Addressing a Patent Trial and Appeal Board (PTAB or Board) decision upholding patentability of the challenged claims in an inter partes review, the US Court of Appeals for the Federal Circuit rejected the PTAB’s broadest reasonable claim construction as unduly narrow. Owens Corning v. Fast Felt Corp., Case No. 16-2613 (Fed. Cir., Oct. 11, 2017) (Taranto, J).

Fast Felt sued Owens Corning for infringement of a patent directed to a method for making a roofing or building cover material that includes nail tabs applied by a pressure roller. Owens Corning responded by filing a petition for inter partes review, which was instituted as to three asserted obviousness grounds. 

In its final written decision, the PTAB found all claim elements to be disclosed by the prior art combinations, but concluded that a skilled artisan would not have made the combinations. The PTAB interpreted the term “roofing or building cover material” to require materials that have been or will be coated with asphalt. On that basis, the PTAB concluded that the main prior art taught away from using a pressure roller for asphalt coating, and that a skilled artisan would not have looked to the non-asphalt coating secondary prior art. The PTAB thus found the challenged claims not unpatentable. Fast Felt appealed.

The Federal Circuit reversed, concluding that the PTAB’s claim interpretation unreasonably limited the claims to materials that have been or will be covered in asphalt. The Court acknowledged that the preferred embodiments focused on such materials, but explained that the claim terms were not so limited. In particular, the Court noted that the claims were not even limited to roofing materials and more broadly included “building cover” materials. The Court pointed to one such disclosed building cover material that did not include asphalt.

Based on its broader construction, the Federal Circuit reversed the PTAB and found all claims to be unpatentable. The Court reviewed the factual record and concluded that Owens Corning did not present any meaningful response that was not tied to the asphalt requirement, and consequently held that the only permissible fact-finding was one in favor of obviousness.