASTM Report, Alaska, ASTM
E96, Van Wagoner, Arnold, Hsu, Grace for claims
2–10, 12–20.

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Pet. 17–20. Petitioner also relies on the declaration testimony of Dr. Peter E.
Laks (Ex. 1002) in support of its Petition. See, e.g., Pet. 22 (referencing Ex.
1002).

II. ANALYSIS
A. Claim Construction
In an inter partes review proceeding for a petition filed on or after
November 13, 2018, a patent claim shall be construed using the same claim
construction standard that would be used to construe the claim in a civil
action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2019). This rule
adopts the same claim construction standard used by Article III federal
courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
(en banc) and its progeny. Under the Phillips standard, the words of a claim
are generally given their “ordinary and customary meaning,” which is the
meaning the term would have to a person of ordinary skill at the time of the
invention, in the context of the entire patent including the specification. See
Phillips, 415 F.3d at 1312–13. “[W]here a party believes that a specific term
has meaning other than its plain meaning, the party should provide a
statement identifying a proposed construction of the particular term and
where the disclosure supports that meaning.” Office Trial Practice Guide,
77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012).
In our Decision to Institute, we construed the phrase “a barrier layer
secured to the outer surface of each panel” of independent claim 1 “to
require each panel to have a barrier layer secured to it, whether or not the
barrier layer is secured to the panel before or after the panel is fastened to a
building structure.” Inst. Dec. 10–11.
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In its Response, Patent Owner states, “The Board is correct that this
phrase should ‘require each panel to have a barrier layer secured to it’” but
argues that “the Board should clarify that a barrier layer is secured to each
individual panel and not to other panels.” PO Resp. 14 (emphasis omitted)
(citing Ex. 2034 ¶¶ 87–91, 93).
In its Reply, Petitioner disagrees with Patent Owner’s revised
construction, contending, “There is simply no reason to assume that the
phrase ‘each panel with its secured barrier layer’ prohibits the barrier layer
from being secured to another panel.” Pet. Reply 17.
Despite the disagreement between Patent Owner and Petitioner
regarding the meaning of the claimed “barrier layer secured to the outer
surface of each panel,” construing this claim phrase is not necessary for
purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642
F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to
the extent necessary to resolve the controversy’” (internal citation omitted)).
Rather, we determine that the only claim that requires construction is
method claim 11.

1. Claim 11
Independent claim 11 recites the step of “positioning” wall panels,
where each panel comprises a “barrier layer.” Ex. 1001, 22:49–63. The
claim further requires the separate step of “fastening” each panel assembly
to a building structure. Id. As a matter of logic, the panels cannot be
fastened onto the structure until they have first been positioned. See
Mformation Techs., Inc. v. Research In Motion Ltd., 764 F.3d 1392, 1398–
99 (Fed. Cir. 2014) (“[A] claim ‘requires an ordering of steps when the
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claim language, as a matter of logic or grammar, requires that the steps be
performed in the order written, or the specification directly or implicitly
requires’ an order of steps.”). Accordingly, claim 11’s step of “positioning
at least two wall panel assemblies” occurs before the step of “fastening each
panel assembly to the structure.” Id.; see also Ex. 1001, 3:59–61, Fig. 10
(depicting a flow diagram of the steps included in the manufacture of a panel
for roof or wall sheathing).
Furthermore, because the “positioning” step of the claim requires each
of its panels to have “a barrier layer secured to the outer surface of each
panel,” it logically follows that the panels have barrier layers before the
panels are fastened to the structure.
For the foregoing reason, we interpret claim 11 to require the
“adjacent structural wall panels” to each have a “barrier layer secured to the
outer surface of each panel” before the panels are fastened to the structure,
and before the joint between the edges of the adjacent panels are sealed.

2. Other Claim Terms
No other claim limitation requires express construction for purposes
of this Decision. See Wellman, 642 F.3d at 1361.

B. Principles of Law
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016). This burden never shifts to Patent Owner. Dynamic Drinkware,
800 F.3d at 1378.
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Petitioner’s challenges are based on anticipation and obviousness.
Pet. 17.
As to anticipation, “[a] prior art reference anticipates a patent’s claim
under § 102(b) if it ‘discloses each and every element of the claimed
invention arranged or combined in the same way as in the claim.’”
Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336,
1342–43 (Fed. Cir. 2018) (quoting Blue Calypso, LLC v. Groupon, Inc., 815
F.3d 1331, 1341 (Fed. Cir. 2016)).
As to obviousness, a claim is unpatentable as obvious under 35 U.S.C.
§ 103(a) if the differences between the claimed subject matter and the prior
art are such that the subject matter, as a whole, would have been obvious at
the time the invention was made to a person having ordinary skill in the art
to which said subject matter pertains.2 KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
of underlying factual determinations, including: (1) the scope and content of
the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of skill in the art; and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co. of Kansas City, 383
U.S. 1, 17–18 (1966).

2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Because the application from which the ’479 patent issued claims
priority to an application filed before this date, the pre-AIA version of § 103
applies.

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C. 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.
Factors pertinent to a determination of the level of a person having
ordinary skill in the art (“POSITA”) include: (1) 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 workers active
in the field. Environmental Designs, Ltd. v. Union Oil Co., 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. Moreover, these factors
are not exhaustive but are merely a guide to determining the level of
ordinary skill in the art. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501
F.3d 1254, 1256 (Fed. Cir. 2007). We also may look to the prior art, which
may reflect an appropriate skill level. Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001).
Additionally, the Supreme Court informs us that “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR, 550 U.S. at 421.
In our Decision to Institute, we determined that a POSITA “would
have had a degree in civil engineering, building, material, wood science, or
other degree, if such other degree required coursework or experience in the
pertinent technology and two years of industry experience or equivalent
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therein.” Inst. Dec. 14. We further determined, “Additional education, such
as an advanced degree, could offset less work experience, and additional
work experience could offset less education or coursework.” Id.
Patent Owner adopts the level of a POSITA set forth in our Decision
to Institute. PO Resp. 13 (“HEW adopts the Board’s definition of a
POSA.”). Petitioner does not address our definition in its Reply. See
generally Pet. Reply.
We maintain the level of a POSITA that we provided in our Decision
to Institute.

D. Ground 1 - Anticipated by APA
Petitioner contends that claims 1, 6, 7, 9–11, 16, 17, 19, and 20 are
anticipated by APA. Pet. 17.

1. APA (Ex. 1005)3
APA is a published handbook titled “APA Engineered Wood
Handbook,” published by McGraw-Hill Companies, Inc., in 2002. Ex. 1005,
1, 3. APA has twelve chapters (id. at 4–6), including Chapter 2 (Wood
Structural Panels), Chapter 4 (Structural Glued Laminated Timber
(Glulam)), Chapter 9 (Treatments and Finishes for Wood), and Chapter 12
(Designing and Detailing for Permanence), each of which Petitioner cites to
(see, e.g., Pet. 24–34).

3 Our citations to APA are to the exhibit’s page numbers rather than the
handbook’s native page numbers.
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2. Petitioner’s Challenge
In challenging independent claims 1, 11, and 20, Petitioner cites to
APA’s figures 2.6 and 2.7 to satisfy the claimed “at least two adjacent
structural wall panels, . . . each panel aligned with its at least one edge
proximate to the at least one edge of the adjacent panel and defining a joint
between the two adjacent panels.” See Pet. 24–25. We reproduce APA’s
Figure 2.7, below:

Ex. 1005, 29. Figure 2.7 depicts sheathing with 1/8” recommended spacing
“at all edge and end joints unless otherwise indicated by panel
manufacturer.” Id.
To address the claimed “barrier layer secured to the outer surface of
each panel,” Petitioner cites to APA’s disclosure of a “barrier applied over
the structural frame of a structure” (citing APA’s Figure 12.27). Pet. 26
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(citing in part Ex. 1005, 120–121, 132, and Figs. 12.27, 12.28). We
reproduce APA’s Figure 12.27, below:

Ex. 1005, 121. Figure 12.27 depicts two rolls of barrier being wrapped
around a building structure. See id.
To address the claimed “sealant sealing the joint between the
proximate edges of the two adjacent panels,” Petitioner again cites to APA’s
Figures 12.27 and 12.28 and finds that these figures “show [the] use of
‘seam tape’ and taping joints with air-barrier tape.” Pet. 27–28. Petitioner
also cites to APA’s disclosure of “exterior sealants called caulks . . . used to
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seal up the cracks between individual elements of the building’s exterior
finish.” Id. at 27 (citing Ex. 1005, 112–113).

3. Analysis
In our Decision to Institute, we explained that the Petition did not
establish that APA discloses a sealant for sealing the joint between the
proximate edges of two adjacent panels, as required by the claims. Dec.
Inst. 22–25. Petitioner did not address our Decision to Institute in its Reply.
See Pet. Reply; see also PO Sur-Reply 1 (confirming the same; “HEW
agrees with Petitioner’s implicit concession that Grounds 1 and 3 fail to
show any claims of the ’479 Patent are invalid”). As explained below, we
maintain our position that the Petition fails to establish that APA discloses
the claimed sealant.
Each of independent claims 1, 11, and 20 recites a sealant for sealing
the joint between the proximate edges of the two adjacent panels. See Ex.
1001, 22:6–24:20. To address this limitation, Petitioner cites to several
different disclosures within APA, but the cited disclosure fails to satisfy the
claimed sealant. See Pet. 27–28.
First, Petitioner cites to APA’s disclosure of caulk. Id. at 27 (citing
Ex. 1005, 112–13, Fig. 12.16). The cited disclosure of APA’s caulk,
however, describes:
Caulking. Elastomeric exterior sealants called caulks are
a popular component of the waterproofing system used in
modern structures. They are used to seal up the cracks between
individual elements of the building’s exterior finish to keep wind
and water from penetrating the skin of the structure. In this
respect, the caulking provides a part of the walls’ first line of
defense against water intrusion. The waterproofing performance
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of modern structures often depends on many hundreds of feet of
caulked joints.
Ex. 1005, 112–14 (second emphasis added).
APA discloses that this caulk is used as an exterior sealant applied to
the exterior finish of a building, in order to serve as the “first line of
defense” against water intrusion. See id. The disclosure does not state that
these caulks are applied to seal the joints between adjacent panels of
sheathing, as Petitioner asserts.
Second, Petitioner cites to APA’s Figure 12.16, which we reproduce,
below:

Ex. 1005, 111. Figure 12.16 depicts still flashing at a sliding glass door and
illustrates caulk or sealant between the frame and flashing. Id. We do not
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find anything in this figure that depicts caulking used as a sealant between
the joint created by two adjacent sheathing panels, however.
Third, Petitioner cites to APA’s Figures 12.27 and 12.28, asserting
that these figures depict tape for sealing the claimed joints. Pet. 28.
As to Figure 12.27, the tape that Petitioner relies on seals the area
where different layers of housewrap overlap, not the joints created by
adjacent sheathing panels.
As to Figure 12.28, we reproduce that figure, below:

Ex. 1005, 122. Figure 12.28 depicts “Air barrier installation details using
header wrap.” Id. As can be seen in the above figure, APA’s seam tape is
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used to seal the seams of the header wrap. We find nothing in this figure
that depicts the joint formed between two adjacent sheathing panels as being
sealed by the tape.
For the foregoing reasons, Petitioner fails to show by a preponderance
of the evidence that APA discloses a sealant for sealing the joint between the
proximate edges of two adjacent panels. As such, Petitioner has not shown
by a preponderance of the evidence that APA anticipates any of claims 1, 6,
7, 9–11, 16, 17, 19, or 20.

E. Ground 2 - APA StoGuard-2001, StoGuard-2003, and other.
Petitioner contends that claims 1–20 are unpatentable over APA,
StoGuard-2001, StoGuard-2003, ASTM D5795, ASTM Report, Alaska,
ASTM E96, Van Wagoner, Arnold, Hsu, and Grace. Pet. 37. In challenging
independent claims 1 and 11, Petitioner relies on APA, StoGuard-2001, and
StoGuard-2003. Id. at 17, 18. In challenging independent claim 20,
Petitioner relies on APA, StoGuard-2001, StoGuard-2003, Arnold, and Van
Wagoner. Id. at 19. Because APA, StoGuard-2001, and StoGuard-2003
form the primary basis to Petitioner’s challenge, we focus our analysis on
these references.

1. StoGuard-2001 (Ex. 1014)4
StoGuard-2001 (Ex. 1014) is a press release titled, “STO CORP.
LAUNCHES STO GUARD HOUSEWARP ALTERNATIVE,” dated
February 10, 2001. Ex. 1014, 1.

4 The terms “Sto Guard” and “StoGuard” are used interchangeably in the
record. For consistency, our references to the product will be to “StoGuard.”
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2. StoGuard-2003 (Ex. 1015)5
StoGuard-2003 (Ex. 1015) is a press release titled, “Sto GuardTM, a
seamless, fluid-applied air and moisture barrier, provides superior protection
under most claddings. It does what other wraps only pretend to do.” Ex.
1015, 1. StoGuard-2003 is dated 2003. Id.

3. Petitioner’s Challenge
In challenging the claims, Petitioner relies on APA for disclosing the
claimed wall panel assemblies fastened to a building structure. See Pet. 38–
41 (addressing independent claim 1); see also id. at 48–51 (addressing
independent claim 11); see also id. at 54–55 (addressing independent claim
20).
As to independent claim 1, Petitioner relies on StoGuard-2001 and
StoGuard-2003 to address the claimed “barrier layer secured to the outer
surface of each panel” and the claimed “sealant” for “sealing the joint”
between adjacent panels. See id. at 38–41. In particular, Petitioner asserts
that “StoGuard-2001 and StoGuard-2003 teach liquid-applied waterproof
coatings applied to panel surfaces and trowel-applied filler for joints, as well
as a tape-like mesh.” Id. at 55. StoGuard-2001 and StoGuard-2003 each
teaches a waterproof Sto Gold Coat that is applied over a Sto Gold Fill,

5 The Petition refers to Exhibit 1015 as both “StoGuard-2002” and
“StoGuard-2003.” See, e.g., Pet. ii (“Ground 2”), id. at 17 (Ground 2, claim
1). We find that the reference to “StoGuard-2002” to be an inadvertent and
harmless typographical error, and the Petition intended to refer to StoGuard-
2003. For consistency in this Decision, we refer to the Exhibit 1015 as
StoGuard-2003.
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which itself is used to “cover joints and gaps between sheathing.” See, e.g.,
Ex. 1014, 1.
In combining APA with StoGuard-2001 and StoGuard-2003,
Petitioner reasons:
It would have been obvious to use the StoGuard
waterproof coating and joint filler as a form of the water-
resistive barrier and joint sealants of APA, motivated to improve
resistance to water infiltration with a cost-effective and
functionally effective alternative to housewraps. All claimed
elements were known in the prior art, one skilled in the art could
have combined the elements as claimed by known methods with
no change in respective functions, and the combination yields
nothing more than predictable results. Alternatively, use of the
StoGuard coating and joint filler would be the simple substitution
of one known element for another to obtain a predictable result,
or use of a known technique to improve a similar product or
method in the same way.
Pet. 56 (citations omitted) (emphases added).
As to independent claim 11, Petitioner similarly reasons,
[I]t would have been obvious to use the StoGuard waterproof
coating and joint filler as a form of the water-resistive barrier and
joint sealants of APA, motivated to improve resistance to water
infiltration with a cost-effective and functionally effective
alternative to housewrap. As discussed regarding claim 1, all
claimed elements were known in the prior art, one skilled in the
art could have combined (or substituted) the elements as claimed
by known methods with no change in respective functions (or to
improve similar method in the same way), yielding nothing more
than predictable results.
Id. at 60 (citing MPEP §§ 2141.III, 2143) (emphases added).
Turning to independent claim 20, which is different from claims 1 and
11 in that claim 20 recites a “bulk water resistant tape sealant,” Petitioner
relies largely on its analysis of claim 1, but cites to Arnold and Van
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Wagoner for their teaching of a bulk water resistant tape. Ex. 1001, 24:18–
20 (emphasis added); see also Pet. 61 (“Claim 20 is substantively the same
as claim 1, but with OSB stipulated as the wall panel, and bulk water
resistant tape stipulated as the joint sealant. APA’s disclosure of seam tape
and Arnold’s and Van Wagoner’s teachings of bulk water resistant seam
tape have been discussed regarding claim 7.”).

4. Patent Owner’s Response
Patent Owner argues that none of Petitioner’s cited disclosures, alone
or in combination, teach the claimed sealant for sealing joints. PO Resp. 36.
As to independent claims 1 and 20 and their respective dependent
claims, we agree.
Patent Owner also argues that, as to the method of independent claim
11, “the barrier layer is secured before the panel is positioned or fastened”
(id. at 43) and that the “Sto Gold Coat cannot be the claimed barrier layer
because it, too, is applied to the sheathing panels after the panels are
positioned on the structure” (id. at 44 (citing Ex. 2034 ¶ 140)).
As to independent claim 11 and its respective dependent claims, we
also agree.
We explain our positions in the following section.

5. Analysis
a) Claims 1–10
Independent claim 1 recites a “bulk water resistant sealant sealing the
joint between the proximate edges of the two adjacent panels.” Ex. 1001,
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22:15–16. Claims 2–10 also require the claimed sealant through their
dependency to claim 1. See id. at 22:19–48.
To satisfy the claimed “bulk water resistant sealant,” Petitioner relies
on StoGuard’s “joint fill,” which is specifically referred to as “Sto Gold
Fill.” See Pet. 41 (“StoGuard fill taught by the above StoGuard references a
bulk water resistant joint sealant, and can serve as the joint sealant of APA,
or substitute for one of the specific examples thereof in APA”); see also id.
at 56 (proposing to use StoGuard’s “joint filler” as a joint sealant); see also
Ex. 1015, 1 (referring to the product as “Sto Gold Fill”).
The record does not support a finding that Sto Gold Fill is a bulk
water resistant sealant, however. Rather, it is Sto Gold Coat—which is
applied over the Sto Gold Fill—that is waterproof. Ex. 1015 (“Sto Gold
Coat – a waterproof coating applied . . . to wall sheathing surfaces treated
with Sto Gold Fill”). StoGuard-2001 further discloses:
Sto Gold Coat can easily be applied by roller to cementitious and
non-cementitious sheathing including plywood, gypsum and
glass-fiber-faced sheathing boards. Because Sto Gold Coat is
roller applied, builders and contractors enjoy significantly
reduced application costs over trowel application products. Sto
Gold Fill is a safe, non-toxic material designed to bridge normal
movement in wood sheathing. It is trowel-applied to cover joints
and gaps between sheathing and around windows, ensuring
continuous protection from air and moisture intrusion.
Ex. 1014, 1. From this disclosure, we find that Sto Gold Fill is used to
“cover joints and gaps” between sheathing panels so that the Sto Gold Coat
may later be applied over the fill to provide continuous water proofing. See
id. Nothing in either StoGuard-2001 or StoGuard-2003 supports a finding
that Sto Gold Fill itself is bulk water resistant.
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Mr. Straube further confirms our understanding. We credit the
testimony of Mr. Straube, who testifies, “The purpose of Sto Gold Fill® is
simply to bridge the gaps between the panels and provide a surface on which
to apply the waterproof Sto Gold Coat™.” Ex. 2034 ¶ 56 (citing Ex. 2037,
2).
Accordingly, and based on the record before us, we find that Sto Gold
Fill fails to satisfy the claim limitation of a “bulk water resistant sealant.”
For at least this reason, Petitioner has not shown by a preponderance of the
evidence that APA in view of StoGuard-2001, StoGuard-2003, and the other
references cited in Ground 2 renders any of claims 1–10 unpatentable.

b) Claim 20
Independent claim 20 recites a “bulk water resistant tape sealant
sealing the joint between the proximate edges of the two adjacent panels.”
Id. at 24:18–20 (emphasis added).
In challenging claim 20 under this ground, Petitioner explains,
Claim 20 is substantively the same as claim 1, but with OSB
stipulated as the wall panel, and bulk water resistant tape
stipulated as the joint sealant. APA’s disclosure of seam tape
and Arnold’s and Van Wagoner’s teachings of bulk water
resistant seam tape have been discussed regarding claim 7.
Pet. 61; see also id. at 55 (referencing “claim 1 element [c] and claim 7” in
addressing the “bulk water resistant tape sealant sealing the joint between
the proximate edges of the two adjacent panels”).
In combining APA, StoGuard-2001, StoGuard-2003, Arnold, and Van
Wagoner, Petitioner reasons,
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It would have been obvious to use the StoGuard waterproof
coating as a form of the water-resistive barrier APA, with the
water resistant tape of Arnold/VanWagoner as the joint sealant,
motivated to improve resistance to water infiltration with a cost-
effective and functionally effective alternative to housewraps.
Pet. 61 (emphases added).
As similarly discussed in connection with independent claim 1,
Petitioner relies on Sto Gold Coat’s waterproof coating as a functionally
effective alternative to housewraps. See id. Sto Gold Coat, however, is
applied over the Sto Gold Fill, which itself is not a bulk water resistant
sealant. See, e.g., Ex. 2034 ¶ 56 (“Sto Gold Fill® is not waterproof”); see
also supra Part II.E.5.a. Indeed, we see no need for Sto Gold Fill to be
waterproof as it is Sto Gold Coat that is waterproof and applied over Sto
Gold Fill. See, e.g., Ex. 1015 (“Sto Gold Coat – a waterproof coating
applied . . . to wall sheathing surfaces treated with Sto Gold Fill”). Because
there is no need for Sto Gold Fill to be waterproof, we are not persuaded by
Petitioner’s reasoning that a skilled artisan would have used “the water
resistant tape of Arnold/VanWagoner as the joint sealant” as a substitute for
Sto Gold Fill, as Petitioner suggests. See Pet. 61. Petitioner’s proposed
modification is based on impermissible hindsight.
Furthermore, Petitioner’s reasoning that the proposed modification
would yield “a cost-effective and functionally effective alternative to
housewraps” is also unpersuasive. See id. Because APA’s housewraps are
water-proof barriers that already cover the joints formed between adjacent
sheathing panels, we do not see any need to provide a water-resistant tape to
cover those joints. See, e.g., Ex. 1005, Fig. 12.27 (depicting a housewrap
covering the joints formed between adjacent sheathing panels).
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Based on the record before us, we are not persuaded that a skilled
artisan would have combined the teachings of APA, StoGuard-2001,
StoGuard-2003, Arnold, and Van Wagoner to arrive at the claimed “bulk
water resistant tape sealant.” For at least this reason, Petitioner has not
shown by a preponderance of the evidence that APA in view of StoGuard-
2001, StoGuard-2003, and the other references cited in Ground 2 renders
claim 20 unpatentable.

c) Claims 11–19
In its challenge of independent claim 11, Petitioner reasons that “it
would have been obvious to use the StoGuard waterproof coating and joint
filler as a form of the water-resistive barrier and joint sealants of APA,
motivated to improve resistance to water infiltration with a cost-effective
and functionally effective alternative to housewrap.” Pet. 60 (citing MPEP
§§ 2141.III, 2143) (emphases added). In a nutshell, Petitioner relies on the
Sto Gold Fill for satisfying the claimed step of “sealing the joint between the
edges of the panel” (id. at 50–51 (citations omitted)) and Sto Gold Coat for
satisfying the claimed “barrier layer secured to the outer surface of each
panel” (id. at 49 (citations omitted)).
Petitioner’s proposed combination, however, fails to satisfy the order
of steps required by the method of claim 11.
As discussed above, we interpret claim 11 to require the “adjacent
structural wall panels” to each have a “barrier layer secured to the outer
surface of each panel” before the panels are fastened to the structure, and
before the joint between the edges of the adjacent panels are sealed. Supra
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Part II.A.1. Claims 12–19 depend from claim 11 and require this same order
of steps. See Ex. 1001, 22:49–24:6.
Petitioner proposes to use the StoGuard waterproof coating and joint
filler as a “functionally effective alternative to [APA’s] housewrap.” Pet.
60. StoGuard-2001 and StoGuard-2003 collectively disclose the application
of Sto Gold Fill and Sto Gold Coat after the panels are fastened to the
building structure, however. Exs. 1014, 1015. Indeed, Sto Gold Fill “is
trowel-applied to cover joints and gaps between sheathing,” and StoGuard-
2001 teaches that Sto Gold Fill is applied after the panels are applied to the
building structure. Ex. 1014, 1. Moreover, Sto Gold Coat is applied over
Sto Gold Fill, so the Sto Gold Coat must also be applied after the panels are
assembled on the building structure. See id.; see also Ex. 2034 ¶ 56
(confirming the same).
Because Sto Gold Coat—the claimed “barrier layer”—is applied after
the wall panel assemblies are fastened to the building structure, Petitioner’s
proposed combination fails to satisfy the claimed order of steps.
In its Reply Brief, Petitioner attempts to address this shortcoming by
asserting that its “cited combination still includes sufficient support to render
Claim 11 obvious even if claim 11 is interpreted to require pre-application of
the Sto Gold® barrier layer prior to installation on the structure.” Pet. Reply
21. Petitioner’s argument, however, directly contradicts the express
teaching of StoGuard-2001 and StoGuard-2003. Specifically, StoGuard-
2003 teaches that the Sto Gold Coat is applied after the Sto Gold Fill is
applied over the joints. See Ex. 1015 (“Sto Gold Fill – a spray or trowel
applied joint treatment . . . Sto Gold Coat – a waterproof coating applied . . .
to wall sheathing surfaces treated with Sto Gold Fill”). As such, Petitioner’s
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argument in its Reply that a skilled artisan would have found it obvious to
apply Sto Gold Coat before the panels are fastened to the building structure,
and before the Sto Gold Fill is used as a joint treatment, is contradicted by
the explicit teachings of StoGuard-2001 or StoGuard-2003.
Based on the record before us, Petitioner’s proposed combination of
APA, StoGuard-2001, StoGuard-2003, and the other cited references fails to
satisfy the order of steps required by independent claim 11. Furthermore,
claims 12–19 depend from claim 11, and Petitioner’s challenge of the
dependent claims also suffers from the same infirmity. As such, Petitioner
has not shown by a preponderance of the evidence that APA in view of
StoGuard-2001, StoGuard-2003, and the other references cited in Ground 2
renders any of claims 11–19 unpatentable.

d) Summary
For the foregoing reasons, Petitioner has not shown by a
preponderance of the evidence that any of claims 1–20 are unpatentable
under Ground 2.

F. Ground 3 - APA and SmartSide-MSDS, ICBO,
and SmartSide-2001 et al.
Petitioner contends that claims 1–20 are unpatentable over APA,
SmartSide-MSDS, ICBO, SmartSide-2001, ASTM D5795, ASTM Report,
Alaska, ASTM E96, Van Wagoner, Arnold, Hsu, and Grace. Pet. 62.
Petitioner relies primarily on APA, SmartSide-MSDS, ICBO, and
SmartSide-2001 in its challenge. See id. at 19–20. Our analysis focuses on
these references.

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1. SmartSide-MSDS (Ex. 1011)
SmartSide-MSDS is a product summary of LP SmartSide. Ex. 1011,
1, 4.

2. ICBO (Ex. 1012)
ICBO is an “ES Report” issued March 1, 2002. Ex. 1012. ICBO
describes, in-part, the “SmartSystem Siding.” Id. at 2 (“2.6.1 SmartSystem
Siding: General: L-P SmartSystem sidings are a composite product
consisting of an engineered wood substrate containing zinc borate bonded to
a phenolic resin-saturated, primed paper overlay with glue line”).

3. SmartSide-2001 (Ex. 1013)
SmartSide-2001 is “Application Instructions” for SmartLap,
SmartPanel, SmartSide, and SmartPanel. Ex. 1013.

4. Petitioner’s Challenge
Petitioner relies on APA for disclosing wood structural panels and
exterior sealants (caulks) as discussed above. See Pet. 62–63 (citing, in-part,
Ex. 1005, Figs. 2.6, 2.7, 12.27, and 12.28). Petitioner also relies on
SmartSide-2001 for teaching “the application of treated (including a water-
resistant overlay) engineered wood siding, including panels, to building
structures, and shows panels with aligned edges with an 1/8 [inch] gap
forming joints.” Id. at 63 (citing Ex. 1013 1, 3). Petitioner further asserts
that “SmartSide MSDS and ICBO disclose the water-resistant barrier being a
phenolic resin-impregnated paper overlay secured (via glue line) to the outer
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surface of a panel.” Id. at 63–64 (citing Exs. 1012, 1014). In combining
APA with the cited art, Petitioner reasons:
It would have been obvious to use the SmartGuard paper overlay
as a form of or in place of the kraft waterproof building paper or
“other” water-resistive barrier of APA, and the SmartGuard
caulk joint sealant as instructed as a form of or in place of the
caulk, seam tape, or air-barrier tape of APA, motivated to
improve resistance to air leakage and water infiltration resistance
through the wall construction as a cost-effective and more
effective alternative. A person of ordinary skill also would
recognize the benefit of less labor required, as the SmartGuard
paper overlay is applied during manufacturing (i.e., at the
factory), thereby avoiding the time, expense and possible loss of
effectiveness in on-site applications of the barrier layer.
Pet. 64 (emphases added).

5. Analysis
In our Decision to Institute, we explained that we are not persuaded
that a skilled artisan would have combined APA with SmartSide-MSDS,
ICBO, and SmartSide-2001, as Petitioner has done. Dec. Inst. 36. Petitioner
did not address our Decision to Institute in its Reply. See generally Pet.
Reply; see also PO Sur-Reply 1 (confirming the same; “HEW agrees with
Petitioner’s implicit concession that Grounds 1 and 3 fail to show any claims
of the ’479 Patent are invalid”). We maintain our position that the Petition
fails to establish that a skilled artisan would have combined APA with the
other cited art.
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3)
(requiring inter partes review petitions to identify “with particularity . . . the
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evidence that supports the grounds for the challenge to each claim”)).
Petitioner cannot satisfy its burden of proving obviousness by employing
“mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
1364, 1380 (Fed. Cir. 2016).
Petitioner reasons that a skilled artisan would have used “SmartGuard
paper” overlay “in place of APA’s water-resistive barrier,” yet fails to
identify anything in the record that describes what this SmartGuard paper is.
See Pet. 63–64. We cannot confirm that the paper is applied during
manufacturing, as Petitioner asserts. See id. at 64 (Petitioner arguing that
“the SmartGuard paper overlay is applied during manufacturing (i.e., at the
factory)”).
Petitioner cites to the entirety of Exhibits 1012 and 1014 (Pet. 64) for
disclosing a “water-resistant barrier being a phenolic resin-impregnated
paper overlay secured (via glue line) to the outer surface of a panel” (id. at
63–64), yet we find no mention of SmartGuard overlay in either exhibit.
Even if we give Petitioner the benefit of the doubt, and that it intended
to cite to the SmartSide product of Exhibits 1011, 1012, and 1013, and that
reference to SmartGuard was an inadvertent typographical error, we are still
unpersuaded that a skilled artisan would have modified APA as Petitioner
has done. The most relevant disclosure we can find to support Petitioner’s
modification is that the “L-P SmartSystem sidings are a composite product
consisting of an engineered wood substrate containing zinc borate, bonded to
a phenolic resin-saturated, primed paper overlay with glue line.” Ex. 1012,
2 (emphasis added). We do not find this disclosure as motivating a skilled
artisan to replace APA’s housewrap, as Petitioner proposes. See Pet. 64.
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Furthermore, the SmartSide product appears to be an exterior siding
product, not a paper overlay secured to the outer surface of a sheathing
panel. See, e.g., Ex. 1011, 1 (“LP SmartSide, Siding & Exterior Trim”); see
also, e.g., Ex. 1013, 1 (“General . . . Apply siding in a manner that prevents
moisture intrusion and water buildup” (emphasis added)). Rather than
disclose an improved water-resistant paper overlay named “SmartGuard,”
SmartSide-2001 instructs us that “[a]ll exposed wood substrate must be
primed and painted in a manner that prevents moisture intrusion and water
buildup.” Ex. 1013, 1, General (emphasis added). If anything, SmartSide
teaches the application of paint or primer to exposed wood substrates, not an
improved paper overlay, as Petitioner contends. See Pet. 64 (“SmartGuard
paper overlay as a form of or in place of . . . waterproof building paper or
‘other’ water-resistive barrier of APA”).
For the foregoing reasons, Petitioner failed to “show with particularity
why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363.
We are not persuaded that a skilled artisan would have modified APA based
on the teachings of SmartSide-MSDS, ICBO, and SmartSide-2001 to arrive
at the challenged claims. Accordingly, Petitioner has not shown by a
preponderance of the evidence that APA in view of SmartSide-MSDS,
ICBO, and SmartSide-2001 renders any of claims 1–20 unpatentable.

III. CONCLUSION
Petitioner has not shown that any of claims 1–20 of the ’479 patent is
unpatentable.

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IV. ORDER
Weighing the evidence of the disclosure of the references, the
competing testimony, and the reasoning to combine the references, we
determine that Petitioner has not shown by a preponderance of the evidence
that any of claims 1–20 of the ’479 patent is unpatentable.

Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 6, 7,
9–11, 16,
17, 19,
20
102(a) APA 1, 6, 7, 9–11,
16, 17, 19, 20
1–20 103(a) APA, StoGuard-
2001, StoGuard-
2003, ASTM
D5795, ASTM
Report, Alaska,
ASTM E96, Van
Wagoner, Arnold,
Hsu, Grace
1–20
1–20 103(a) APA, SmartSide-
MSDS, SmartSide-
2001, ICBO,
ASTM D5795,
ASTM Report,
Alaska, ASTM
E96, Van
Wagoner, Arnold,
Hsu, Grace
1–20
Overall
Outcome
1–20
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PETITIONER:

W. Edward Ramage
Aaron Chaloner
BAKER DONELSON BEARMAN
CALDWELL & BERKOWITZ, P.C.
eramage@bakerdonelson.com
achaloner@bakerdonelson.com

PATENT OWNER:

Daniel W. McDonald
Jeffrey Blake
Paige Stradley
MERCHANT & GOULD, P.C.
HuberLPIPR@merchantgould.com
dmcdonald@merchantgould.com
jblake@merchantgould.com
pstradley@merchantgould.com