Owens Corningv.CertainTeed Corporation

Patent Trial and Appeal Board

Mar 9, 2016

12422506 (P.T.A.B. Mar. 9, 2016)

Trials@uspto.gov Paper 37
Tel: 571-272-7822 Entered: March 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
OWENS CORNING,
Petitioner,
v.
CERTAINTEED CORPORATION,
Patent Owner.
_______________

Case IPR2014-01397
Patent 7,781,046 B2
_______________

Before BENJAMIN D. M. WOOD, JAMES A. TARTAL, and
KRISTINA M. KALAN, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

IPR2014-01397
Patent 7,781,046 B2

2

I. INTRODUCTION
A. Background
Owens Corning (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to
institute an inter partes review of claims 1–9 (the “challenged claims”) of
U.S. Patent No. 7,781,046 B2 (Ex. 1001, “the ’046 patent”). CertainTeed
Corp. (“Patent Owner”) filed a Preliminary Response (Paper 9). We
instituted an inter partes review of claims 1-9 based on the following
grounds of unpatentability:
References Basis Claims Challenged
Venrick1 and Frankoski2 § 103(a) 1–9
Venrick and Kiik3 § 103(a) 1–9

Decision on Institution (Paper 10) 18.
After the Board instituted trial, Patent Owner filed a Patent Owner
Response (Paper 19, “PO Resp.”), to which Petitioner replied (Paper 28,
“Pet. Reply”). Oral Argument was held on December 8, 2015, and the
transcript (Paper 36, “Tr.”) has been entered in the record.
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a). We determine that
Petitioner has shown by a preponderance of the evidence that claims 1–9 are
unpatentable.

1 US 2,161,440 to Venrick (June 6, 1939) (Ex. 1013).
2 US 5,822,943 to Frankoski (Oct. 20, 1998) (Ex. 1010).
3 US 2001/0055680 A1 to Kiik (Dec. 27, 2001) (Ex. 1018).
IPR2014-01397
Patent 7,781,046 B2

3

B. The ’046 Patent
The ’046 patent issued on August 24, 2010 from an application filed
on April 13, 2009, and claims priority to November 6, 2002. Ex. 1001,
cover page. The ’046 patent is directed to a shingle with a separate, exterior
reinforcement layer mounted to the rear surface of the shingle. Figures 2
and 2A, reproduced below, depict an embodiment of the claimed invention:

Shingle 20, depicted in Figures 2 and 2A, is similar to prior art
shingles in that it comprises a mat impregnated with asphalt and then coated
with a granular material on each exposed surface. Id. at 2:39–45, 3:5–6,
Figs. 2–2A. Nailing zone “N” is located on the front surface of the shingle
between edges 27 and 28 and above slots 24. Id. at 3:3–5. A reinforcement
layer 29—preferably woven fiberglass scrim—is mounted on rear surface 21
opposite nailing zone N, across the upper end of tab portion 23 and the lower
end of headlap portion 22. Id. at 3:5–11. The scrim layer may extend
farther into the tabs, as shown in Figure 3. Id. at 3:24–34, Fig. 3. Scrim
layer 29 is not coated with asphalt or granules, which allows it to resist
bending and cracking across the upper end of the tab portion when the
shingle is bent by wind or other upward lifting forces. Id. at 3:38–46. In
IPR2014-01397
Patent 7,781,046 B2

4

use, the shingle is nailed through the nailing zone and reinforcement layer
onto the roof. Id. at 4:15–23. The reinforcement layer catches the nail and
helps keep the shingle more securely fastened to the roof in adverse
conditions. Id. at 4:23–33, 6:10–24.
C. Illustrative Claims
Claims 1 and 7 are independent. Claims 2–6 depend from claim 1,
and claims 8 and 9 depend from claim 7.
Claims 1 and 7 are reproduced below:
1. A shingle having front and rear surfaces, a width defined
by upper and lower edges and a length defined by right and left
edges, comprising:
(a) a base layer of mat having front and rear surfaces;
(b) a coating of asphaltic material on both front and rear
surfaces of the mat;
(c) coatings of granular material on both front and rear
surfaces and adhered thereto, which, together with said base
layer of mat and coatings of asphaltic material comprise a first
thickness layer;
(d) a longitudinal fastening zone between right and left
shingle edges, generally intermediate said upper and lower
edges;
(e) a generally longitudinal reinforcement second thickness
layer of a substantially thinner dimension than said first thickness
layer, adhered to said shingle and extending at least substantially
between right and left edges of the shingle; and
(f) said reinforcement layer extending at least partially into
the fastening zone.

Id. at 6:30–49.

7. A method of making a shingle having front and rear
surfaces, a width defined by upper and lower edges and a length
defined by right and left edges, comprising:
(a) providing a base layer of mat having front and rear
surfaces;
IPR2014-01397
Patent 7,781,046 B2

5

(b) providing a coating of asphaltic material on both front and
rear surfaces of the mat;
(c) providing coatings of granular material on the asphaltic
material on both front and rear surfaces;
(d) providing a longitudinal fastening zone between right and
left shingle edges, generally intermediate said upper and lower
shingle edges;
(e) providing a generally longitudinal reinforcement layer
adhered to the rear surface of the shingle, against the outer
surface of the granular material on the surface thereof, extending
at least substantially between right and left edges of the shingle;
(f) having the reinforcement layer extend at least partially
into the fastening zone; whereby
(g) fasteners applied through the fastening zone will pass
through the reinforcement layer.

II. ANALYSIS
A. Claim Construction
Petitioner proposes constructions for “said shingle,” “adhered to said
shingle,” “reinforcement . . . layer,” and “substantially thinner.” Pet. 26–34.
Patent Owner does not respond to any of Petitioner’s proposed constructions
or advocate its own construction for any term.
We determine that no express claim construction is required for any
term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999) (holding that “only those [claim] terms need be construed
that are in controversy, and only to the extent necessary to resolve the
controversy”). All terms will be accorded their ordinary and customary
meaning as would be understood by one of ordinary skill at the time of the
invention.
IPR2014-01397
Patent 7,781,046 B2

6

B. Claims 1–9, Obviousness over Venrick and Either Frankoski or
Kiik
Petitioner asserts that claims 1–9 would have been obvious over
Venrick and Frankoski. Pet. 44–50. Petitioner also asserts that claims 1–9
would have been obvious over Venrick and Kiik. Id. at 51–58. Petitioner’s
contentions are supported by the Declaration of Michael L. Bryson.
Ex. 1003. In opposition to Petitioner’s contentions, Patent Owner relies on
the Declaration of Robert E. Metz. Ex. 2009.
In resolving the question of the obviousness of the claims, we
consider the following underlying factual determinations: (1) the scope and
content of the prior art; (2) the level of skill in the art; (3) any differences
between the claimed subject matter and the prior art; and (4) secondary
considerations of non-obviousness. See Graham v. John Deere Co., 383
U.S. 1, 17 (1966).
1. Scope and Content of the Prior Art
a. Venrick (Ex. 1013)
Venrick describes an otherwise “well known” roofing shingle to
which is added a “raised median portion,” or “reinforcing strip” extending
longitudinally along the shingle. Ex. 1013, 1:1:1–30, 40–41.4

4 Our citations to Venrick are in the form of page:column:line(s), the page
numbers being those original to the document rather than those added by
Petitioner. Thus, Ex. 1013 1:1:1–30 refers to Venrick page 1, column 1,
lines 1–30.
IPR2014-01397
Patent 7,781,046 B2

7

Figure 1 of Venrick is reproduced below:

Figure 1 of Venrick shows a top plan view of a strip shingle
embodiment of the invention. Id. at 1:2:7–8. Shingle strip 10 consists of
felt base 12 that is “saturated and coated with asphalt and surfaced with
mineral granules 13.” Id. at 1:2:44–51. Raised median strip 15 “extends
longitudinally of the shingle in the vicinity of the upper ends 16 of the
openings 14” and “protrudes from the upper surface.” Id. at 2:1:13–16.
Upper ends 16 “are effectively strengthened and reinforced so as to prevent
tearing of the shingle at these points.” Id. at 2:1:22–24. The strip “may be
formed of felt, or metal, or may consist of alternate layers of asphalt and
granules, or layers of roofing tape suitably bonded together.” Id. at 2:2:44–
48, 2:2:73–3:1:1. Median strip 15 is preferably applied to the shingle after
manufacture, “and thus said strip will be suitably cemented to the granule
surfacing 13.” Id. at 2:1:35–37. The raised median strip may also be located
on the undersurface of the shingle. Id. at 2:2:60–62, Figs. 8, 10, 12.
The raised median portion serves several purposes. First, Venrick’s
shingles are installed on a roof such that the raised median strip supports
“the butt end of the overlapping shingle of the next horizontal course,”
giving “a semblance of thickness to the butt ends of the shingles . . .
IPR2014-01397
Patent 7,781,046 B2

8

resulting in a better shadow line” and “a heavy substantial appearance” to
the roof as a whole. Id. at 1:1:30–38, Fig. 3. Second, as noted above,
because the strip is located over upper ends 16 of openings 14, the strip
“strengthens and reinforce[s] [upper ends 16] to prevent tearing at these
points.” Id. at 2:1:22–24. Third, the strip “give[s] greater nailing strength to
the shingle” so that “the shingle will not readily tear at the nail holes.” Id. at
2:2:16–19. Finally, the raised strip prevents moisture from seeping between
shingles by “act[ing] as a barrier” and adds rigidity to the tabs to “resist[] the
action of the wind tending to lift them up.” Id. at 2:2:31–33, 3:1:7–9.
b. Frankoski (Ex. 1010)
Frankoski describes a shingle with improved long-term performance,
which is achieved “by using a substrate exhibiting properties which will
maintain its physical characteristics throughout the life of the product.” Ex.
1010, 3:17–20. The substrate preferably comprises “a fiberglass
scrim/fiberglass mat composite including a rubberized binder, which
provides a superior strength and nail pull-through resistance to withstand, for
example, hurricane force winds.” Id. at 3:21–25. An embodiment of
Frankoski’s shingle is shown in Figure 1, reproduced below:

IPR2014-01397
Patent 7,781,046 B2

9

Figure 1 of Frankoski is an illustration of an exemplary two-ply
laminated roofing shingle comprising upper layer 5 bonded to lower layer 7.
Id. at Fig. 1, 4:22–25. Lower layer 7 serves as a “backing piece” and
“preferably is at least about 6 inches wide.” Id. at 4:51–53. Figure 2,
reproduced below, shows lower layer 7 in greater detail:

Figure 2 of Frankoski shows scrim 60 bonded to base mat 65, both of
which are covered by upper and lower coating layers 70, 75. Id. at 5:1–6.
Scrim 60 “preferably extends along the entire length and width of the
shingle,” but partial size scrims also may be used, e.g., one that is “three or
four inches wide and positioned so as to coincide with the nail zone for the
shingle.” Id. at 5:27–34. Frankoski further states that the scrim layer can be
placed “either above or below the mat.” Id. at 3:41–42.
c. Kiik (Ex. 1018)
Kiik discloses roofing shingles “having a novel backing which renders
the material pliable and imparts improved characteristics such as resistance
to damage from hail.” Ex. 1018 ¶ 1. In a preferred embodiment, the
backing may be made of a woven or non-woven polyester mat, although a
variety of other materials may also be used. Id. ¶¶ 4, 6. “The backing
IPR2014-01397
Patent 7,781,046 B2

10

material is adhered to the face of the back of the shingle in lieu of fines,
granules or other standard backing material,” and “may provide full or
partial coverage of the lower surface of the shingles.” Id. ¶¶ 7, 10.
“Shingles made with the inventive polyester backing have better tear
strength than standard shingles backed with finely divided granules[,] . . .
demonstrate increased nail holding ability and maintain structural integrity at
elevated temperatures.” Id. ¶ 9.
d. The Relevance of the Respective Ages of the
References
Patent Owner argues that the age of the cited references spans 60
years, and “this fact alone would have significant import to a [person of
ordinary skill in the art] in 2002.” PO Resp. 9. Particularly, Patent Owner
argues that Venrick, which issued in 1939, identifies “issues with
conventional organic shingles of that era” and teaches that, “[a]t that time,
organic shingles were heavy and the nail was the shingle’s only point of
attachment.” Id. at 9–11. Patent Owner states that Frankoski “came almost
60 years later—at a time when shingles could be made from much lighter,
fiberglass-based materials specifically because they were no longer held to a
roof exclusively via nails and their own weight,” but also used asphalt-based
sealing strips. Id. at 12. In sum, Patent Owner argues: “By 2002, a [person
of ordinary skill in the art] would have understood that Venrick [] arose out
of a different technology era than Frankoski [] and Kiik [], in that Venrick
“was directed to multiple issues relating to that era’s heavy, pliant organic
IPR2014-01397
Patent 7,781,046 B2

11

shingles, which were held to the roof exclusively by nails,” and that
Venrick’s raised strip addressed those issues. Id. at 14.
Petitioner replies that, regardless of Venrick’s early publication date,
there can be “no dispute that the pertinent art includes Venrick.” Reply 2;
see also Tr. 24:14–21. Petitioner takes issue with Mr. Metz’s testimony that
Venrick “arose out of a different technology era than” Frankoski and Kiik,
stating that Mr. Metz admitted that Venrick, like Frankoski and Kiik, relates
to the field of roofing materials and, in particular, asphalt shingles. Reply
14–15 (citing Ex. 1046, passim). Petitioner also criticizes “Patent Owner’s
attempt to create a technological divide between shingles made of organic
mat, and so-called ‘modern’ shingles” as fictitious, stating that even Patent
Owner continued to make and sell organic shingles at least through 2005.
Id. at 15. Petitioner also points out that Frankoski discloses organic
shingles. Id. at 16 (citing Ex. 1010, 5:9–12).
The age of a cited reference, in and of itself, does not negate its use in
determining obviousness. See Nike, Inc. v. adidas AG, No. 2014–1719, 2016
WL 537609, at *9 (Fed. Cir. Feb. 11, 2016) (“[O]ur decision in Leo
Pharmaceutical [Products, Ltd. v. Rea, 726 F.3d 1346, 1356–57 (Fed. Cir.
2013)] is entirely consistent with established precedent that ‘[t]he mere age
of the references is not persuasive of the unobviousness of the combination
of their teachings, absent evidence that, notwithstanding knowledge of the
references, the art tried and failed to solve the problem.’” (alteration in
original) (quoting In re Wright, 569 F.2d 1124, 1127 (CCPA 1997)).5 Patent

5 Patent Owner does not disagree. Tr. 43:5–6 (“[W]e don’t say that
references because they are old are irrelevant.”).
IPR2014-01397
Patent 7,781,046 B2

12

Owner has not shown that the art tried and failed to solve the problem
allegedly solved by the subject patent.
We also are not persuaded that Venrick’s age or subject matter would
have prevented a person of ordinary skill from combining it with Frankoski
and/or Kiik. Even though there is a temporal gap between Venrick and
Frankoski or Kiik, a skilled artisan is presumed to have been aware of
Venrick. See Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807
F.2d 955, 962 (Fed. Cir. 1986) (“[P]erson of ordinary skill is a hypothetical
person who is presumed to be aware of all the pertinent prior art.”). Indeed,
the skilled artisan would not have dismissed or discounted Venrick because
of subsequent technical advances occurring in the art up to the date of the
invention, but would have read Venrick in light of those advances, including
the use of fiberglass-based materials and sealing strips.
2. Level of Skill in the Art
Petitioner, as supported by Mr. Bryson, contends that one of ordinary
skill in the art would have “a bachelor’s degree, and potentially some
advanced schooling, in chemistry, engineering (such as chemical, civil, or
mechanical engineering), materials science, physical science, or a related
discipline, and approximately 3-5 years of additional training and experience
in the field of roofing materials and asphalt shingles.” Pet. 23 (citing Ex.
1003 ¶ 44).
Patent Owner argues that the testimony of Mr. Bryson should be given
less weight, because he did not apply the proper level of skill in the art.
PO Resp. 4–6. According to Patent Owner, Mr. Bryson later admitted
during cross-examination that a person of ordinary skill in the art could have
less skill, and thus the Board should reject the high level of skill initially set
IPR2014-01397
Patent 7,781,046 B2

13

forth by Mr. Bryson in favor of the level set by Patent Owner’s declarant,
Mr. Metz. Id. at 5–6.
Mr. Metz testified that a person of ordinary skill in the art would have:
“(1) a bachelor’s degree in a related discipline (i.e., physical science,
materials science, or engineering) and one year of training and/or experience
in the field of roofing materials and asphalt shingles or (2) two to three years
training and/or experience in the field of roofing materials and asphalt
shingles.” Id. at 5 (citing Ex. 2009 ¶ 9.).
The two levels of skill in the art put forth by Mr. Bryson and Mr.
Metz are not substantially different, and in fact overlap significantly. As
noted by Patent Owner, Mr. Bryson later agreed that the skill level could be
less. Neither party has explained how, if at all, the proposals of their
respective experts regarding the level of ordinary skill change the analysis in
this case. Moreover, an express definition of the level of ordinary skill is not
required in all situations, as the level of ordinary skill in the art usually is
evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We find the level of
ordinary skill in the art to be reflected in the cited references, and we
determine that no express statement of the level of ordinary skill in the art is
required. We also are not persuaded that Mr. Bryson’s testimony should be
given less weight for failing to apply the proper level of skill in the art,
because Patent Owner has not demonstrated how any substantive difference
between the level of skill applied by Mr. Bryson and that asserted by Mr.
Metz renders any of Mr. Bryson’s testimony erroneous.
IPR2014-01397
Patent 7,781,046 B2

14

Patent Owner also argues that Mr. Bryson incorrectly used his
personal skill and knowledge in his obviousness analysis. PO Resp. 6–9.
Petitioner responds that Mr. Bryson provided his opinions from the point of
view of a person of ordinary skill, and did not bring any special insights
other than those that would be assessed by a person having that knowledge
and experience. Tr. 17:14–18. Regarding the specific statements of Mr.
Bryson highlighted by Patent Owner (PO Resp. 6–7), it is within our
discretion to assign the appropriate weight to be accorded to the information
in Mr. Bryson’s testimony. Patent Owner argues that Mr. Bryson used an
impermissibly high level of skill and his own personal knowledge of Kiik in
rendering his opinions, but Mr. Bryson is also on the record as stating that he
used the perspective of a person of ordinary skill in the art as of November
6, 2002, in doing the analysis described in his declaration. Ex. 1003 ¶ 45.
The Board, sitting as a non-jury tribunal with administrative expertise, is
well-positioned to determine and assign appropriate weight to evidence
presented. Gnosis S.P.A. v. S. Ala. Med. Sci. Found., Case IPR2013-00118,
slip op. at 43 (PTAB June 20, 2014) (Paper 64). Accordingly, we evaluate
Mr. Bryson’s testimony along with the remainder of the evidence before us
to reach our conclusions.
3. Differences Between the Claimed Subject Matter and the
Prior Art
a. Obviousness of Claims 1–9 over
Venrick and Frankoski
Petitioner contends that the combination of Venrick and Frankoski
meets all of the limitations of claim 1. Pet. 44–45. We agree. First,
Venrick teaches an asphalt shingle that meets limitations (a) through (d) of
claim 1. For limitations (a), (b), and (c), Venrick describes shingle strip 10
IPR2014-01397
Patent 7,781,046 B2

15

consisting of felt base 12 that is saturated and coated with asphalt and
surfaced with mineral granules. Ex. 1013, 1:2:46–50, Fig. 1. Venrick also
describes the longitudinal fastening zone of limitation (d), in that it teaches
that “the shingles are nailed in a plurality of places and preferably
immediately above the upper ends 16 of openings 14,” id. at 2:2:8–10, which
is “generally intermediate said upper and lower edges,” as limitation (d)
requires. See id. at Fig. 1 (depicting a row of nail openings 23 above
tabs 11).
In addition, Venrick teaches adhering “raised median strip” 15 to the
asphalt shingle across the upper section of tabs 11 and over the region where
the shingle is nailed. Id. at 2:1:11–14, 2:2:11–17, Fig. 1. The raised median
strip thus corresponds to the “generally longitudinal reinforcement second
thickness layer” of limitations (e) and “extend[s] at least partially into the
fastening zone” as required by limitation (f), but Venrick does not describe
the raised layer as having a “substantially thinner dimension than said first
thickness layer,” as limitation (e) recites. On the contrary, Venrick discusses
two specific embodiments, one having a median strip that is one and one-
half times the thickness of the base shingle, the other having a median strip
that is twice the thickness of the base shingle. Id. at 2:1:51–59, Figs. 4, 5.
Frankoski, like Venrick, discloses the prior art asphalt shingle meeting
limitations (a) through (d) of claim 1, and further discloses scrim layer 60
that is positioned to coincide with at least a portion of the shingle’s nail
zone. Ex. 1010, 1:9–20, 4:22–38, 4:66–5:12, 5:29–42. Both parties
acknowledge that Frankoski’s scrim layer 60 is “of a substantially thinner
dimension” than Venrick’s base shingle. PO Resp. 28; Ex. 1003 ¶¶ 454,
477; Ex. 1046, 221:8–18, 265:4–21, 241:13–20. We credit the testimony of
IPR2014-01397
Patent 7,781,046 B2

16

Mr. Bryson that a person of ordinary skill would have understood that
Frankoski’s scrim material could be adhered to the outer surface of a
standard asphalt shingle in the same way that Venrick’s raised strip is
adhered. Ex. 1003 ¶ 454. We determine, therefore, that the combination of
Venrick and Frankoski meets all of the limitations of claim 1.
We have reviewed Petitioner’s evidence (Pet. 47–51) regarding
dependent claims 2–9, and determine that Petitioner has established that
Venrick and Frankoski describe the limitations of claims 2–9. Indeed,
Patent Owner does not argue the limitations of any claim apart from claim 1.
Further, we agree with Petitioner that a person of ordinary skill would
have had a reason to replace Venrick’s raised strip with Frankoski’s scrim
layer. Frankoski teaches that its shingle reinforced with a fiberglass scrim
substrate “provides a superior strength and nail pull-through resistance to
withstand, for example, hurricane force winds.” Ex. 1010, 3:20–22.
Frankoski provides test results demonstrating that the scrim layer improves
nail-pull strength compared to a conventional shingle without the scrim
layer. Ex. 1010, 3:55–58, 6:12–27, 6:47–61; Ex. 1003 ¶ 378. Frankoski
also teaches that its scrim material improves tear resistance. See Ex. 1010,
3:53–55 (the “substrate [comprising fiberglass scrim] gives sufficient
strength to the shingle so that during a storm the shingle is better able to
resist the tendency of tabs to rip”). Patent Owner’s declarant, Robert Metz,
IPR2014-01397
Patent 7,781,046 B2

17

agrees that Frankoski attributes these improvements to the scrim layer. Ex.
1046, 219:18–220:12.6
Moreover, a person of ordinary skill would have appreciated that a
benefit in replacing Venrick’s raised strip with Frankoski’s scrim is that the
scrim is lighter than Venrick’s raised strip, and thus would produce a lighter
shingle. See Ex. 1003 ¶ 453; Ex. 1046, 312:16-22; see also Ex. 2013, 4:36–
39 (lighter shingles “reduc[e] freight costs and roof loads”).
b. Obviousness of Claims 1–9 over Venrick and Kiik
We agree with Petitioner that the combination of Venrick and Kiik
meets all of the limitations of claim 1. Our analysis with respect to
Venrick’s disclosure of the elements of claim 1, supra, applies to the
combination of Venrick and Kiik as well. Kiik also discloses an asphalt
shingle, and further discloses a flexible backing material “adhered to the
face of the back of the shingle.” Ex. 1018, ¶¶ 7. Kiik teaches that

6 In this regard, Mr. Metz testified as follows:
Q. What does Frankoski disclose, generally?
A. Generally, that his product, by adding the—the scrim to
the back—not the back, but inside the shingle as a—as a separate
layer increased the properties of the different strength tests that
he ran.
Q. What properties?
A. Number one was tensile—I mean tear—and—tear
strength, the resistance to separation, which is the nail test. He
ran an adhesive test too on—on the product known as a bond
strength test, and he ran a tensile test, yes.
Q. So—so by 2002 the person of ordinary skill in the art
would have known that scrim would be used to improve these
properties in an asphalt shingle, correct?
A. That’s true.
IPR2014-01397
Patent 7,781,046 B2

18

“[s]hingles made with the inventive polyester backing have better tear
strength than standard shingles backed with finely divided granules,” and
“demonstrate increased nail holding ability.” Id. ¶ 9. Further, there is no
dispute that Kiik’s backing material would have “a substantially thinner
dimension” than Venrick’s base shingle. Ex. 1003 ¶ 586; PO Resp. 28. We
also credit the testimony of Mr. Bryson that a person of ordinary skill would
have understood that Kiik’s backing material could be adhered to the outer
surface of a standard asphalt shingle in the same way that Venrick’s raised
strip is adhered. Ex. 1003 ¶ 587. We determine, therefore, that the
combination of Venrick and Kiik meets all of the limitations of claim 1. In
addition, we have reviewed Petitioner’s evidence (Pet. 54–58) regarding
dependent claims 2–9, and determine that Petitioner has established that
Venrick and Kiik describe the limitations of claims 2–9. Again, Patent
Owner does not argue the patentability of any claim apart from claim 1.
Also, we agree with Petitioner that a person of ordinary skill would
have had a reason to replace Venrick’s raised strip with Kiik’s backing
material. Venrick teaches adhering a reinforcing layer to the outer surface of
a shingle to, among other reasons, improve the shingle’s tear strength and
nail pull strength. Ex. 1013, 1:1:30–37, 2:2:16–19. Likewise, Kiik teaches
that “[s]hingles made with the inventive polyester backing have better tear
strength,” “pass impact tests despite their light product weight,” and
“demonstrate increased nail holding ability.” Id. ¶ 9. Therefore, a person of
ordinary skill would reasonably have expected Kiik’s backing material to
function as reinforcing material to improve tear strength and nail-pull
strength in place of Venrick’s raised strip. Id.; Ex. 1003 ¶ 479. Further, as
noted above with respect to the Venrick/Frankoski combination, a person of
IPR2014-01397
Patent 7,781,046 B2

19

ordinary skill would have appreciated that a benefit in replacing Venrick’s
raised strip with Kiik’s backing material would be a lighter shingle with
similar or better strength.
c. Patent Owner’s Arguments
Patent Owner makes a number of arguments against a determination
of obviousness. We address each one in turn.
(i) Reason to Combine
First, Patent Owner argues that Petitioner’s reason for combining
Venrick with Frankoski or Kiik is without evidentiary support. PO Resp.
15. According to Patent Owner, Petitioner’s reason for combining these
references is based on the assertion that Frankoski’s scrim is at least as
strong, if not stronger, than the materials Venrick teaches to use for its raised
strip. Id. at 17. Patent Owner notes that the data in Frankoski on which
Petitioner and its declarant rely “simply compares the nail strength of a
shingle with an internal scrim reinforcement . . . to a shingle without any
reinforcement,” but does not compare Frankoski’s scrim material with
Venrick’s raised-strip materials. Id. Patent Owner further observes that
Petitioner’s declarant, Mr. Bryson, provides no other data supporting the
comparative strength of Frankoski’s scrim with respect to Venrick’s
materials; admits that one of Venrick’s materials, metal, would have been
stronger; and improperly relies on his personal opinion as to the relative
strengths of the materials. Id. at 22–23. Patent Owner makes a similar
argument with respect to the Venrick/Kiik combination. Id. at 18–19.
We agree with Patent Owner that the record does not contain any data
specifically demonstrating that Frankoski’s scrim material or Kiik’s backing
material is as strong as or stronger than Venrick’s raised-strip materials.
IPR2014-01397
Patent 7,781,046 B2

20

However, we do not consider such data to be necessary to establish
obviousness. A combination need not be superior to other alternatives to
render an invention obvious. See Dome Patent L.P. v. Lee, 799 F.3d 1372
(Fed. Cir. 2015) (“just because better alternatives exist in the prior art does
not mean that an inferior combination is inapt for obviousness purposes”
(internal citations and quotation marks omitted)). We understand
Petitioner’s contention to be that a person of ordinary skill would have had a
reason to combine Venrick and Frankoski because, like Venrick’s raised
strip, “the purpose of the scrim layer in [Frankoski] is reinforcement.” Pet.
at 45–46; see In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1380
(Fed. Cir. 2007) (“the finding that Teague, by addressing a similar problem,
provides analogous art to Icon’s application goes a long way towards
demonstrating a reason to combine the two references”). Petitioner makes a
similar contention with respect to the Venrick/Kiik combination. Pet. 52.
Thus, we find sufficient to support a determination of obviousness over
Venrick and Frankoski the evidence, discussed above, that a person of
ordinary skill would have known that Frankoski’s scrim adds nail-pull
strength and tear resistance to an asphalt shingle, together with the evidence
that a person of ordinary skill would have considered it beneficial to use
Frankoski’s scrim in place of Venrick’s raised strip because it would
produce a lighter shingle. Likewise, we find sufficient to support a
determination of obviousness over Venrick and Kiik the evidence, discussed
above, that a person of ordinary skill would have known that Kiik’s
polyester backing improves tear strength and nail holding ability, together
with evidence that a person of ordinary skill would have considered it
IPR2014-01397
Patent 7,781,046 B2

21

beneficial to use Kiik’s polyester backing in place of Venrick’s raised strip
because it would produce a lighter shingle.
(ii) Reliability of Kiik’s data
Patent Owner argues that Petitioner’s declarant, Mr. Bryson,
undercuts his opinion that one of ordinary skill in the art would be motivated
to combine Kiik and Venrick to improve tear strength when he “admitted
publicly” that the test method that Kiik used “may ‘even be inappropriately
applied to shingles’ in general because of [its] unreliability.” Id. at 20
(quoting Ex. 2007). However, Mr. Bryson bases his opinion that one of
ordinary skill in the art would have reasonably expected Kiik’s thin backing
material to function as reinforcing material not only on Kiik’s data, but also
on other prior art, including Frankoski. Ex. 1003 ¶ 479 (citing, in addition to
Kiik, Venrick, and Frankoski, “Olszyk 1974, Johnson 1996,” and “Miller
1999”). Consideration of these additional references is proper, as the
“expansive and flexible” approach to determining obviousness prohibits
“narrowly focusing” on the specific references of the proposed combination,
but requires consideration of “additional record evidence” demonstrating the
“knowledge and perspective of one of ordinary skill in the art.” Randall
Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). Further, “obviousness
does not require absolute predictability of success . . . all that is required is a
reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–04
(Fed. Cir. 1988). We credit Mr. Bryson’s testimony, in light of Kiik and the
other references cited, that one of ordinary skill in the art would reasonably
have expected Kiik’s backing material to function as reinforcing material,
which would have given the skilled artisan a reason to combine Kiik with
Venrick. In all other respects, our response to Patent Owner’s arguments
IPR2014-01397
Patent 7,781,046 B2

22

concerning the combination of Venrick and Frankoski apply equally to
Patent Owner’s arguments with respect to Venrick and Kiik.
(iii) Principle of Operation
Patent Owner argues that replacing Venrick’s raised strip with
Frankoski’s scrim or Kiik’s backing material would destroy Venrick’s
principle of operation because it would eliminate the thickness and rigidity
of the reinforcement layer. PO Resp. 27–31. Patent Owner argues that
Venrick teaches that its raised strip achieves its results (i.e., adding a
semblance of thickness to a roof, preventing water seepage, improving nail-
pull strength and tear resistance) because of its thickness and rigidity, but
replacing Venrick’s raised strip with Frankoski’s scrim or Kiik’s backing
material would eliminate these characteristics. PO Resp. 30. Similarly,
Patent Owner argues that the asserted combination takes “reinforcement” out
of context, because “[n]owhere in Venrick [] is an unraised ‘reinforcing
strip’ even suggested.” Id. at 32.
This argument is unpersuasive, however, because it invites us to
consider Venrick alone rather than considering the prior art as a whole in
view of the knowledge of a person of ordinary skill in the art. See Randall
Mfg., 733 F.3d at 1362 (“[T]he [KSR] Court required an analysis that reads
the prior art in context, taking account of ‘demands known to the design
community,’ ‘the background knowledge possessed by a person having
ordinary skill in the art,’ and ‘the inferences and creative steps that a person
of ordinary skill in the art would employ’” (quoting KSR Int’l Co v. Teleflex
Inc., 550 U.S 398, 418 (2007))). Considering Venrick in light of Frankoski,
Kiik, and the knowledge of a skilled artisan, one of ordinary skill would
have known that the specific properties of thickness and rigidity, per se,
IPR2014-01397
Patent 7,781,046 B2

23

were not necessary to achieve most, if not all, of Venrick’s objectives.
Whereas conventional shingles in Venrick’s time were attached to a roof
only by nails, by 1998, when Frankoski issued, shingles employed asphalt
sealing strips, in addition to nails, for this purpose. PO Resp. 12 (citing Ex.
2011, R6). According to Patent Owner’s declarant, Mr. Metz, the use of
sealing (or “sealant”) strips also addressed Venrick’s concern regarding
water seepage. Ex. 1046, 325:5–326:9. As Patent Owner acknowledges,
using sealing strips “made a separate bulky, thick, and strong exterior nail
zone reinforcement unnecessary.” PO Resp. 12. But sealing strips did not
eliminate the need for additional reinforcement entirely. Frankoski teaches
that shingles did not meet newer industry standards—i.e., ASTM D-3462,
which “relat[es] to fastener pull-through and tear strength”—on a consistent
basis. Ex. 1010, 1:41–44, 53–55, 2:7–8. Thus, there still existed the need to
improve nail pull-through strength and tear resistance, a need that both
Frankoski and Kiik addressed with a reinforcement layer that is neither thick
nor rigid.
Patent Owner next argues that replacing Venrick’s raised strip with
Frankoski’s thin reinforcement layer would eliminate Venrick’s principle of
operation because it would “contravene[] an express teaching” of Venrick
“to enhance the aesthetic appeal of the shingle.” PO Resp. 44. But Patent
Owner has not shown that the aesthetic appeal of Venrick’s shingle equates
to a “principle of operation,” as opposed to merely one of several objectives
of the invention. Ex. 1013, 1:1:22–46. Venrick’s shingle with a raised strip
“operates” as a shingle—i.e., it protects from the elements a roof on which it
is installed—just as the asserted combination of features from Frankoski or
Kiik and Venrick does. Further, not every embodiment in Venrick clearly
IPR2014-01397
Patent 7,781,046 B2

24

achieves this aesthetic objective. While Venrick discloses an embodiment in
which a raised strip is on the surface of the shingle, creating “a better
shadow line,” which gives the roof “a substantial appearance and which will
be characterized by individuality and distinctiveness,” (id. at 2:2:52–59)
another embodiment of Venrick places the raised strip “on the undersurface
of the shingle” (id. at 2:2:60–62) where it functions to reinforce the shingle
and strengthen the tabs (id. at 3:1:1–6), but where the resulting shadow line,
to the extent it differs from that created by traditional shingles, “wouldn’t be
as distinct” as that created when the raised strip is on the top of the shingle
(Ex. 1046, 288:6–8). As noted above, Venrick does not require any
minimum thickness for the raised strip (Ex. 1013, 2:1:59–61), suggesting
that a raised strip placed on the undersurface of the shingle may, or may not,
alter the appearance of the roof. Because this embodiment of the Venrick
shingle may offer little, if any, aesthetic difference, we are not convinced
that aesthetic appeal amounts to a “principle of operation” that must not be
contravened by any asserted combination.
Further, a combination of references may be obvious even if the
combination eliminates a benefit of one of the references. In In re Urbanski,
809 F.3d 1237 (Fed. Cir. 2016), the Federal Circuit affirmed the Board’s
determination that one of ordinary skill would have reason to combine two
references having benefits that were “mutually exclusive,” because a skilled
artisan may seek the benefit of one of the references at the expense of the
other reference’s benefit. Id. at 1241–42. Here, too, one of ordinary skill
would have proceeded with the combination of Venrick and Frankoski to
achieve the reinforcement benefit, plus the weight savings, even at the
IPR2014-01397
Patent 7,781,046 B2

25

expense of Venrick’s aesthetic benefit.7 As for Patent Owner’s arguments
concerning the problem of water seepage (PO Resp. 38–40), Patent Owner’s
declarant, Mr. Metz, testified that the use of sealant strips effectively
addressed this problem. Ex. 1046, 325:5–326:9.
(iv) Adding to, Rather than Replacing,
Venrick’s Raised Strip
Finally, Patent Owner argues that even if a person of ordinary skill in
the art would have been motivated to combine Venrick with Frankoski of
Kiik, he or she “would simply use either the internal scrim of Frankoski [] or
the backing of Kiik [] in conjunction with the ‘raised strip’ material of
Venrick [] rather than in place of it,” and suggests that removing material
from Venrick “would actually weaken the shingle beyond what it would be
if the scrim or backing were merely added.” PO Resp. 44.
We do not find this argument persuasive. First, the claims do not
necessarily exclude a shingle having both the thick raised strip and a thin
reinforcement layer. For example, claim 1 uses the transition word
“comprising,” which is considered an “open” transition phrase that may
permit additional unrecited elements. AFG Indus., Inc. v. Cardinal IG Co.,
239 F.3d 1239, 1244-45 (Fed. Cir. 2001). Second, as discussed above, a
person of ordinary skill in the art would have been motivated to replace
Venrick’s raised strip rather than add to it to save weight. Finally, merely

7 We note, too, that the art taught other ways of achieving the appearance of
thickness in a finished roof that did not require a thick raised strip. See Ex.
2013, 2:9-14 (discussing laminated roofing shingles that “create the illusion
of thickness or depth on a relatively flat surface by including a backer strip
having striations of color beneath and between tabs wherein the color is
uniform within the tab”).
IPR2014-01397
Patent 7,781,046 B2

26

because there are other ways in which the teachings of the asserted
references could have been combined, Petitioner’s asserted combination is
improper, particularly given the variety of considerations that may favor one
combination of features over the other under differing circumstances. See
ACCO Brands Corp. v. Fellowes, Inc., ---F.3d---, No. 2015-1045, 2016 WL
692471, at *5 (Fed. Cir. Feb. 22, 2016) (holding that the existence of an
obvious combination that falls outside the scope of a claim does not negate
the existence of an obvious combination that falls within the scope of the
claim).
After considering the Petition, Patent Owner Response, Reply, and all
evidence relied on by Petitioner and Patent Owner, we are persuaded that
Petitioner has shown by a preponderance of the evidence that the
combination of Venrick and Frankoski meets all of the limitations of claims
1–9, that the combination of Venrick and Kiik meets all of the limitations of
claims 1–9, and that a person of ordinary skill in the art would have had a
reason to combine Venrick with either Frankoski or Kiik.
C. Objective Indicia of Non-obviousness
Patent Owner argues that objective indicia compel a conclusion of
non-obviousness. PO Resp. 44–54. Therefore, we consider this evidence
along with the contentions of the parties in reaching our final determination
as to the obviousness of claims 1–9.
Objective indicia of nonobviousness may include any of the
following: long-felt but unsolved needs, failure of others, unexpected
results, commercial success, copying, licensing, and praise. Graham, 383
U.S. at 17; Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling
USA, Inc., 699 F.3d 1340, 1349, 1355 (Fed. Cir. 2012). Patent Owner
IPR2014-01397
Patent 7,781,046 B2

27

argues that the commercial success of Petitioner’s products and praise of
Petitioner’s products from others demonstrate the non-obviousness of its
claimed invention. PO Resp. 48–58. Patent Owner indicates in passing that
copying and long-felt need were also present, but presents no substantive
evidence to that effect. PO Resp. 54; Reply 24; Tr. 33:19–20, 62:10–20.
It is not sufficient that a product or its use merely be within the scope
of a claim in order for secondary evidence of non-obviousness tied to that
product to be given substantial weight. There must also be a causal
relationship, termed a “nexus,” between the evidence and the claimed
invention. Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1376
(Fed. Cir. 2005). A nexus is required in order to establish that the evidence
relied upon traces its basis to a novel element in the claim, not to something
in the prior art. Institut Pasteur & Universite Pierre et Marie Curie v.
Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013). Objective evidence that
results from something that is not “both claimed and novel in the claim,”
lacks a nexus to the merits of the invention. In re Kao, 639 F.3d 1057, 1068
(Fed. Cir. 2011). All types of objective evidence of non-obviousness must
be shown to have such a nexus. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed.
Cir. 1995) (nexus generally); see also In re Huang, 100 F.3d 135, 140 (Fed.
Cir. 1996) (commercial success). The stronger the showing of nexus, the
greater the weight accorded the objective evidence of non-obviousness. See
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 306
(Fed. Cir. 1985).
Patent Owner argues that the commercial success and praise of
Petitioner’s TruDefinition® Duration Series Shingles with SureNail®
Technology and TruDefinition® Duration STORM® Impact-Resistant
IPR2014-01397
Patent 7,781,046 B2

28

Shingles with SureNail® and WeatherGuard® Technology (“Duration
Shingles”) “demonstrate the non-obviousness of the claims of the ’046
Patent because the Duration Shingles actually embody the claims of the ’046
Patent.” PO Resp. 50. Patent Owner relies on testimony from Robert E.
Gardner, its Vice President of Marketing, to illustrate how the Duration
Shingles embody at least independent claim 1 of the ’046 patent. Id. at 47;
Tr. 61:17–62:7.
1. Commercial Success
Evidence of commercial success “is only significant if there is a nexus
between the claimed invention and the commercial success.” Ormco Corp.
v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). To establish
a proper nexus between a claimed invention and the commercial success of a
product, a patent owner must offer “proof that the sales [of the allegedly
successful product] were a direct result of the unique characteristics of the
claimed invention—as opposed to other economic and commercial factors
unrelated to the quality of the patented subject matter.” Huang, 100 F.3d at
140.
Patent Owner argues that Petitioner’s Duration Shingles were an
instant market success due to the inclusion of the SureNail® strip. PO Resp.
53. As evidence of market share, Patent Owner states that Petitioner went
from a 5.9% share of the residential roofing market in 2007, when it
introduced the Duration Shingles, to a 9.3% share in 2009. Id.; Tr. 58:13–
22. Patent Owner stresses that Petitioner “has made it clear with its
marketing materials and pricing strategy that the value of the Duration
Shingles is in the SureNail® reinforcement strip itself.” PO Resp. 55.
IPR2014-01397
Patent 7,781,046 B2

29

Petitioner responds that “Patent Owner has failed to establish a nexus
between Petitioner’s products and the claimed subject matter.” Reply 21.
Specifically, Petitioner relies on the technical experts’ testimony that the
’968 patent requires that the thin reinforcing material must be adhered to the
outer surface of the shingle to argue that Petitioner’s products do not meet
each element of the claims. Id. (citing Ex. 1046, 191:20-193:20, 207:6-
208:19; Ex. 1003 at ¶¶ 149-51). Rather, Petitioner argues, Petitioner’s
SureNail fabric is embedded within the shingle, not adhered to the top of the
granules. Id. at 21–22. Petitioner further argues that numerous
manufacturers, not just Petitioner, saw an increase in market share during the
time period considered by Mr. Gardiner, and that the data does not indicate
any specific bases for such increase. Id. at 22. Petitioner also argues that no
novel aspect of the claimed subject matter drove the alleged commercial
success, stating that Mr. Gardiner pointed to factors such as nail zone
visibility, improved nail pull strength, and improved wind resistance, which
all are features provided by Venrick’s raised strip. Id. at 23.
The evidence provided by Patent Owner does not demonstrate
commercial success that can be attributed to the claimed subject matter.
Patent Owner focuses on the commercial success of the Duration Shingles,
which, according to Patent Owner, embody at least independent claim 1 of
the ’968 patent. PO Resp. 50–52. Assuming, arguendo, that Duration
Shingles embody the claimed invention, we are not persuaded that any
commercial success attributable to the Duration Shingles resulted from
novel, non-obvious features of the claimed invention, rather than other
features. Mr. Gardiner “pointed to factors such as nail zone visibility,
improved nail pull strength, and improved wind resistance as drivers of
IPR2014-01397
Patent 7,781,046 B2

30

success.” Reply 23 (citing Ex. 1049, 236:20–238:16, 68:8–15, 218:4–21).
But, as Petitioner argues, these features are arguably provided by Venrick’s
raised strip. Id. Further, Petitioner points out that its “SureNail®
Technology . . . encompasses a number of unclaimed features, such as a
specially formulated adhesive sealant called Tru-Bond®,” which may
explain, at least in part, any commercial success. Reply 23 (citing Ex. 1049,
157:6–159:8, 172:3–20). Accordingly, because any commercial success
may be attributable, at least in part, to unclaimed features or features known
in the prior art, Patent Owner has not established a nexus between any
commercial success and the claimed invention of the ’968 patent.
2. Praise
Patent Owner argues that praise of the Duration Shingles and the
SureNail strip is objective indicia of non-obviousness independent of
commercial success. PO Resp. 56–58. Patent Owner refers to Petitioner’s
seven-minute-long promotional video featuring contractor praise and
testimonial, “promoting the SureNail® strip apart from any particular
product.” Id. at 56–57 (citing Ex. 2018). Patent Owner also relies on
Petitioner’s Duration Shingles brochure, in which “contractors . . . describe
the claimed reinforcement layer in glowing terms,” as evidence of praise.
Id. at 58 (citing Ex. 2003). Petitioner argues that Patent Owner’s assertions
of praise fail for the same reasons as Patent Owner’s commercial success
arguments. Reply 23 n.13.
As with commercial success, evidence of industry praise is only
relevant when it is directed to the merits of the invention claimed. See
Ormco Corp., 463 F.3d at 1311–12. Petitioner argues that “SureNail
Technology” is a marketing term that is sometimes used to identify the
IPR2014-01397
Patent 7,781,046 B2

31

SureNail strip and other times used to identify, generally, the strip along
with the bonding layer and the overall configuration of the shingle. Reply
23; Ex. 2003, 3; Tr. 76:4–18 (referring to Tru-Bond sealant and an additional
strip of adhesive as part of SureNail Technology). Thus, when Patent
Owner uses the term “SureNail Technology” in discussing the probative
worth of Petitioner’s marketing materials, we are unable to associate Patent
Owner’s objective evidence with particular features of the product.
Accordingly, Patent Owner’s general identification of “SureNail
Technology” as embodying the claims of the ’968 patent is insufficient to
show nexus.
Moreover, the individuals featured in the video or the brochure
alternately praise the overall shingle, features of the shingle, and the
performance of the shingle. The praise is not specific to the SureNail strip,
as Patent Owner urges. Accordingly, we do not find that the proffered
evidence of praise supports Patent Owner’s argument of non-obviousness.
III. CONCLUSION
For the foregoing reasons, after considering the Petition, Patent
Owner Response, Reply, and all evidence relied upon by Petitioner and
Patent Owner, including evidence of secondary considerations, we are
persuaded that Petitioner has shown by a preponderance of the evidence that
claims 1–9 would have been obvious over Venrick and Frankoski, and
claims 1–9 would have been obvious over Venrick and Kiik.
IV. ORDER
For the reasons given, it is
IPR2014-01397
Patent 7,781,046 B2

32

ORDERED that claims 1–9 of the ’046 patent are held
unpatentable.

This is a final written decision. Parties to the proceeding seeking
judicial review of the decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.

PETITIONER:

Jeffrey P. Kushan
Peter S. Choi
SIDLEY AUSTIN LLP
jkushan@sidley.com
peter.choi@sidley.com

PATENT OWNER:

Mehran Arjomand
Amy R. Motomura
Stephen Jones
Jack Smith
MORRISON & FOERSTER LLP
marjomand@mofo.com
amortomura@mofo.com
15681-046-IPR@mofo.com