Johns Manville v. Knauf Insulation - Decision Granting Institution of IPR

8/20/2019 Johns Manville v. Knauf Insulation - Decision Granting Institution of IPR

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[email protected] Paper 12571-272-7822 Entered: January 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE ____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________

JOHNS MANVILLE CORPORATION and JOHNS MANVILLE, INC.,Petitioners,

v.

KNAUF INSULATION, INC. and KNAUF INSULATION SPRL,Patent Owners. ____________

Case IPR2015-01453Patent D631,670 S

____________

Before SCOTT A. DANIELS, KRISTINA M. KALAN, andJAMES A. WORTH, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISIONInstitution of Inter Partes Review

37 C.F.R. § 42.108

mailto:[email protected]:[email protected]:[email protected]


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I. INTRODUCTION

Petitioners, Johns Manville Corporation and Johns Manville, Inc.,

filed a Petition to institute an inter partes review of the sole claim of U.S.

Patent No. D631,670 S (Ex. 1001, “the ’670 patent”). Paper 1 (“Pet.”).Patent Owners, Knauf Insulation, Inc. (the assignee of record) and Knauf

Insulation SPRL, filed a Preliminary Response. Paper 10 (Prelim. Resp.).

We have authority to determine whether to institute an inter partes

review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Upon consideration

of the Petition, we determine that Petitioners have established a reasonable

likelihood of prevailing on the claim challenged in the Petition. For the

reasons expressed below, we institute an inter partes review of the sole

claim of the ’670 patent.

A. Related Proceedings

Petitioners state that the ’670 patent has been asserted against them by

Patent Owners in the U.S. District Court for the Southern District of Indiana,

in Knauf Insulation, LLC v. Johns Manville Corporation, 1:15-cv-00111-

WTL-MJD. Pet. 1.

B. The ’ 670 Patent and Claim

The ’670 patent (Ex. 1001), titled “Insulation Material ,” relates to a

design for mineral fiber insulation, for example glass mineral wool

insulation, used in commercial and residential construction applications.

Ex. 1001, 1; Prelim. Resp. 1 – 2. The sole drawing illustrating “[t]he

ornamental design for insulation material,” as recited in the ’ 670 patentclaim, is reproduced below as a black and white photocopy reproduction on

the left, and as a color image, on the right.


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This figure, on the left, is theclaimed design as it appears on thefront page of the ’670 patent as a

photocopy of the color photographfiled during prosecution. Ex. 1001,1.

This figure, on the right, is an image ofthe actual color photograph depictingthe claimed design, as filed during

prosecution of the ’670 patent .1 Ex.1002, (Reply to Off. Act. Aug. 6,2010, 4).

C. The Alleged Grounds of Unpatentability

Petitioners contend that the challenged claim is unpatentable on the

following specific grounds:

1 The color photograph was accepted by the Examiner pursuant to a Petitionunder 37 C.F.R. 1.84(a)(2). See Ex. 1002, 10 – 11 (Notice of Allowability,mailed Dec. 10, 2010, 1 – 2). The color photograph is part of the prosecutionhistory of the ’670 patent and may be accessed via the USPTO’s PatentApplication Information Retrieval (PAIR) system. See Ex. 1001,Description.


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References Basis

Owens Corning PROPINK Smartperm™ VaporRetarder 2

§ 102

Johns Manville SG Series Spin-Glas® & RangeSpin Glas Brochure 3 in view of OC PROPINK,Johns Manville Microlite® AA BlanketsBrochure 4 (“JM Microlite”), and the KnaufCrown Floor Slab reference 5 (“Knauf CrownFloor Slab”).

§ 102§ 103

Soundproofing Your Walls, The FamilyHandyman Magazine 6 in view of OC PROPINK,JM Microlite, and Knauf Crown Floor Slab.

§ 102§ 103

Knauf: Timber Frame External Walls: Non-

Residential Brochure7

in view of OC PROPINK,JM Microlite, and Knauf Crown Floor Slab.

§ 102

§ 103

Owens Corning – 2006 At A Glance Report 8 inview of OC PROPINK, JM Microlite, andKnauf Crown Floor Slab.

§ 102§ 103

Owens Corning 2007 Progress Report 9 in view ofOC PROPINK, JM Microlite, and Knauf CrownFloor Slab.

§ 102§ 103

Johns Manville SG Series Spin-Glas® & RangeSpin Glas Brochure in view of JM Microlite.

§ 102§ 103

Soundproofing Your Walls, The Family § 102

2 Ex. 1003, Owens Corning, PROPINK Smartperm™ Vapor Retarder (2004)(“OC PROPINK ”).3 Ex. 1004, Johns Manville, SG Series Spin-Glas® & Range Spin Glas (1997) (“JM Spin Glas”). 4 Ex, 1005, Johns Manville, Microlite® AA Blankets , (2002) (“ JMMicrolite ”). 5 Ex. 1006 Knauf, Crown Floor Slab , (2006) (“Knauf Crown Floor Slab”) .6 Ex. 1007, Wentz, Family Handyman, Soundproofing Your Walls , (1998)(“Soundproofing”). 7 Ex. 1008 Knauf: Timber Frame External Walls: Non-Residential, (2005)(“Knauf Timber Frame”) 8 Ex. 1009, Owens Corning, At a Glance, (2006) (“OC 2006 Report”). 9 Ex. 1010, Owens Corning, Progress Report , (2007) (“OC 2007 Report”) .


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References Basis

Handyman Magazine in view of JM Microlite. § 103Knauf: Timber Frame External Walls: Non-Residential Brochure in view of JM Microlite.

§ 102§ 103

Petitioners support their challenges with the Declarations of Mr. Mark

A. Granger (Ex. 1014) (“Granger Declaration”), Ms. Teresa K. O’Brien (Ex.

1015) (“O’Brien Declaration”), Ms. Anne N. Barker (Ex. 1016) (“Barker

Declaration”) , and Mr. Michael Fay (Ex. 1017) ( “Fay Declaration ”). Pet.

16, 24, 32, and Appendix – List of Exhibits.

II. CLAIM CONSTRUCTION A. Legal Standard

In an inter partes review, “[a] claim i n an unexpired patent shall be

given its broadest reasonable construction in light of the specification of the

patent in which it appears.” 37 C.F.R. § 42.100(b). With respect to design

patents, it is well-settled that a design is represented better by an illustration

than a description. Egyptian Goddess, Inc. v. Swisa, Inc. , 543 F.3d 665, 679

(Fed. Cir. 2008) (en banc) (citing Dobson v. Dornan , 118 U.S. 10, 14

(1886)). Although preferably a design patent claim is not construed by

providing a detailed verbal description, it may be “helpful to point out . . .

various features of the claimed design as they relate to the . . . prior art.”

Egyptian Goddess , 543 F.3d at 679 – 80; cf. High Point Design LLC v. Buyers

Direct, Inc. , 730 F.3d 1301, 1314 – 15 (Fed. Cir. 2013) (remanding to district

court, in part, for a “verbal description of the claimed design to evoke a

visual image consonant with that design”) (citation omitted).

Petitioners argue that the claimed design includes certain elements,

namely “insulation material,” a “cloud -like appearance, ” “variations in a

swirl pattern,” and a “variation of distinct hues.” Pet. 15– 19. For its part,


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Patent Owners do not provide a specific claim construction, but contend that

Petitioners ’ verbal descriptions of individual elements of the design “fail to

evoke a visual image co nsonant with the claimed design,” and ignore color

as part of the ornamental design. Prelim. Resp. 4, 6.

The “DESCRIPTION” portion of the ’ 670 patent identifies the single

view of the insulation material depicted in the Figure, and additionally states

that “ [t]he patent or application file contains at least one photograph

executed in color .” Ex . 1001. It is helpful in our analysis, again, to

reproduce the color photograph of the claimed design for insulation material

below.

The figure above depicts the color version of the sole figure of the

’67 0 patent.

There are two particular aspects of the color photograph which

Petitioners argue are not properly part of any claim construction. Pet. 14,

16 – 18. First, even though Applicant for the ’670 patent relied upon a color

photograph as the depiction of the claimed design for insulation material,

Petitioners assert that the Applicant never claimed a specific color. Pet. 14.

Specifically, where the Applicant’s recitation in the Petition for Color


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Photograph under 37 C.F.R. § 1.84(b)(2) stated that “color is an integral

part ” of the claimed design, Petitioners contend that “the Applicant did not

identify any parti cular color or colors that are ‘integral.’” Pet. 14, see also

Ex. 1002, 13 (Pet. for Color Photograph). Second, Petitioners assert that the

grid-like surface representations, or “waffle pattern ,” in the photograph “is

not properly considered part of the claimed ornamental design. ” Pet. 16

(citing Ex. 1012 ¶¶ 21, 23 – 24; Ex. 1012 ¶¶ 6 – 10). To support these

arguments, Petitioners rely on two experts, Dr. Martin J. Bide, a textile and

color scientist at the University of Rhode Island, and Mr. Mark A. Granger,

a Research Manager for Johns Manville. Id. at 16 – 17. Based on their

testimony, and on case law cited in the Petition, Petitioners contend that the

“waffle pattern” occurs due to a chain or mesh conveyor belt upon which the

fiberglass insulation rests during the drying/baking process and “ is not an

ornamental feature but simply evidence of the production process. ” Id. at

17.

In response to the issue of color, Patent Owners argue that the prosecution history of the ’670 patent, including the Petition Under 37

C.F.R. § 1.84(b)(2) , indicates that “the Applicant clearly intended the colors

shown in the photograph to form part of the claimed design. . . . and [color]

cannot be ignored when determining the patentability of the claimed

design. ” Prelim. Resp. 10– 11. With respect to the “waffle pattern ,” Patent

Owners argue that the Petition is inconsistent because it initially asserts that

the waffle pattern is not part of the design, but yet provides an analysis of

waffle pattern in the prior art. Prelim. Resp. 6 f.n. 1.

With respect to Petitioners’ second argument regarding the “waffle

pattern,” w e do not agree with Petitioners ’ analysis that a “waffle pattern” is


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not properly an ornamental aspect of the claimed design. The patent itself

expressly claims “insulation material, as shown and described” in the single

photograph accepted as the sole figure in the patent. See Ex. 1001, 1.

Observing the overall appearance of the design, the “waffle pattern ” is

visually apparent, although not terribly distinct, in the color photograph.

The Applicant, in submitting a Petition Under 37 C.F.R. § 1.84(b)(2) chose a

photograph as the most accurate way of representing their design to the

public, and did not disclaim any aspect of the design as shown and

described, including the “waffle pattern.” Ex. 1002, 10 – 11. This

prosecution strategy limits the scope of the patent claim and includes the

visually apparent “waffle pattern .” See In re Mann, 861 F.2d 1581, 1582

(Fed.Cir.1988) (“Design patents have almost no scope. The claim at bar, as

in all design cases, is limited to what is shown in the application

drawings.”) . Therefore, we interpret the claimed design as including, in

addition to other ornamental features, a “ waffle pattern ” as shown and

described by the sole figure.We are similarly unpersuaded by Petitioners first argument that color

is not an element of the claimed design. Besides submitting a color

photograph, as opposed to a lined drawing, the Applicant’s Petition Under

37 C.F.R. § 1.84(b)(2) expressly states that “ [a] color photograph is

necessary because color is an integral part of the claimed invention.” The

Federal Circuit instructs us “ that color may play a role in the patentability of

a claimed design.” In re Haruna , 249 F.3d 1327, 1336 (Fed. Cir. 2001)

(citing Avia Group Int'l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1565

(Fed.Cir.1988); Litton Sys., Inc. v. Whirlpool Corp. , 728 F.2d 1423, 1443

(Fed.Cir.1984)). Notably, as Petitioners point out, neither the Petition under


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37 C.F.R. § 1.84(b)(2) , nor the ’670 patent itself, recite a ny particular color.

During prosecution of the application that became the ’670 patent , the

Applicant differentiated the claimed design from the prior art stating that

“the claimed invention includes a variation of distinct hues, such as brown

and cream. Applicant is not aware of any prior art that discloses a variation

of distinct hues throughout the insulation material. ” Ex. 1002, 20 (Reply to

Office Action 6, Sept. 24, 2010).

Observing the overall appearance of the claimed design in conjunction

with a reasonable reading of Applicant’s foregoing statement, we understand

essentially two things: first, that the Applicant is claiming “a variation of

distinct hues” and second, that a sufficient distinction in hue is, for example,

“ brown and cream. ” See id. Important to our interpretation, under the

broadest reasonable construction standard, is the fact that during prosecution

the Applicant never indicated that the colors, in the color photograph

submitted as the sole figure, are specifically “brown and cream.” We

decline to read general statements from the Applicant’s arguments during prosecution, presented in the form of an example, into the patent claim. See

In re Bigio , 381 F.3d 1320, 1325 (Fed. Cir. 2004) ( “A bsent claim language

carrying a narrow meaning, the PTO should only limit the claim based on

the specification or prosecution history when those sources expressly

disclaim the broader definition.” ) (citation omitted). We are persuaded that

color is an element of the claimed design; this element includes colors that

sufficiently impart or convey a variation of distinct hues, but is not limited to

“brown and cream.”

Petitioners assert that other elements of the claimed design should also

determine the verbal claim construction. Pet. 15 – 19. Petitioners argue that


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the ’670 patent itself, as well as the prosecution history , identify and explain

the claimed design is for “insulation material.” Id. at 15. Also, Petitioners

contend that the Examiner, during prosecution, characterized the insulation

material as havin g a “cloud like appearance” and “variations in a swirl

pattern, ” descriptions to which the Applicant did not object. Id. at 16.

Patent Owners disagree with these interpretations and argue that

Petitioners ’ verbal construction improperly emphasizes individual elements

of the design “and should instead focus on the design as a whole .” Prelim.

Resp. 5. Patent Owners do not, however, substantively contest Petitioners ’

claim constructions for these elements of the claimed design, or explain

adequately why “[i]nsulation material,” “cloud -like appearance,” and

“variations in a swirl pattern,” do not adequately describe the overall

appearance of the claimed design. See id. at 5 – 7. We are persuaded on this

record that these descriptions aptly characterize elements that are discernable

throughout the entirety of the photograph that is the sole claim of the ’670

patent.Additionally, in contesting Petitioners ’ claim construction, Patent

Owners cite to Apple, Inc. v. Samsung Electronics Co., Ltd. , 678 F.3d 1314,

1330 (Fed. Cir. 2012) for the purported “holding that [the] d istrict court’s

description was incorrect because ‘ a side-by-side comparison of the two

designs shows substantial differences in overall visual appearance between

the patented design and the Fidler reference .’” Prelim. Resp. 7. We are not

persuaded that this holding in Apple , as it relates to a visual comparison of

the asserted “Fidler” prior art reference with the claimed design for purposes

of determining a Rosen reference, is inconsistent with claim construction in


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the present proceeding. 10 Id. Accordingly, we are persuaded, on this record,

that “insulation material,” “cloud -like appearance,” and “variations in a swirl

pattern,” are fitting descriptions of the overall appearance of the claimed

design.

Because the claimed design consists of only a single 2-dimensional

figure, shown simply in a planar view (although the ’670 patent describes

the view as “a front perspective view”) , and without any environmental or

explanatory context, we find it helpful, as discussed above, to describe

verbally these additional elements of the claim for purposes of comparison

with the prior art. See Egyptian Goddess , 543 F.3d at 680 (“While it may be

unwise to attempt a full description of the claimed design, a court may find it

helpful to point out . . . various features of the claimed design as they relate

to the accused design and the prior art.”); see also High Point Design , 730

F.3d at 1314 (holding that a district court erred by failing to translate the

design into a verbal description for purposes of a non-obviousness analysis).

Therefore, in addition to the waffle pattern and color discussed above, thesingle embodiment of the claimed design also depicts insulation material

having a cloud-like appearance with variations in a swirl pattern.

10 As a starting point for a § 103 rejection for designs, “there must be areference, a something in existence, the design characteristics of which are

basically the same as the claimed design in order to support a holding ofobviousness. Such a reference is necessary whether the holding is based onthe basic reference alone or on the basic reference in view of modificationssuggested by secondary references.” In re Rosen , 673 F.2d at 391; see also

Durling v. Spectrum Furniture Co. , 101 F.3d 100, 103 (Fed. Cir. 1996)(stating “the first step in an obviousness analysis for a design patent requiresa search of the prior art for a primary reference”). A “ Rosen reference”refers to such a starting point.


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III. ANALYSIS

A. Principles of Law

1. Anticipation

Notably f or design patents, the “ordinary observer” test for

anticipation is the same test used for infringement. See Int’l Seaway Trading

Corp. v. Walgreens Corp. , 589 F.3d 1233, 1240 (Fed. Cir. 2009) (applying

Egyptian Goddess holding to the test for anticipation). It is important, also,

to keep in mind for designs that t he “ordinary observer” is not the same as a

person of ordinary skill in the art. The ordinary observer is quite often a

consumer, or purchaser, considering a product in the ordinary course of

business. See Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co. ,

162 F.3d 1113, 1117 (Fed. Cir. 1998) (“[T]he focus is on the actual product

that is presented for purchase, and the ordinary purchaser of that product.”)

In Egyptian Goddess , the Federal Circuit explained that the ordinary

observer is also a person familiar with the prior art designs. Egyptian

Goddess 543 F.3d at 675 – 78. For purposes of determining anticipation, it isnecessary to compare all the ornamental features of the claimed design to the

prior art under the ordinary observer standard. Int’ l Seaway , 589 F.3d at

1243 (“[T] he ordinary observer test requires consideration of the design as a

whole .”) (citation omitted). For purposes of comparison the question is

whether the claimed design and the prior art are substantially the same: “The

mandated overall comparison is a comparison taking into account significant

differences between the two designs . . . . minor differences cannot prevent a

finding of anticipation. ” Id., see also Crocs, Inc. v. Int’l Trade Comm’n , 598

F.3d 1294, 1303 (Fed. Cir. 2010).


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2. Obviousness

In a challenge to a design patent based on obviousness under

35 U.S.C. § 103, the ultimate inquiry is “whether the claimed design would

have been obvious to a designer of ordinary skill who designs articles of the

type involved.” Apple, Inc. v. Samsung Elecs. Co., Ltd. , 678 F.3d 1314,

1329 (Fed. Cir. 2012) (citing Titan Tire Corp. v. Case New Holland, Inc. ,

566 F.3d 1372, 1375 (Fed. Cir. 2009) quoting Durling v. Spectrum Furniture

Co. , 101 F.3d 100, 103 (Fed. Cir. 1996)). Here, Petitioners assert that the

relevant designer of ordinary skill is “ someone with a background and

training in color and color management . . . . and could be a professional in

one of several different industries: a graphic designer, a person involved in

the measurement of color in textiles, a color consultant, a color measurement

instrument professional, or a person involved in paint pigmentation. ” Pet.

22 – 23 (citing Ex. 1012 ¶ 13).

This obviousness inquiry consists of two steps. Apple , 678 F.3d at

1329. In the first step, a primary reference (sometimes referred to as a“ Rosen reference” as discussed above at note 10 ) must be found, “the design

characteristics of which are basically the same as the claimed design.” Id.

(citing Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 103 (Fed. Cir.

1996) quoting In re Rosen , 673 F.2d 388, 391 (CCPA 1982)). This first step

is itself a two- part inquiry under which “a court must both ‘(1) discern the

correct visual impression created by the patented design as a whole; and (2)

determine whether there is a single reference that creates ‘basically the

same’ visual impression.’” High Point Design , 730 F.3d at 1312 (quoting

Durling , 101 F.3d at 103).


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In the second step, the primary reference may be modified by

secondary references “to create a design that has the same overall visual

appearance as the claimed design .” Id. at 1311. However, the “secondary

references may only be used to modify the primary reference if they are ‘so

related [to the primary reference] that the appearance of certain ornamental

features in one would suggest the application of those featur es to the other.’”

Durling , 101 F.3d at 103 (quoting In re Borden , 90 F.3d 1570, 1575 (Fed.

Cir. 1996)).

B. Alleged Anticipation by OC PROPINK (Ex. 1003)

Petitioners argue that OC PROPINK anticipates the claimed design

because it “ discloses the same overall visual appearance as the claimed

design of the ’670 patent.” Pet. 24. Petitioners provide a visual comparison

of OC PROPINK and the sole figure depicting the insulation material

claimed in the ’670 patent which we reproduce below:


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Taken from the Petition, t he sole figure of the ’670 patent is shown,

above, in comparison to OC PROPINK. Id. at 25.

Considering both designs for insulation material in the abovecomparison, we agree with Petitioners that an ordinary observer would

perceive each design as exhibiting insulation material having a waffle

pattern and a cloudlike appearance with variations in a swirl pattern. Id. at

26, 29. Turning to the issue of color and “variation of distinct hues,” the


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claimed design in the ’670 patent is a different color from OC PROPINK.

Our claim construction, however, is not limited to a specific color, but

includes colors which sufficiently impart a variation of distinct hues.

Patent Owner argues that the ordinary meaning of “hue” is “color.”

Prelim. Resp. 12 (citing Ex. 2001, 2). During prosecution the Applicant,

however, used “hue” and “color” differently,stating that hue in the applied

§102 prior art reference, Foltz, was constant, “Foltz discloses an insulation

material with the same hue – yellow – throughout. ” Ex. 1002, 19. On the

other hand, the Applicant explained that color in Foltz may vary: “To the

extent there are variations in the color of Foltz, the hue remains constant and

the variations are merely the changes in the lightness of yellow. ” Id.

Neither the phrase “distinct variations in hues” nor the term “hue,” as used

by the Applicant in differentiating their claimed design from the prior art

during prosecution of the ’607 patent, is effectively defined by Patent

Owners.

Regarding the phrase “distinct variations in hue,” Petitioners relyupon their expert, Dr. Bide, to “scientifically assess ‘a variation of distinct

hues,’ . . . by performing spectrophotometric analysis. ” Pet. 29. Dr. Bide

testifies that he used a well-recognized standard call ed “CIE” to determine a

“hue angle” measured in degrees. 11 Ex. 1012 ¶ 33. From analysis of the

color photograph submitted during prosecution of the ’670 patent, Dr. Bide

determined a variation of hue angle of 36.3 degrees. Id. ¶ 38. Assessing OC

11 We do not consider that spectrophotometric analysis would be a skill ortechnique that an ordinary observer would apply to a comparison of designs.On the record before us at this point in the proceeding we are persuaded toaccord some weight to Dr. Bide’s testimony and analysis with respe ct to themeasured variations in hue.


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PROPINK, Dr. Bide determined a variation of hue angle of 55.7 degrees.

Id. ¶ 40. Based on our own independent observation, and on the proffered

testimony of Dr. Bide, we are persuaded that OC PROPINK discloses a

distinct variation in hue as the claim is properly interpreted.

Accordingly, based on the information presented at this stage of the

proceeding, we are persuaded that there is a reasonable likelihood Petitioners

would prevail in showing the so le claim of the ’670 patent is anticipated by

OC PROPINK.

C. Alleged Anticipation and Obviousness – JM Spin Glas and

either of OC PROPINK, JM Microlite, and Knauf Crown FloorSlabPetitioners argue that the sole claim of the ’670 patent is anticipated

by JM Spin Glas, or in the alternative, obvious over JM Spin Glas and either

OC PROPINK, JM Microlite, and Knauf Crown Floor Slab. Pet. 31 – 37.

Patent Owners argue mainly that grounds 1 – 6 are premised on an

improper claim interpretation and, therefore, “JM has failed to meet its

burden of showin g ‘ that there is a reasonable likelihood that [it] would prevail with respect to at least 1 of the claims challenged in [its] petition. ’”

Prelim. Resp. 14 (citing 35 U.S.C. § 314(a)). Patent Owners provide no

further substantive analysis or discussion relative to these proposed grounds

of unpatentability and assert only that “[n] one of the cited art would appear

to the ordinary observer to look like the full color photograph of the design

patent. ” Id. at 15.

Petitioners provide a side-by-side comparison of the sole figure of the

’670 patent and JM Spin Glas as reproduced below:


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The sole figure of the ’670 patent is shown, above, on the left in side-

by-side comparison to JM Spin Glas on the right. Id. at 32.

1. Anticipation

Considering both designs for insulation material, we agree with

Petitioners that an ordinary observer would perceive each design as

exhibiting insulation material having a cloudlike appearance with variations

in a swirl pattern. Id. at 33. Also, we determine that JM Spin Glas discloses

a “distinct variation in hue” based on our own observations and Dr. Bide’s

testimony that JM Spin Glas contains a variation of hue angles of 62.1

degrees which, like OC PROPINK discussed above, is greater than the

measured variation of hue angles of the claimed design. Ex. 1012 ¶ 42 see

also Pet. 37. What is not readily apparent in JM Spin Glas is a “waffle

pattern.”


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Petitioners argue that the “waffle pattern” is inherent in insulation

material because “it is a standard characteristic of the manufacturing process

of fiberglass insulation. ” Pet. 33 (citing Ex. 1014 ¶¶ 6 – 10). Petitioner’s

asserted expert on insulation manufacturing, Mr. Granger, explains in his

Declaration, however, that in certain cases a surface of the insulation may

not have a waffle pattern, for instance when the insulation is cut in half after

the curing process, thus separating the top and bottom half, or when the

conveyor flights are caused to “skid” on the surface of the insulation. Ex.

1014 ¶ 9. “To establish inherency, the extrinsic evidence ‘must make clear

that the missing descriptive matter is necessarily present in the thing

described in the reference.’” In re Robertson , 169 F.3d 743, 745 (Fed. Cir.

1999) (citation omitted). Inherency is not proven “by probabilities or

possibilities. The mere fact that a certain thing may result from a given set

of circumstances is not sufficient.” Id. (citation omitted). We appreciate

Mr. Granger’s explanation that “[c] onveyor belts that are used in the process

off fabricating light-density fiberglass insulation share the commoncharacteristic that they imprint the heated glass fibers .” Ex. 1014 ¶ 8 .

Petitioners’ expert, however, does not state that the curing and imprinting

process described in his Declaration is the only manner in which insulation

material is manufactured, only that it is “common.” Id. ¶ 6. Nor does Mr.

Granger state that the waffle pattern is necessarily present in all insulation

materials, or that the manufacturing always produces the same visual

appearance. See id. ¶ 8. Mr. Granger, in fact, testifies that sometimes a

pattern is not imprinted or observable on the surface of some insulation

materials. See id. ¶ 9. Although it may be quite common for insulation

material to have such a waffle pattern imprinted upon its surfaces, we are not


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persuaded by this evidence that such a waffle pattern is an inherent

characteristic of material insulation.

2. Obviousness

As discussed above, what is not readily apparent in JM Spin Glas is a

“waffle pattern.” To support its obviousness contentions, Petitioners turn to

any of OC PROPINK, JM Microlite, and Knauf Crown Floor Slab in which

a waffle pattern is arguably visible. Pet. 36. Petitioners argue that “the

primary JM Spin-Glas reference has “basically the same” design

characteristics as the claimed ’670 patent design. Id. at 35 – 36 (citing

Durling , 101 F.3d at 103). Petitioners next contend that the combination of

any these references with JM Spin Glas would be obvious because all four

r eferences are “so related that the appearance of certain ornamental features

in one would suggest the application of those features to the other.” Id.

(citing In re Borden , 90 F.3d at 1575).

We reproduce, below, the figures from each of the asserted secondary

references for purposes of comparison to JM Spin Glas.

The figure, above, is an image of insulation material disclosed in the

OC PROPINK reference. See Ex. 1003.


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The figure, above, is an image of insulation material disclosed in theKnauf Crown Floor Slab reference. Ex. 1006.

The figure, above, is an image of different insulation materials

disclosed in the JM Microlite reference. Ex. 1005.


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As discussed above, we are persuaded by Petitioners evidence that JM

Spin Glas exhibits substantially the same visual impression as that observed

in the claimed design as a whole, including all the elements of the claim as it

is properly interpreted except for the “waffle pattern,” and is therefore an

appropriate Rosen reference. Observing the secondary references above, we

are further persuaded that each of these secondary references also depict

colored insulation material that creates a substantially similar overall visual

impression to JM Spin Glas and, thus, are so related to the primary reference

such that the appearance of certain ornamental features in one would suggest

the application of those features to the other as required under Durling .

Accordingly, on the record before us, we are persuaded that any of OC

PROPINK, JM Microlite, and Knauf Crown Floor Slab, are so related in

appearance to JM Spin Glas that any of these references would have

suggested to an ordinary designer to modify JM Spin Glas to have a “waffle

pattern” and achieve the same overall visual appearance as the presently

claimed design. D. Alleged Anticipation and Obviousness – JM Spin Glas and JM

Microlite

This alleged anticipation and obviousness ground is similar to the

previous ground discussed above in III.C, involving the combination of JM

Spin Glas and JM Microlite. This ground further asserts purported evidence

of insulation material disclosed in JM Microlite as “brown and cream.” Pet.

57 – 59. Petitioners assert that “to the extent [JM Spin Glas] is deemed not toinclude in stances of the colors “brown and cream,” it would have been

obvious to incorporate a brown and cream design in light of JM Microlite

Blankets. ” Id. at 57 – 58. For the reasons discussed above, we are persuaded

that JM Spin Glas is an appropriate primary reference and that JM Microlite


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is sufficiently related as insulation material, and in appearance, such that

certain ornamental features in one would suggest the application of those

features to the other.

As best observed in JM Microlite, reproduced above in III.C.2, this

photograph displays four examples of JM Microlite Blankets, including one

blanket of insulation material, the second from the bottom, which appears to

have a color and hue substantially similar to that of the color photograph in

the ’670 patent, i.e. brown and cream. See Ex. 1005. On the record before

us, we are persuaded that JM Microlite is so related in appearance to JM

Spin Glas that it would have suggested to an ordinary designer to modify JM

Spin Glas to have a “waffle pattern” as well as the purported hue and color

of the “brown and cream” JM Microlite blanket and achieve the same

overall visual appearance as the presently claimed design.

E. Alleged Anticipation and Obviousness – Soundproofing andeither of OC PROPINK, JM Microlite, and Knauf Crown FloorSlab

Petitioners argue that the sole claim of the ’670 patent is anticipated by, or in the alternative, obvious over Soundproofing and either OC

PROPINK, JM Microlite, and Knauf Crown Floor Slab. Pet. 38 – 43.

As discussed above, Patent Owners provide no substantive analysis or

discussion relative to this proposed ground. See Prelim. Resp. 15.

Petitioners provide several side-by-side comparisons of the sole figure

of the ’670 patent and photographs from Soundproofing, one of wh ich we

reproduce below:


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The sole figure of the ’670 patent is shown, above, on the left in

comparison to Soundproofing photograph, on the right, labeled

“Soundproofing I” . Pet. 39.

1. Anticipation

Considering the overall appearance of both designs for insulation

material, we agree with Petitioners that an ordinary observer would perceivethe insulation material shown in Soundproofing as exhibiting a cloudlike

appearance with variations in a swirl pattern substantially similar to the

claimed design. Id. at 40. Also, we are persuaded on the record before us

that Soundproofing discloses a “distinct variation in hue” based on our

observations and Dr. Bide’s testimony that Soundproofing contains

variations of hue angles of 49.7, 40.9, and 41.9 degrees, taken from three

different photographs in Soundproofing. Ex. 1012 ¶ 44. These values are

each greater than the 36.3 measured variation of hue angles of the claimed

design. Id. , see also Pet. 42.


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Soundproofing does not, however, disclose a “waffle pattern.”

Petitioners argue again that the “waffle pattern” is inherent in insulation


of fiberglass insulation.” Pet. 40 – 41 (citing Ex. 1014 ¶¶ 6 – 10). For the

same reasons as discussed above relative to JM Spin Glas, we are also not

persuaded that Soundproofing inherently contains a “waffle pattern.”

2. Obviousness

For a “waffle pattern,” Petitioners turn to any of OC PROPINK, JM

Microlite, and Knauf Crown Floor Slab in which such a waffle pattern is

arguably visible. Pet. 41. 12 Petitioners argue that Soundproofing meets the

requirement of a primary reference because “[t] he Soundproofing images

have ‘basically the same’ design characteristics as the claimed ’670 patent

design. ” Id. (citing Durling , 101 F.3d at 103 (citation omitted)). Petitioners

then assert that the combination of any of these secondary references and

Soundproofing would be obvious because all four references are “so related

that the appearance of certain ornamental features in one would suggest theapplication of those features to the other.” Id. (citing In re Borden , 90 F.3d

at 1575 (citation omitted)).

As discussed above with respect to Petitioners anticipation argument

in this ground, we are persuaded that Soundproofing exhibits substantially

the same visual impression and is basically the same as the claimed design,

including all the elements of the claim as it is properly interpreted, except

12 We do not, again, reproduce the photographs from the secondaryreferences. For purposes of reference, the relevant photographs from the OCPROPINK, JM Microlite, and Knauf Crown Floor Slab references are shownabove, with respect to the previous ground.


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for the “waffle pattern,” and is therefore an appropriate Rosen reference.

Observing the secondary references, we are further persuaded that each of

the secondary references also depict colored insulation material that creates

a substantially similar overall visual impression to Soundproofing and, thus,

are so related to the primary reference that the appearance of certain

ornamental features in one would suggest the application of those features to

the other as required under Durling . Accordingly, on the record before us,

we are persuaded that any of OC PROPINK, JM Microlite, and Knauf

Crown Floor Slab, would have suggested to an ordinary designer to modify

Soundproofing to include a “waffle pattern” and achieve the same overall

visual appearance of the presently claimed design.

F. Alleged Anticipation and Obviousness – Soundproofing and JM Microlite


previous ground discussed above in III.E, involving the combination of

Soundproofing and JM Microlite. This ground further asserts purported

evidence of insulation material disclosed in JM Microlite as colored “brown

and cream.” Pet. 57 – 59. Petitioners assert that “to the extent

[Soundproofing] is deemed not to include instances of the colors “brown and

cream,” it would have been obvious to incorporate a brown and cream

design in light of JM Microlite Blankets. ” Id. at 57 – 58. For the reasons

discussed above, we are persuaded that Soundproofing is an appropriate

Rosen reference and that JM Microlite is sufficiently related as insulationmaterial, and in appearance, such that certain ornamental features in one

would suggest the application of those features to the other.

As best observed in JM Microlite, reproduced above in III.C.2, this

reference displays images of four examples of JM Microlite Blankets,


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including one blanket of insulation material, the second from the bottom,

which appears by a reasonable observation to be of substantially similar

color and hue to that of the color photograph in the ’670 patent , i.e. brown

and cream. See Ex. 1005. On the record before us, we are persuaded that

JM Microlite is so related to the primary reference that it would have

suggested to an ordinary designer to modify Soundproofing to include a

“waffle pattern” as well as the color and hue of JM Microlite and achieve the

same overall visual appearance of the presently claimed design.

G. Alleged Anticipation and Obviousness – Knauf Timber Frame

and either of OC PROPINK, JM Microlite, and Knauf Crown Floor Slab

Petitioners argue that the sole claim of the ’670 patent is anticipated

by, or in the alternative, obvious over Knauf Timber Frame and either OC

PROPINK, JM Microlite, and Knauf Crown Floor Slab. Pet. 43 – 47.

As discussed above, Patent Owners provide no substantive analysis or

discussion relative to this proposed ground. See Prelim. Resp. 15.

Petitioners provide a comparison of the sole figure of the ’670 patentand a photograph from Knauf Timber Frame, which we reproduce below:


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The sole figure of the ’670 patent is shown, above, in comparison to a

photograph from Knauf Timber Frame , labeled “ Knauf: Timber Frame

Walls. ” Pet. 44 .


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1. Anticipation

Considering both designs for insulation material, we agree with

Petitioners that an ordinary observer would perceive the insulation material

shown in Knauf Timber Frame as exhibiting a cloudlike appearance with

variations in a swirl pattern substantially similar to the claimed design. Id.

at 40. Also, we are persuaded on the record before us that Knauf Timber

Frame discloses a “distinct variation in hue” based on our observations and

Dr. Bide’s testimony that Knauf Timber Frame contains variation of hue

angles of 37.2 degrees, based on analysis of the above photograph in Knauf

Timber Frame. Ex. 1012 ¶ 46. This value is greater than the 36.3 measured

variation of hue angles of the claimed design. Id., see also Pet. 46.

Knauf Timber Frame does not, however, disclose a “waffle pattern.”

Petitioners a rgue again that the “waffle pattern” is inherent in insulation


of fiberglass insulation.” Pet. 4 5 (citing Ex. 1014 ¶¶ 6 – 10). For the same

reasons as discussed above relative to JM Spin Glas, we are not persuadedthat Knauf Timber Frame inherently contains a “waffle pattern.”

2. Obviousness

For a “waffle pattern,” Petitioners turn to any of OC PROPINK, JM

Microlite, and Knauf Crown Floor Slab in which such a waffle pattern is

arguably visible. Pet. 45. Petitioners argue that Knauf Timber Frame meets

the requirement of a primary reference because “[t] he Knauf [images have]

“‘ basically the same ’” design characteristics as the claimed [’670 patent ]

design. Id. (citing Durling , 101 F.3d at 103 (citation omitted)). Petitioners

then assert that the combination of any of these secondary references and

Knauf Timber Frame would be obvious because all four references are “so


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related that the appearance of certain ornamental features in one would

suggest the application of those features to the other.” Id. (citing In re

Borden , 90 F.3d at 1575) .

As discussed above with respect to Petitioners ’ anticipation argument,

we are persuaded that Knauf Timber Frame exhibits substantially the same

visual impression and is basically the same as the claimed design, including

all the elements of the claim as it is properly interpreted, except for the

“waffle pattern,” and is therefore an appropriate Rosen reference. Observing

the secondary references, we are further persuaded that each of the

secondary references also depict insulation material that creates a

substantially similar overall visual impression to Knauf Timber Frame and,

thus, are so related to the primary reference such that the appearance of

certain ornamental features in one would suggest the application of those

features to the other as required under Durling . Accordingly, on the record

before us, we are persuaded that any of OC PROPINK, JM Microlite, and

Knauf Crown Floor Slab would have suggested to an ordinary designer tomodify Knauf Timber Frame and achieve the same overall visual appearance

of the presently claimed design.

H. Alleged Anticipation and Obviousness – Knauf Timber Frameand JM Microlite


previous ground discussed above in III.G, involving the specific

combination of Knauf Timber Frame and JM Microlite. This ground furtherasserts purported evidence of insulation material disclosed in JM Microlite

as “brown and cream.” Pet. 57– 59. Petitioners assert that “to the extent

[Knauf Timber Frame] is deemed not to include instances of the colors

‘brown and cream,’ it would have been obvious to incorporate a brown and


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cream design in light of JM Microlite Blankets. ” Id. at 57 – 58. For the

reasons discussed above, we are persuaded that Knauf Timber Frame is an

appropriate Rosen reference and that JM Microlite is sufficiently related as

insulation material, and in appearance, such that certain ornamental features

in one would suggest the application of those features to the other.

As best observed in JM Microlite, reproduced above, in III.C.2, this

photograph displays four examples of JM Microlite Blankets, including one

blanket of insulation material, the second from the bottom, which appears to

have, not only a waffle pattern, but also a color and hue substantially similar

to that of the color photograph in the ’670 patent , i.e. brown and cream. See

Ex. 1005. On the record before us, we are persuaded that JM Microlite

would have suggested to an ordinary designer to modify the primary

reference to include the “waffle pattern” as well as the color and hue of JM

Microlite and achieve the same overall visual appearance of the presently

claimed design.

I. Additional Grounds

Petitioners have also alleged grounds of unpatentability based on,

Owens Corning – 2006 At A Glance Report, in view of either OC

PROPINK, JM Microlite, and Knauf Crown Floor Slab, and Owens

Corning 2007 Progress Report, in view of either of OC PROPINK, JM

Microlite, and Knauf Crown Floor Slab. We exercise our discretion by not

instituting review on these additional grounds. See 37 C.F.R. § 42.108(a).

IV. SUMMARY

For the foregoing reasons, we determine that the information

presented in the Petition establishes a reasonable likelihood that Petitioners


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would prevail on at least one alleged ground of unpatentability with respect

to the sole claim of the ’670 patent.

The Board has not made a final determination on the patentability of

the challenged claim.

V. ORDER

For the reasons given, it is

ORDERED that inter partes review of the ’ 670 patent is hereby

instituted as to the sole claim on the following unpatentability grounds:

1. Anticipation over OC PROPINK;

2. Obviousness over JM Spin Glass and either OC PROPINK, JMMicrolite, and Knauf Crown Floor Slab;

3. Obviousness over JM Spin Glass and JM Microlite;

4. Obviousness over Soundproofing and either OC PROPINK, JM

Microlite, and Knauf Crown Floor Slab;

5. Obviousness over Soundproofing and JM Microlite;

6.

Obviousness over Knauf Timber Frame and either OCPROPINK, JM Microlite, and Knauf Crown Floor Slab; and

7. Obviousness over Knauf Timber Frame and JM Microlite;

FURTHER ORDERED that no inter partes review is instituted on any

ground other than those specifically described above; and

FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and

37 C.F.R. § 42.4, notice is hereby given of the institution of a trial on the

grounds of unpatentability authorized above; the trial commences on the

entry date of this decision.


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For PETITIONERS:

Kristopher L. ReedDavid E. Sipiora ( pro hac vice pending)[email protected]

For PATENT OWNERS:

James R. Sweeney [email protected]

Joshua P. Larsen

[email protected]

Daniel J. [email protected]
mailto:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]

Documents

Johns Manville v. Knauf Insulation - Decision Granting Institution of IPR