Federal Circuit backs and reverses PTAB on same day
The US Court of Appeals for the Federal Circuit issued two precedential decisions yesterday, October 11, overturning one and affirming one of the Patent Trial and Appeal Board’s (PTAB) earlier rulings.
In the former, Owens Corning v Fast Felt Corporation, the court disagreed with the PTAB’s finding that claims covering nail tabs were valid.
The patent at issue—8,137,757—is owned by Fast Felt Corporation. It describes and claims “methods for printing nail tabs or reinforcement strips on roofing or building cover material”.
Fast Felt sued Owens Corning for patent infringement, with the defendant responding by seeking an inter partes review (IPR) of claims 1, 2, 4, 6 and 7.
After instituting review based on obviousness, the PTAB rejected Owens’ challenge to all of the claims. Owens appealed, claiming that obviousness is established if the broadest reasonable interpretation standard is applied to the key claim.
The Federal Circuit backed this position and reversed the PTAB’s ruling, saying that “there is only one permissible factual finding—a skilled artisan would be motivated to combine the prior art references to print nail tabs on building cover materials that are not (already or to be) asphalt coated or saturated”.
According to the court, the nozzle-based printing technique of Lassiter, one of the prior art references, and the gravure-based printing processes of two others, Hefele and Eaton, were known substitutes, “with success predictable as to materials covered by the claims”.
“There is no substantial evidence to the contrary,” the court said.
“That conclusion requires reversal as to claim 1. And Fast Felt has not made any argument to us for a different result as to independent claim 7 or as to dependent claims 2, 4 and 6,” it concluded.
In the second decision of the day, the court affirmed the PTAB’s decision in Organik Kimya v Rohm and Haas Company.
Organik had appealed against two IPR decisions in which it was the petitioner against patents owned by Rohm and Haas.
The PTAB said claims 1 to 5 of US patent number 6,020,435 and 1 to 7 of its division, US number 6,252,004, were patentable—and the Federal Circuit agreed.
Organik claimed that the patents, which cover “processes for preparing certain emulsion polymers having improved opacity”, were anticipated and obvious.
The dispute turned on two references, called Toda and Touda, with the court saying neither discloses or suggests a “swelling agent” as required by the patents.
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