Filed on behalf of Louisiana-Pacific Corporation
`By: W. Edward Ramage
`
`BAKER DONELSON BEARMAN
`
`CALDWELL & BERKOWITZ, P.C.
`211 Commerce Street
`Baker Donelson Center, Suite 800
`Nashville, Tennessee 37201
`Telephone: (615) 726-5771
`Facsimile: (615) 744-5771
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`LOUISIANA-PACIFIC CORPORATION,
`Petitioner
`
`v.
`
`HUBER ENGINEERED WOODS LLC,
`Patent Owner
`
`
`
`AIA Review IPR2020-TBD
`U.S. Patent No. 8,474,197
`
`
`PETITION FOR INTER PARTES REVIEW
`PURSUANT TO 37 C.F.R. § 42.100, et seq.
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: W. Edward Ramage
`
`BAKER DONELSON BEARMAN
`
`CALDWELL & BERKOWITZ, P.C.
`211 Commerce Street
`Baker Donelson Center, Suite 800
`Nashville, Tennessee 37201
`Telephone: (615) 726-5771
`Facsimile: (615) 744-5771
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`LOUISIANA-PACIFIC CORPORATION,
`Petitioner
`
`v.
`
`HUBER ENGINEERED WOODS LLC,
`Patent Owner
`
`
`
`AIA Review IPR2020-TBD
`U.S. Patent No. 8,474,197
`
`
`PETITION FOR INTER PARTES REVIEW
`PURSUANT TO 37 C.F.R. § 42.100, et seq.
`
`
`
`
`
`
`
`
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`AIA Review IPR2020-TBD
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`TABLE OF CONTENTS
`
`I. MANDATORY NOTICES (37 C.F.R. § 42.8) .............................................. 5
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) .................................... 5
`
`Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................. 5
`
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) .......................... 6
`
`Service Information (37 C.F.R. § 42.8(b)(4)) ...................................... 6
`
`Grounds for Standing (37 C.F.R. § 42.104(a)) ..................................... 7
`
`II.
`
`IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED (37
`
`C.F.R. § 42.104(b)) ......................................................................................... 7
`
`1.
`
`2.
`
`3.
`
`Challenged Claims ............................................................................... 7
`
`Prior Art References Relied Upon ....................................................... 8
`
`Statutory Grounds on Which the Challenge is Based ........................ 17
`
`III. OVERVIEW OF THE ‘197 PATENT ......................................................... 21
`
`A.
`
`The ‘197 Patent Specification ............................................................ 21
`
`IV. LEVEL OF ORDINARY SKILL ................................................................. 23
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`V.
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`CLAIM CONSTRUCTION ......................................................................... 24
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`VI. GROUNDS FOR UNPATENTABILITY ................................................... 24
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`A. GROUND 1: Claims 1-20 are rendered obvious by APA as primary
`
`reference in view of cited prior art. .................................................. 25
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`
`
`ii
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`
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`B. GROUND 2: Claims 1-20 are rendered obvious by Forbes as
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`primary reference in view of cited prior art. ..................................... 60
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`C. GROUND 3: Claims 1-20 are rendered obvious by Kenji as primary
`
`reference in view of cited prior art. .................................................. 68
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`VII. CONCLUSION ............................................................................................ 75
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`EXHIBIT LIST
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`Description of Document
`
`U.S. Patent 8,474,197 (“the Huber Patent”)
`
`Declaration of Peter Laks, Ph.D. in Support of Petition for Inter
`Partes Review (“Laks IPR Decl.”)
`Prosecution History
`
`Complaint
`
`“APA Engineered Wood Handbook,” 2002 (“APA”)
`
`ASTM D5795-95(2000), entitled “Standard Test Method For
`Determination Of Liquid Water Absorption Of Coated Hardboard
`And Other Composite Wood Products Via "Cobb Ring"
`Apparatus,” 2000 (“ASTM D5795”)
`ASTM Research Report: D01-1093, entitled “Interlaboratory Study
`to Establish Precision Statements for ASTM D5795, Test Method
`for Determination of Liquid Water Permeability of Applied
`Coatings on Hardboard and Other Composite Wood Products Via
`"Cobb Ring" Apparatus,” 1995 (“ASTM Report”)
`EEM-00259, entitled “Building in Alaska: Permeability of
`Common Building Material to Water Vapor,” 2000 (“Alaska”)
`Du Pont Press Release, entitled “DuPont Tyvek Tape Gives the
`Best Tyvek-to-Tyvek adhesion,” 2004 (“DuPont”)
`Allen, E and Iano, J., “Fundamentals of Building Construction:
`Materials and Methods,” 1999 (“Allen”)
`LP SmartSide MSDS-029, 2003 (“SmartSide MSDS”)
`
`ICBO Evaluation Report, 2002 (“ICBO”)
`
`LP SmartSide Installation Instructions, 2001 (“SmartSide-2001”)
`
`Sto Corp. Press Release, entitled “Sto Corp. Launches Sto Guard
`Housewrap Alternative,” 2001 (“StoGuard-2001”)
`
`Exhibit No.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
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`1011
`
`1012
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`1013
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`1014
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`
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`1
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`Sto Corp. Press Release, entitled “StoGuardTM, a seamless, fluid-
`applied air and moisture barrier, provides superior protection under
`most claddings. It does what other warps only pretend to do,” 2003
`(“StoGuard-2003”)
`ASTM E96-00, entitled “Standard Test Methods for Water Vapor
`Transmission of Materials,” 2000 (“ASTM E96”)
`Merriam-Webster Definition of “lignocellulose”
`
`US Patent 4,719,723 to Van Wagoner (“Van Wagoner”)
`
`US Patent 6,901,712 to Lionel (“Lionel”)
`
`US Patent 6,737,155 to Ou (“Ou”)
`
`Biblis, Evangelos J. “Performance of southern OSB overlaid with
`resin-impregniated paper,” 1990 (Biblis”)
`Arnold, R. and Guertin, M.,“Installing Housewrap,” Fine Home
`Building No. 107, 1997 (“Arnold”)
`
`“Wall-Sheathing Seam Tape” (“Grace”)
`
`US Patent 6,800,361 to Bruce et al. (“Bruce”)
`
`CA Pat. 1189434 to Bruce (“Bruce-CA”)
`
`US Patent 5,616,419 to Hsu et al. (“Hsu”)
`
`PFS-Teco OSB Design and Application Guide,
`www.pfsteco.com/techtips/pdf/osbdesignapplication guide (citing
`Structural Board Association, “OSB in Wood Frame Construction,”
`U.S. Edition, 1996/97.) (“TECO”)
`Lstiburek, J., “Moisture Control for Buildings,” 2002 (“Lstiburek”)
`
`LP Test Report T011035, August 2001
`
`LP Test Report - Hybrid PBO TH, May 2002
`
`LP Test Report - Hybrid PBO SB TH, July 2002
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
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`1029
`
`1030
`
`1031
`
`
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`2
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`LP Test Report - Portland Hybrid TK, November 2002
`
`LP Test Report - Portland Hybrid NB, January 2003
`
`LP Test Report - Portland PBO TH, June 2003
`
`LP Test Report - 70lb PBO, September 2003
`
`LP Test Report - 2001 Table
`
`Encyclopædia Britannica entry for “polyolefin”
`
`GB Patent Pub. 2364338A to Forbes et al. (“Forbes”)
`
`JP Patent Pub. 2001-020415 to Kenji (“Kenji”)
`
`English Translation of Kenji (with certification)
`
`US Patent 4,828,635 to Flack and Bailey (“Flack”)
`
`US Patent 5,732,520 to Maietta (“Maietta”)
`
`CA Patent 1,181,565 to Hedquist (“Hedquist”)
`
`US Patent 5,147,486 to Hoffman (“Hoffman”)
`
`Construction and Industrial Plywood: Voluntary Product Standard
`PS1-95 (“PS1-95”)
`US Patent 6,115,926 to Robell (“Robell”)
`
`APA Panel Handbook & Grade Glossary (“Glossary”)
`
`Wayback Machine Internet Archive for Grace
`
`US Copyright Catalogue Entry for the APA Handbook
`
`US Patent. 3,284,967 to Elliot (“Elliott”)
`
`US Patent 5,632,095 to Day (“Day”)
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`
`1048
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`1049
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`1050
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`1051
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`
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`US Patent App. Pub. No. 2004/0226247 to Byrd (“Byrd”)
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`Merriam-Webster Definition of “polymer”
`
`US Patent 7,159,368 to Peng (“Peng”)
`
`US Patent 6,584,742 to Kligler et al. (“Kligler”)
`
`US Patent 5,061,258 to Martz (“Martz”)
`
`US Patent 5,259,236 to English (“English”)
`
`US Patent 6,925,766 to DiPede (“DiPede”)
`
`Joint Claim Construction
`
`
`
`1052
`
`1053
`
`1054
`
`1055
`
`1056
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`1057
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`1058
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`1059
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`
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`Louisiana-Pacific Corporation (“LP” or “Petitioner”) hereby petitions for the
`
`
`
`institution of an inter partes review (“IPR”) of claims 1-20 of U.S. Patent No.
`
`8,474,197 (“the ‘197 Patent”). According to PTO records, the ‘197 Patent is assigned
`
`to Huber Engineered Woods LLC ("Patent Owner"). A copy of the ‘197 Patent is
`
`provided as Exhibit 1001.
`
`
`
`The required fee set forth in 37 C.F.R. § 42.15(a) accompanies this request.
`
`I. MANDATORY NOTICES (37 C.F.R. § 42.8)
`
`
`As set forth below and pursuant to 37 C.F.R. § 42.8(a)(1), the following
`
`mandatory notices are provided as part of this Petition.
`
`
`
`
`
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`The real party in interest for Petitioner is Louisiana-Pacific Corporation.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The ‘197 Patent is currently the subject of a patent infringement lawsuit
`
`brought by Patent Owner against Louisiana-Pacific Corporation and captioned
`
`Huber Engineered Woods LLC v. Louisiana-Pacific Corporation, USDC, District
`
`of Delaware, No. 1:19-cv-00342-LPS (Ex 1004) (the “Action”). The Action was
`
`filed on February 18, 2019, and Petitioner was served on February 19, 2019.
`
`Additional petitions for Inter Partes Review for all patents in the Action have
`
`or are being filed. IPR 2019-00919 has been instituted for US Patent 9,546,479.
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`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`C.
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Petitioner provides the
`
`
`
`following designation of counsel:
`
`Lead Counsel
`W. Edward Ramage (Reg. No. 50,810)
`Baker, Donelson, Bearman,
`Caldwell & Berkowitz, P.C.
`211 Commerce Street
`Baker Donelson Center, Suite 800
`Nashville, Tennessee 37201
`Telephone: (615) 726-5771
`Facsimile: (615) 744-5771
`Email: eramage@bakerdonelson.com
`
`
`Back-Up Counsel
`Aaron Chaloner (Reg. No. 73,083)
`Baker Donelson Bearman
`Caldwell & Berkowitz, P.C.
`211 Commerce Street
`Baker Donelson Center, Suite 800
`Nashville, Tennessee 37201
`Telephone: (615) 726-5599
`Facsimile: (615) 744-5548
`Email: achaloner@bakerdonelson.com
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney for Petitioner,
`
`Louisiana-Pacific Corporation, accompanies this Petition.
`
`
`
`D.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Service information for lead and back-up counsel is provided in the
`
`designation of counsel above. Service of any documents via hand-delivery may
`
`be made at the postal mailing address of the respective counsel. Petitioner consents
`
`to electronic service by email.
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`
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`Pursuant to 37 C.F.R. § 42.104, each requirement for institution of an inter
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`partes review of the ‘197 Patent is set forth below.
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`
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`E. Grounds for Standing (37 C.F.R. § 42.104(a))
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`Petitioner hereby certifies that the ‘197 Patent is available for inter partes
`
`
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`review and that Petitioner is not barred or estopped from requesting inter partes
`
`review challenging the claims of the ‘197 Patent on the grounds identified herein.
`
`More particularly, Petitioner certifies that: (1) Petitioner is not the owner of the
`
`‘197 Patent; (2) Petitioner has not filed a civil action challenging the validity of a
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`claim of the ‘197 Patent; (3) this petition is filed less than one year after the date
`
`on which Petitioner, Petitioner’s real party-in-interest, or a privy of Petitioner
`
`was served with a complaint alleging infringement of the ‘197 Patent; (4) the
`
`estoppel provisions of 35 U.S.C. § 315(e)(1) do not prohibit this inter partes
`
`review; and (5) this petition is filed after the later of (a) the date that is nine months
`
`after the date of the grant of the ‘197 Patentor (b) the date of termination of any
`
`post-grant review of the ‘197 Patent.
`
`II.
`
`IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED
`(37 C.F.R. § 42.104(b))
`
`Challenged Claims
`
`Claims 1-20 of the ‘197 Patent are challenged. Petitioner requests an order
`
`1.
`
`cancelling the challenged claims as unpatentable under 35 U.S.C. § 103, as more
`
`particularly set forth in Grounds 1-3 herein.
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`2.
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`Prior Art References Relied Upon
`
`The ‘197 Patent issued from U.S. Application No. 13/326,401 (filed Dec. 15,
`
`2011), and is a continuation application of U.S. Application No. 12/987,125, which,
`
`through a series of continuation and continuation-in-part applications, ultimately
`
`claims priority to U.S. Provisional Applications 60/547,029 and 60/547,031, each
`
`filed on February 23, 2004. (Ex. 1001 at 1-2). Thus, solely for purposes of this
`
`Petition, Petitioner has assumed that Patent Owner is entitled to claim priority to
`
`February 23, 2004 as the earliest possible priority date and effective filing date for
`
`the ‘197 Patent. The provisions of pre-AIA 35 U.S.C. § 103 apply.
`
`Each of the prior art references relied upon in the grounds set forth in this
`
`Petition is analogous prior art to the ‘197 Patent, and are summarized below:
`
` (i) The book “APA Engineered Wood Handbook” (“APA”), published in
`
`2002. (Ex. 1005 at 2-3), was not considered during examination of the ‘197 Patent.
`
`It discusses wood light frame construction using panels placed side-by-side as
`
`sheathing. Figure 2.7 shows panels with 1/8" spacing recommended at all edge and
`
`end joints, along with building paper or weather-resistive barrier on the panels.
`
`Section 2.7.2 discusses water vapor permeability of panels, and Table 2.32 shows
`
`water vapor permeance for typical grades of plywood and OSB with and without
`
`various finishes and overlays. Id. at 50-51. APA discloses that water-resistive
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`barriers not only block or resist liquid water, they also are permeable to permit water
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`vapor transmission to avoid water or water vapor from being trapped in the wall. Id.
`
`at 29, 120-24, 132.
`
` (ii) The report "Building in Alaska: Permeability of Common Building
`
`Material to Water Vapor," EEM-00259, published by the University of Alaska
`
`Fairbanks Cooperative Extension Service and reprinted in October 2000 ("Alaska")
`
`(Ex. 1008 at 6), was not considered during examination. It provides water vapor
`
`perm ratings for common building materials, including permeance ratings under
`
`ASTM E-96 dry cup (Method A) and wet cup (Method B) procedures. Id. at 5.
`
`(iii) Sto Corp. Press Release entitled "Sto Corp. Launches Sto Guard
`
`Housewrap Alternative" ("StoGuard-2001"), published in 2001 (Ex. 1014 at 1),
`
`was not considered during examination. It discloses a liquid-applied waterproof
`
`coating and joint filler for building construction, usable with most claddings,
`
`including wood (e.g., plywood sheathing). Id.
`
`(iv) Sto Corp. Press Release entitled "Sto Guard a seamless, fluid-applied air
`
`and moisture barrier, provides superior protection under most claddings. It does
`
`what other wraps only pretend to do." ("StoGuard-2003"), published in 2003 (Ex.
`
`1015 at 1), was not considered during examination. It discloses StoGold Fill as a
`
`spray or trowel applied joint treatment. Id.
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`(v) ASTM D5795-95, entitled “Standard Test Method For Determination Of
`
`Liquid Water Absorption Of Coated Hardboard And Other Composite Wood
`
`Products Via 'Cobb Ring' Apparatus,” (“ASTM D5795”) was published by ASTM
`
`International in December 1995 and re-approved in 2000 (Ex. 1006 at 1), and was
`
`not considered during examination. It describes "Cobb Ring" testing methodology
`
`for measurement of liquid water absorbed by "coated composite wood products,"
`
`including "factory-primed composite wood products." Id.at 2. Table 1 reports five
`
`coated hardwood samples with average water permeability (over seven test results
`
`per sample) of from 5.225 to 20.545 gm/100 in2/24 hours. Id. at 3.
`
`
`
`(vi) ASTM Research Report: D01-1093 , entitled “Interlaboratory Study to
`
`Establish Precision Statements for ASTM D5795, Test Method for Determination of
`
`Liquid Water Permeability of Applied Coatings on Hardboard and Other Composite
`
`Wood Products Via 'Cobb Ring' Apparatus” (“ASTM Report”), published by ASTM
`
`International on August 10, 1995, (Ex. 1007 at 1) , was not considered during
`
`examination. It describes the inter-laboratory study used to provide the data for
`
`Table 1 in the ASTM D5795 reference. The Cobb Ring test data from all samples
`
`ranged from a low of 1.91 to a high of 23.24 gm/100 in2/24 hours. Id. at 7.
`
`(vii) ASTM E96-00, entitled “Standard Test Methods for Water Vapor
`
`Transmission of Materials,” (“ASTM E96”), published by ASTM International in
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`2000 (Ex. 1016 at 1), was not considered during examination. It discloses the test
`
`methods for determination of water vapor transmission of materials such as paper,
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`plastic films, other sheet materials, fiberboards, and wood products. The two basic
`
`methods are the Dessicant Method (dry-cup) (Procedure A) and the Water Method
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`(wet-cup) (Procedure B). Id. at 1, 6.
`
`(viii) US Patent 4,719,723 to Van Wagoner ("Van Wagoner"), filed Oct. 3,
`
`1985, and issued Jan. 19, 1988. (Ex. 1018 at 1), was not considered during
`
`examination. It discloses factory-assembled rectilinear roofing panels, with seams
`
`between adjacent panels covered with water proof, but vapor permeable, tape. Ex.
`
`1018 at 1-7 (Abstract,.6:5-26, 63-54; 8:15-61; Fig. 2).
`
`(ix) U.S. Patent 5,616,419 to Hsu ("Hsu"), filed April 19, 1996, issued April
`
`1, 1997 (Ex. 1026 at 1), was not considered during examination. It discloses a
`
`method of producing a coating on the surface of a wood substrate, such as OSB. Id.
`
`at 1 (Abstract). It discloses that “lignocellulosic materials” include “wood fibers,
`
`flakes, particles, or chips.” Id. at 5 (8:33-37).
`
`(x) U.S. Patent No. 6,737,155 to Ou (“Ou”), filed Dec. 8, 1999, issued May
`
`18, 2004, was cited in the ‘197 Patent (Ex. 1020 at 1). Ou discloses a wood board
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`with OSB core and a resin-impregnated kraft paper overlay adhesively secured to
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`the top surface during the manufacturing process. Id. at 1, 5-7 (Claims 1, 5-6;
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`Abstract; 2:57-67; 3:29-67, 4:1-10, 49-63). The paper overlaid wood board is not
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`susceptible to water damage. Id. at 5 (2:24-29).
`
`(xi) U.S. Patent 6,901,712 to Lionel (“Lionel”), filed March 28, 2003, issued
`
`June 7, 2005, was cited in the ‘197 Patent. (Ex. 1019 at 1). Lionel discloses a self-
`
`adhering vapor permeable air and moisture barrier membrane for structural surfaces.
`
`Id. at 1, 4 (Abstract; 4:43-54).
`
`(xii) “Installing Housewrap,” Fine Homebuilding No. 107, by Rick Arnold
`
`and Mike Guertin, (“Arnold”), published in 1997, was cited in the ‘197 Patent (Ex.
`
`1022 at 1). It describes Tyvek housewrap as a water resistant but water vapor
`
`permeable barrier secured by stapling to wood sheathing, and a method of applying
`
`the barrier to the sheathing while it is laid out on the ground prior fastening it to the
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`building structure. Id. Seams are sealed with seam tape. Id. at 6. In a side-bar, it
`
`discloses a fully-sheathed building construction where the seams between the
`
`sheathing are sealed with a tape product called "Gap Wrap," which is cheaper than
`
`housewrap and requires less labor to install. Id.
`
`(xiii) “Wall-Sheathing Seam Tape,” Energy Source Builder #39, from W.R.
`
`Grace ("Grace"), published in 1995, was cited in the ‘197 Patent (Ex. 1023 at 1). It
`
`discloses Perm-A-Barrier Wall Seam Tape with polyethylene film backing.
`
`(xiv) DuPont Tyvek Tape press release ("DuPont"), published January 2004
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`(Ex. 1009 at 2), was not considered during examination. It discloses seam tape with
`
`a polypropylene film backing coated with adhesive. The tape is described as
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`waterproof but with a moisture vapor transmission rate of 0.3 gm/100in2/24 hours.
`
`Id. at 1.
`
`(xv) GB Patent Publication GB2364338 by Forbes (“Forbes”) has a priority
`
`date of April 26, 2000 and was published January 23, 2002 (Ex. 1038). It was not
`
`considered during examination. Forbes discloses a lignocellulosic structural wall
`
`panel with a water vapor permeable and liquid impermeable barrier layer. Id. at 1-
`
`4.
`
`(xvi) Japanese Patent Publication No. 2001-020415 to Nishizawa Kenji
`
`(“Kenji”) has a priority date of July 9, 1999 and was published January 23, 2001
`
`(Exs. 1039 & 1040). It was not considered during examination. Kenji discloses a
`
`wall panel system wherein each panel has a factory-applied, coextensive moisture
`
`permeable and waterproof sheet, with waterproof tape to seal joints. Ex. 1040 at 2-
`
`5 (Abstract, [006]-[008], [0015]-[0019], [0026]-[0030]).
`
`(xvii) U.S. Patent 4,828,635 to Flack (“Flack”), filed on April 13, 1988,
`
`issued on May 9, 1989, (Ex. 1041), was not considered during examination. Flack
`
`discloses in-plant-manufactured wall panels with a water vapor permeable and
`
`air/moisture barrier membrane, with adhesive joint sealing tape. Id. at 1 (Abstract).
`
`
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`13
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`IPR of U.S. Patent No. 8,474,197
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`
`(xviii) U.S. Patent 5,732,520 to Maietta (“Maietta”), filed on December 10,
`
`1996, issued on March 31, 1998, (Ex. 1042), was not considered during
`
`prosecution. Maietta discloses adjacent wall panels with spaced gaps sealed with
`
`caulk or tape. Id. at 1-8 (Abstract, Figs. 1-6, 6:1—7:15).
`
`(xix) Canadian Patent 1,181,565 to Hedquist (“Hedquist”), filed on May 5,
`
`1982, issued on January 29, 1985, (Ex. 1043), was not considered during
`
`examination. Hedquist discloses at least two adjacent wood sheathing panels
`
`covered with a weather-resistant barrier, with seams sealed with caulk or weather-
`
`resistant tape. Id. at 4-5, 20.
`
`(xx) U.S. Patent 5,147,486 to Hoffman ("Hoffman"), filed on November 30,
`
`1990, issued on September 15, 1992, (Ex. 1044), was not cited during examination.
`
`Hoffman discloses panels with a resin-impregnated overlay. Id. at 5 (3:45-49).
`
`(xxi) Construction and Industrial Plywood: Voluntary Product Standard PS1-
`
`95 (“PS1-95”) was created by the National Institute of Standards and Technology
`
`(NIST) and published March 1996 (Ex. 1045). It was not considered during
`
`examination. It establishes standard resin % content and basis weights for High
`
`Density Overlay and Medium Density Overlay. Id. at 20-21 (5.6.8.1; 5.6.8.2).
`
`(xxii) U.S. Patent 6,115,926 to Robell (“Robell”), filed on August 3, 1999,
`
`issued on September 12, 2000, (Ex. 1046), was not considered during examination.
`
`
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`14
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`Robell discloses factory-applied markings on the surface of building panels such as
`
`OSB for use in aiding the cutting, measuring, fastening, and installation of
`
`construction materials. Id. Abstract.
`
`(xxiii) U.S. Patent. 3,284,967 to Elliot (“Elliott”), filed on March 18, 1964,
`
`issued November 15, 1966, (Ex. 1050), was not considered during prosecution.
`
`Elliot discloses laminated structural panels for use in external wall or roofing
`
`applications. Id. at 3.
`
` (xxiv) U.S. Patent 5,632,095 to Day (“Day”), filed on May 23, 1995, issued
`
`May 27, 1997, (Ex. 1051), was not considered during prosecution. Day discloses
`
`marking lines imprinted on lumber to “easily, accurately and quickly to construct
`
`the framework,” particularly without having to carry additional tools. Id. at 5 (3:17-
`
`39).
`
`(xxv) U.S. Patent App. Pub. 2004/0226247 to Byrd (“Byrd”), filed on May
`
`12, 2003, published November 18, 2004, (Ex. 1052), was cited in the ‘197 Patent.
`
`Byrd teaches an roofing panel that includes an impermeable layer with a textured
`
`surface. Id. at 5-7 ([0008]; [0023]; [0025]-[0026]).
`
`(xxvi) U.S. Pat. 7,159,368 to Peng (“Peng”), filed Nov. 27, 2002, issued Jan.
`
`9, 2007, (Ex. 1054), was cited in the ‘197 Patent. It discloses a panelized wall
`
`system utilizing joint tape. Id. at 1.
`
`
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`15
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`
`(xxvii) U.S. Pat. 6,584,742 to Kligler (“Kligler”), filed May 16, 2000, issued
`
`July 1, 2003, (Ex. 1055), was not considered during examination. Kligler discloses
`
`an OSB structural wall panel system with textured outer surface. Id. at 11 (1:52-
`
`60, 2:55-61).
`
`(xxviii) U.S. 5,061,258 to Martz (“Martz”), issued Oct. 29, 1991 (Ex. 1056),
`
`was not considered during examination of the ‘197 Patent. Martz discloses a vapor
`
`permeable medical dressing. Id. at 1.
`
`(xxix) U.S. Pat. 5,259,236 to English (“English”), issued Nov. 9, 1993 (Ex.
`
`1057), was not considered during examination of the ‘197 Patent. English discloses
`
`tribometer testing for coefficient of friction for dry and wet surfaces. Id. at 1.
`
` (xxx) U.S. Pat. to DiPede (“DiPede”), filed Mar. 19, 2003, issued Aug. 9,
`
`2005, (Ex. 1058), was cited in the ‘197 Patent. DiPede discloses roofing sheet
`
`material with a protruding node mesh layer with a high coefficient of friction
`
`(“COF”) of at least 0.8 in dry, wet or dusty conditions. Id. at 5-6 (1:29-35, 4:26-
`
`37).
`
`(xxxi) APA Panel Handbook & Grade Glossary (“Glossary”), published
`
`April 1997, (Ex. 1047 at 32), was not considered during prosecution. Glossary
`
`describes embossed and textured surfaces, and tongue-and-groove joints. Id. at 5,
`
`9, 12, 18, 29.
`
`
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`16
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`AIA Review IPR2020-TBD
`IPR of U.S. Patent No. 8,474,197
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`3.
`
`Statutory Grounds on Which the Challenge is Based
`
`Petitioner identifies the following statutory grounds for unpatentability of the
`
`
`
`challenged claims. A further explanation of the basis for each of these grounds is
`
`provided in Section VI.
`
`
`
` Ground
`
`1
`
`2
`
`3
`
`
`
`
`
`
`
`Statutory Basis for Challenge
`APA in view of StoGuard-2001 and StoGuard-2003,
`in further view of Peng, Flack, ASTM D5795, ASTM Report, Alaska,
`ASTM E96, Hsu, Van Wagoner, Elliott, Hedquist, Day, Robell,
`Lionel, Arnold, Grace, DuPont, Glossary, Forbes, Martz, DiPede,
`Kligler, Byrd, Maietta, English, PS1-95, and Hoffman
`renders obvious claims 1-20 under 35 U.S.C. § 103(a).
`Forbes in view of Peng and Flack,
`in further view of ASTM D5795, ASTM Report, Alaska, ASTM E96,
`APA, Hsu, Van Wagoner, Hedquist, Day, Lionel, Elliott, Arnold,
`Grace, DuPont, Glossary, Martz, DiPede, Kligler, Byrd, Maietta,
`English, PS1-95, and Hoffman
`renders obvious claims 1-20 under 35 U.S.C. § 103(a).
`Kenji in view of Peng and Flack,
`in further view of ASTM D5795, ASTM Report, Alaska, ASTM E96,
`APA, Hsu, Van Wagoner, Hedquist, Day, Lionel, Elliott, Arnold,
`Grace, DuPont, Glossary, Forbes, Martz, DiPede, Kligler, Byrd,
`Maietta, English, PS1-95, and Hoffman
`renders obvious claims 1-20 under 35 U.S.C. § 103(a).
`
`The application of particular combinations of prior art to specific claims under
`
`Grounds 1-3 (obviousness) is detailed below:
`
`
`
`
`
`17
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`
`
` Ground
`1
`
`
`
`
`
`
` Claim
`1
`
`
`
`2
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`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
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`10
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`11
`
`12
`
`13
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`14
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`AIA Review IPR2020-TBD
`IPR of U.S. Patent No. 8,474,197
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`
`
` Applicable Prior Art References
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott, Lionel
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott, ASTM
`D5795, ASTM Report, ASTM E96,
`Alaska, Hsu
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott, Arnold
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott, Arnold
`Hedquist, Day, Robell
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott, Arnold,
`Grace, DuPont
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott, Arnold
`Martz, DuPont
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott,
`Glossary, Forbes
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott, Byrd,
`DiPede, Kligler
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott, Byrd,
`DiPede, Kligler, English
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott, Lionel,
`Ou, Hoffman, PS1-95
`APA, StoGuard-2001, StoGuard-2002,
`18
`
`
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`AIA Review IPR2020-TBD
`IPR of U.S. Patent No. 8,474,197
`
`
`
`Peng, Flack, Van Wagoner, Elliott, ASTM
`D5795, ASTM Report, ASTM E96,
`Alaska, Hsu
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott, Arnold
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott, Arnold,
`Grace, DuPont
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott,
`Glossary, Forbes
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott, Maietta
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott, Lionel
`APA, StoGuard-2001, StoGuard-2002,
`Peng, Flack, Van Wagoner, Elliott, Lionel,
`Ou, Hoffman, PS1-95
`
`Forbes, Peng, Flack, Van Wagoner and
`Elliott
`Forbes, Peng, Flack, Van Wagoner and
`Elliott, Lionel
`Forbes, Peng, Flack, Van Wagoner and
`Elliott, ASTM D5795, ASTM Report,
`ASTM E96, Alaska, Hsu, APA
`Forbes, Peng, Flack, Van Wagoner and
`Elliott, Arnold
`Forbes, Peng, Flack, Van Wagoner and
`Elliott, Arnold Hedquist, Day, Robell
`Forbes, Peng, Flack, Van Wagoner and
`Elliott, Arnold, Grace, DuPont
`Forbes, Peng, Flack, Van Wagoner and
`Elliott, Arnold, Martz, DuPont
`Forbes, Peng, Flack, Van Wagoner and
`Elliott
`Forbes, Peng, Flack, Van Wagoner and
`19
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`
`2
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`
`
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`AIA Review IPR2020-TBD
`IPR of U.S. Patent No. 8,474,197
`
`
`
`Elliott, Glossary, Forbes
`Forbes, Peng, Flack, Van Wagoner and
`Elliott, Byrd, DiPede, Kligler
`Forbes, Peng, Flack, Van Wagoner and
`Elliott, Byrd, DiPede, Kligler, English
`Forbes, Peng, Flack, Van Wagoner and
`Elliott
`Forbes, Peng, Flack, Van Wagoner and
`Elliott, Lionel, Ou, Hoffman, PS1-95, APA
`Forbes, Peng, Flack, Van Wagoner and
`Elliott, ASTM D5795, ASTM Report,
`ASTM E96, Alaska, Hsu
`Forbes, Peng, Flack, Van Wagoner and
`Elliott, Arnold
`Forbes, Peng, Flack, Van Wagoner and
`Elliott, Arnold, Grace, DuPont
`Forbes, Peng, Flack, Van Wagoner and
`Elliott, Glossary, Forbes
`Forbes, Peng, Flack, Van Wagoner and
`Elliott, Maietta, APA
`Forbes, Peng, Flack, Van Wagoner and
`Elliott, Lionel
`Forbes, Peng, Flack, Van Wagoner, Elliott,
`Lionel, Ou, Hoffman, PS1-95
`
`Kenji, Peng, Flack, Van Wagoner, Elliott
`Kenji, Peng, Flack, Van Wagoner, Elliott,
`Lionel
`Kenji, Peng, Flack, Van Wagoner, Elliott,
`ASTM D5795, ASTM Report, ASTM E96,
`Alaska, Hsu, APA
`Kenji, Peng, Flack, Van Wagoner, Elliott,
`Arnold
`Kenji, Peng, Flack, Van Wagoner. Elliott,
`Arnold, Hedquist, Day, Robell
`Kenji, Peng, Flack, Van Wagoner, Elliott,
`Arnold, Grace, DuPont
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`
`1
`2
`
`3
`
`4
`
`5
`
`6
`
`
`3
`
`
`
`20
`
`
`
`AIA Review IPR2020-TBD
`IPR of U.S. Patent No. 8,474,197
`
`
`
`Kenji, Peng, Flack, Van Wagoner, Elliott,
`Arnold, Martz, DuPont
`Kenji, Peng, Flack, Van Wagoner, Elliott
`Kenji, Peng, Flack, Van Wagoner, Elliott,
`APA, Glossary, Forbes
`Kenji, Peng, Flack, Van Wagoner, Elliott,
`Byrd, DiPede, Kligler
`Kenji, Peng, Flack, Van Wagoner, Elliott,
`Byrd, DiPede, Kligler, English
`Kenji, Peng, Flack, Van Wagoner, Elliott
`Kenji, Peng, Flack, Van Wagoner, Elliott,
`Lionel, Ou, Hoffman, PS1-95, APA
`Kenji, Peng, Flack, Van Wagoner, Elliott,
`ASTM D5795, ASTM Report, ASTM E96,
`Alaska, Hsu
`Kenji, Peng, Flack, Van Wagoner, Elliott,
`Arnold
`Kenji, Peng, Flack, Van Wagoner, Elliott,
`Arnold, Grace, DuPont
`Kenji, Peng, Flack, Van Wagoner, Elliott,
`Glossary, Forbes
`Kenji, Peng, Flack, Van Wagoner, Elliott,
`Maietta, APA
`Kenji, Peng, Flack, Van Wagoner, Elliott,
`Lionel
`Kenji, Peng, Flack, Van Wagoner, Elliott,
`Lionel, Ou, Hoffman, PS1-95
`
`7
`
`8
`9
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`10
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`11
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`12
`13
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`14
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`15
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`16
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`17
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`18
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`19
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`20
`
`
`III. OVERVIEW OF THE ‘197 PATENT
`
`
`A.
`
`The ‘197 Patent Specification
`
`
`
`
`The’197 Patent relates generally to sheathing systems for roofs and walls
`
`using panels with a water resistant barrier layer. Exhibit 1001 at 1, 17 (Abstract;
`
`1:39-41).
`
`
`
`21
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`AIA Review IPR2020-TBD
`IPR of U.S. Patent No. 8,474,197
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`The specification acknowledges that residential or commercial buildings are
`
`
`
`typically constructed by attaching several panels to an underlying supporting
`
`structural frame, with the panels most often placed in a quilt-like pattern (or in a
`
`side-by-side manner) with the edge of each panel contacting the edges of adjacent
`
`panels, with small gaps along the edges of adjoining roofing panels often remaining
`
`after assembly. Id. at 17, 1:
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