In Owens Corning v. Fast Felt Corporation (decided October 11, 2017), the Court of Appeals for the Federal Circuit held that the Patent Trial and Appeal Board’s finding that obviousness was not proven in an inter parte review was founded on an improper interpretation of a claim element. The CAFC interpreted the claim element more broadly and concluded that the claim was obvious when the prior art was considered in light of the new interpretation.
The patent at issue is US8,137,757, and a representative claim is as follows:
1. A method of making a roofing or building cover material, which comprises treating an extended length of substrate, comprising the steps of:
depositing tab material onto the surface of said roofing or building cover material at a plurality of nail tabs from a lamination roll, said tab material bonding to the surface of said roofing or building cover material by pressure between said roll and said surface.
The Board provided a broadest reasonable interpretation for “roofing or building cover material,” and it is clear from the Decision that the broadest reasonable interpretation required that the “roofing or building cover material” must be asphalt saturated at some point, i.e., either at the time the tab material is deposited, or after the tab material is deposited. Relying heavily on this interpretation, the Board found that the Petitioner did not show that a person of ordinary skill would have combined the references because 1) a person of ordinary skill would not look to the secondary reference to solve a problem in asphalt saturated material because the secondary reference did not disclose asphalt saturated material, and 2) a person of ordinary skill would have been discouraged from the modification because the modification would not work when used with asphalt saturated material.
The CAFC held that the term “roofing or building cover material” should not be limited to asphalt saturated material. The CAFC based this conclusion on the fact that, while the preferred embodiment of the ‘757 patent described asphalt saturated material, the claims were not specifically limited to this material, and the specification appeared to describe alternative embodiments that did not include asphalt saturated material. Based on this new claim interpretation, the CAFC cited KSR and held that the claimed invention was merely the combination of familiar elements according to known methods yielding no more than predictable results.
While many cases on this blog have discussed scenarios in which the CAFC holds that the PTAB construed claim terms too broadly under the broadest reasonable interpretation standard (e.g., see CAFC Requires Broadest Reasonable Interpretation to Correspond to Inventor’s Description in Spec), this case cuts the opposite way with the CAFC holding that the PTAB construed a claim term too narrowly.