Johns Manville v. Knauf - 2d IPR Petition

8/20/2019 Johns Manville v. Knauf - 2d IPR Petition

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TABLE OF CONTENTS

I. INTRODUCTION ........................................................................................... 1

II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1

III. PAYMENT OF FEES UNDER 37 C.F.R. §§ 42.15(A) AND 42.103............ 2

IV. GROUNDS FOR STANDING ........................................................................ 3

V. IDENTIFICATION OF CHALLENGE .......................................................... 3

VI. OVERVIEW OF U.S. PATENT NO. D631,670 ............................................ 4

VII. CLAIM CONSTRUCTION ............................................................................ 5

A. Legal Standard for Claim Construction of a Design Patent .................. 5

B. Claim Construction of the ’670 Patent .................................................. 8

1. The Prosecution History of the ’670 Patent ................................ 9

2. Analysis of the Potential Claim Elements ................................ 18

VIII. THE APPLICABLE LEGAL STANDARDS ............................................... 22

A. Obviousness ......................................................................................... 22

B. Anticipation ......................................................................................... 23

C. Inherency ............................................................................................. 24

D. One of Ordinary Skill .......................................................................... 25

IX. DETAILED EXPLANATION OF GROUNDS FOR UNPATENTABILITYUNDER THE BROADEST REASONABLE CONSTRUCTION ............... 26

A. Ground 1: The Claim Would Have Been Rendered Obvious Under §103 by the Johns Manville Thermal and Acoustical Equipment

Insulations for OEM Applications Brochure (Ex. 1004) in View ofEither Soundproofing Your Walls, The Family Handyman Magazine

(Ex. 1008) or Owens Corning – 2006 at a Glance Report (Ex. 1010) 26

1. Elements 1-3 ............................................................................. 28

2. Alleged Element 4 ..................................................................... 29

3. Element 5 .................................................................................. 32

4. Even If “Brown and Cream” Constitute a Claim Element, the

Claim of the ’670 Patent Would Have Been Rendered ObviousUnder § 103 ............................................................................... 40

5. JM 1997 Brochure Conclusion ................................................. 43


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B. Ground 2: The Claim Would Have Been Rendered Obvious Under §103 by the Johns Manville the Worldwide Leader in Thermal and

Acoustical Equipment Insulations for OEM Applications Brochure(Ex. 1005) in View of Either Soundproofing Your Walls, The Family

Handyman Magazine (Ex. 1008) or Owens Corning – 2006 at aGlance Report (Ex. 1010) .................................................................... 44

1. Elements 1-3 ............................................................................. 46

2. Alleged Element 4 ..................................................................... 46

3. Element 5 .................................................................................. 47

4. Even If “Brown and Cream” Constitute a Claim Element, theClaim Would Have Been Rendered Obvious Under § 103 ...... 49

5. JM 2000 Brochure Conclusion ................................................. 50

C. Ground 3: Based Upon the Patent Owners’ Claim Construction, theClaim of the ’670 Patent Is Unpatentable Under § 102 In View of

Johns Manville Thermal and Acoustical Equipment Insulations forOEM Applications Brochure (Ex. 1004) ............................................ 51

D. Ground 4: Based Upon the Patent Owners’ Claim Construction, theClaim of the ’670 Patent Is Unpatentable Under § 102 In View of

Johns Manville The Worldwide Leader in Thermal and AcousticalEquipment Insulations for OEM Applications Brochure (Ex. 1005) . 52

X. CONCLUSION .............................................................................................. 53


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TABLE OF AUTHORITIES

Pages

Cases

Abraxis Bioscience, Inc. v. Mayne Pharma (USA) Inc.,

467 F.3d 1370 (Fed. Cir. 2006) ............................................................................ 6

Apple, Inc. v. Samsung Elecs. Co.,

678 F.3d 1314 (Fed. Cir. 2012) .......................................................................... 23

Apple, Inc. v. Samsung Electronics Co., No. 11-CV-01846-LHK, 2012 WL 3071477 (N.D. Cal. July 27,2012) ..................................................................................................................... 7

Blisscraft of Hollywood v. United Plastic Co.,

189 F. Supp. 333 (S.D.N.Y. 1960) ..................................................................... 21

Blumcraft of Pittsburgh v. Citizens & S. Nat. Bank of S.C.,407 F.2d 557 (4th Cir. 1969) .............................................................................. 21

In re Borden,

90 F.3d 1570 (Fed. Cir. 1996) ................................................................ 23, 39, 48

In Re Cohn,

23 C.C.P.A. 766 (1935) ................................................................................ 18, 41

Crocs, Inc. v. Int’l Trade Comm’n,598 F.3d 1294 (Fed. Cir. 2010) .......................................................................... 24

Depaoli v. Daisy Mfg. Co.,

No. 07-CV-11778-DPW, 2009 WL 2145721 (D. Mass. July 14,2009) ..................................................................................................................... 7

Durling v. Spectrum Furniture Co.,

101 F.3d 100 (Fed. Cir. 1996) ..................................................................... passim

Egyptian Goddess, Inc. v. Swisa, Inc.,

543 F.3d 665 (Fed. Cir. 2008) .............................................................. 5, 6, 23, 24

Harmon Paper Co. v. Prager ,287 F. 841 (2nd Cir. 1923) ................................................................................. 21


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In Re Haruna,249 F.3d 1327 (Fed. Cir. 2001) .................................................................... 18, 40

High Point Design, LLC v. Buyers Direct, Inc.,

730 F.3d 1301 (Fed. Cir. 2013) .......................................................................... 23

Int’l Seaway Trading Corp. v. Walgreens Corp.,589 F.3d 1233 (Fed. Cir. 2009) .................................................................... 23, 24

King Pharm., Inc. v. Eon Labs, Inc.,

616 F.3d 1267 (Fed. Cir. 2010) .......................................................................... 25

Knauf Insulation, LLC et al. v. Johns Manville Corporation, et al.,

1:15-cv-00111-WTL-MJD (S.D. Ind.) ................................................................. 1

In re Nalbandian,661 F.2d 1214 (C.C.P.A. 1981) .......................................................................... 25

Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC ,

739 F.3d 694 (Fed. Cir. 2014) .............................................................................. 5

Schering Corp. v. Geneva Pharm.,339 F.3d 1373 (Fed. Cir. 2003) .......................................................................... 24

SmithKline Beecham Corp. v. Apotex Corp.,

403 F.3d 1331 (Fed. Cir. 2005) .......................................................................... 25

Starhome GmbH v. AT&T Mobility LLC ,

743 F.3d 849 (Fed. Cir. 2014) .............................................................................. 6

Times Three Clothier, LLC v. Spanx, Inc., No. 13-CV-2157-DLC, 2014 WL 1688130 (S.D.N.Y. Apr. 29,

2014) ..................................................................................................................... 6

Vitronics Corp. v. Conceptronic, Inc.,90 F.3d 1576 (Fed. Cir. 1996) .............................................................................. 7

Statutes

35 U.S.C. § 102 ................................................................................................. passim

35 U.S.C. § 103 ................................................................................................. passim


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Other Authorities

37 C.F.R. 1.84(a)(2) ................................................................................................. 10

37 C.F.R. § 42.8 ......................................................................................................... 1

37 C.F.R. §§ 42.15(A) AND 42.103 .......................................................................... 2

37 C.F.R. § 42.100(b) ................................................................................................ 5

37 C.F.R. § 42.104(a) ................................................................................................. 3

37 C.F.R. § 42.104(b) ................................................................................................ 3

37 CFR 1.84(u)(1) .................................................................................................... 10

77 Fed. Reg. 48756, 48764 (Aug. 14, 2012) ............................................................. 5

MPEP ....................................................................................................................... 17

MPEP 1503.02.V ..................................................................................................... 10

MPEP 2144.03 ................................................................................................... 11, 12

MPEP § 1504.01(c) .................................................................................................. 20


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I. INTRODUCTION

Johns Manville Corporation and Johns Manville, Inc., (collectively,

“Petitioners”) request inter partes review of the claim of U.S. Design Patent No.

D631,670 (“the ’670 patent”) (Ex. 1001), purportedly owned by Knauf Insulation

LLC and Knauf Insulation SPRL (collectively, “Patent Owners”). For the reasons

set forth below, the sole claim of the ’670 patent is unpatentable because it would

have been obvious in light of two primary prior art references considered in

combination with certain secondary references. Alternatively, according to a claim

construction position recently advocated by the Patent Owners in a pending IPR,

the claim is anticipated by each of the two primary prior art references identified in

this Petition, and is thus unpatentable.

II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8

Real Parties-in-Interest: Johns Manville Corporation and Johns Manville,

Inc. are the real parties-in-interest.

Related Matters: The Patent Owners have sued Petitioners, alleging

infringement of the ’670 patent. Knauf Insulation, LLC et al. v. Johns Manville


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Corporation, et al., 1:15-cv-00111-WTL-MJD (S.D. Ind.). The ’670 patent also is

the subject of pending IPR2015-01453.1

Lead and Back-Up Counsel and Service Information:

Lead Counsel Back-Up Counsel

Kristopher L. ReedRegistration No. 58694

Kilpatrick Townsend & Stockton LLP

1400 Wewatta Street, Suite 600

Denver, CO [email protected]

(303) 571-4000 (telephone)(303) 571-4321 (facsimile)

David E. Sipiora( pro hac vice to be filed)

Kilpatrick Townsend & Stockton LLP

1400 Wewatta Street, Suite 600

Denver, CO [email protected]

(303) 571-4000 (telephone)(303) 571-4321 (facsimile)

The following email address may be used for service and all

communications to both Lead and Backup Counsel:

[email protected]

III. PAYMENT OF FEES UNDER 37 C.F.R. §§ 42.15(A) AND 42.103

The required fees are submitted herewith. If any additional fees are due at

any time during this proceeding, the Office is authorized to charge such fees to

Deposit Account No. 20-1430.

1 As of the filing date of this Petition, Patent Owner has filed a Preliminary

Response in IPR2015-01453, but the Board has not yet entered an Institution

Decision.

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


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Ground Description

1

Obviousness under § 103 by Johns Manville Thermal and Acoustical

Equipment Insulations for OEM Applications Brochure (Ex. 1004) in

combination with either Soundproofing Your Walls, The FamilyHandyman Magazine (Ex. 1008) or Owens Corning – 2006 at aGlance Report (Ex. 1010).

2

Obviousness under § 103 by Johns Manville The Worldwide Leader in

Thermal and Acoustical Equipment Insulations for OEM ApplicationsBrochure (Ex. 1005) in combination with either Soundproofing Your

Walls, The Family Handyman Magazine (Ex. 1008) or Owens Corning – 2006 at a Glance Report (Ex. 1010).

3 Anticipation under § 102 by Johns Manville Thermal and AcousticalEquipment Insulations for OEM Applications Brochure (Ex. 1004)

4Anticipation under § 102 by Johns Manville The Worldwide Leader inThermal and Acoustical Equipment Insulations for OEM Applications

Brochure (Ex. 1005)

Section VII explains how the ’670 patent’s sole claim should be construed,

and Section IX explains how each claim element is found in, or rendered obvious

by, the prior art.

VI. OVERVIEW OF U.S. PATENT NO. D631,670

The ’670 patent, entitled “Insulation Material,” was filed on December 31,

2008, as Application No. 29/311,136, and issued on February 1, 2011. The ’670

patent consists of a single claim for the ornamental design of insulation material.

See Ex. 1001, Claim. One color photocopy figure constitutes the entire claim and

depicts ordinary insulation material. See id.


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VII. CLAIM CONSTRUCTION

A. Legal Standard for Claim Construction of a Design Patent

A claim subject to inter partes review receives the “broadest reasonable

construction in light of the specification of the patent in which it appears.” 37

C.F.R. § 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed. Reg.

48756, 48764 (Aug. 14, 2012). As a design patent, the scope of the ’670 patent is

defined by the claim (i.e., the drawing, which in this case is a color photocopy), in

conjunction with its description. See Egyptian Goddess, Inc. v. Swisa, Inc., 543

F.3d 665, 680 (Fed. Cir. 2008) (citing 37 C.F.R. § 1.152); also Pac. Coast Marine

Windshields Ltd. v. Malibu Boats, LLC , 739 F.3d 694, 702 (Fed. Cir. 2014).

The Federal Circuit directs that “the preferable course ordinarily will be for

a district court not to attempt to ‘construe’ a design patent claim by providing a

detailed verbal description of the claimed design.” Egyptian Goddess, 543 F.3d at

679. However, the Federal Circuit has noted that it can be “helpful to point out . . .

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

stated that “it is important to emphasize that a district court’s decision regarding

the level of detail to be used in describing the claimed design is a matter within the

court’s discretion, and absent a showing of prejudice, the court’s decision to issue a

relatively detailed claim construction will not be reversible error.” Id. at 679-80.


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Like a utility patent, the claim scope of a design patent may be limited by

statements made during prosecution. See id. at 680; Donald S. Chisum, Chisum on

Patents § 23.05[7] (2013) (“Decisions confirm that a design patent’s prosecution

history may limit its scope”). The words of a claim are generally to be given “their

ordinary and customary meaning as understood by a person of ordinary skill in the

art when read in the context of the specification and prosecution history.”

Starhome GmbH v. AT&T Mobility LLC , 743 F.3d 849, 856 (Fed. Cir. 2014). “A

patentee, however, can act as his own lexicographer to specifically define terms of

a claim contrary to their ordinary meaning.” Abraxis Bioscience, Inc. v. Mayne

Pharma (USA) Inc., 467 F.3d 1370, 1376 (Fed. Cir. 2006). Similarly, a design

patentee may “disavow[ ] the full scope of a claim term either in the specification

or during prosecution.” Times Three Clothier, LLC v. Spanx, Inc., No. 13-CV-

2157-DLC, 2014 WL 1688130, at *2 (S.D.N.Y. Apr. 29, 2014) (citation omitted).

Thus, in Egyptian Goddess, the Federal Circuit explained that a district court

may guide the fact finder by addressing certain issues that bear on the scope of a

design patent claim, including, inter alia, “the effect of any representations that

may have been made during the prosecution history.” 543 F.3d at 680 (citing

Goodyear Tire, 162 F.3d 1113, 1116 (Fed. Cir. 1998)). The Court’s description in

Egyptian Goddess of the use of the prosecution history in determining the scope of

a design patent is consistent with the claim construction process for utility patents,


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which allows for statements made during prosecution to be considered as intrinsic

evidence defining the scope of a claim. See, e.g., Vitronics Corp. v. Conceptronic,

Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“It is well-settled that, in interpreting an

asserted claim, the court should look first to the intrinsic evidence of record, i.e.,

the patent itself, including the claims, the specification and, if in evidence, the

prosecution history.”) (citation omitted); also Apple, Inc. v. Samsung Electronics

Co., No. 11-CV-01846-LHK, 2012 WL 3071477, at *9 (N.D. Cal. July 27, 2012)

(quoting Egyptian Goddess for this legal proposition and finding that “[m]oreover,

the prosecution history of the D′677 Patent establishes that the broken lines were

intended to be disclaimed. The patent application contained a broken line

disclaimer, which remained through the final amendment. Thus, it seems likely

that the absence of a broken line disclaimer in the D′677 Patent that was issued was

inadvertent. Because the prosecution history supports the broken line disclaimer,

the public notice function regarding the meaning of the broken lines in the D′677 is

served. Thus, the D′677 Patent disclaims all subject matter but the front surface.)

(internal citations omitted); Depaoli v. Daisy Mfg. Co., No. 07-CV-11778-DPW,

2009 WL 2145721, at *6 (D. Mass. July 14, 2009) (“The scope of a design patent,

like that of a utility patent, may be limited by the applicant’s representations during

the patent’s prosecution history.”) (citations omitted).


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Hence, although the claim construction process for design patents primarily

involves reference to the depiction of the claimed design (i.e., the drawing itself),

the words used by the patentee in describing that design may be highly relevant

and limit the scope of a claim. This includes the patentee’s use of words for the

title of the design. See, e.g., Application of Zahn, 617 F.2d 261, 2653 (C.C.P.A.

1980) (finding that “[t]he title is of great importance in a design application” and

limiting the claimed design to only the shank of the drill bit, and not including the

cutting portion, when the title of the design patent – “Shank of Drill Bit” – was

construed together with the description of the figures).

B. Claim Construction of the ’670 Patent

The claim construction discussion herein is intended to aid this proceeding

and does not waive any arguments concerning lack of ornamentality, enablement,

or functionality that may be raised in litigation. Because claim terms may be

construed according to different standards in litigation versus PTO proceedings,

Petitioners reserve the right to present different constructions depending on the

applicable standard and proceeding, should it be necessary. In particular,

Petitioners believe that the claimed design is invalid for a number of reasons that

cannot be raised in the context of an inter partes review proceeding. All such

invalidity defenses are expressly reserved.


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Non-Final Office Action

On August 6, 2010, the Examiner issued a Non-Final Office Action. In the

action, the Examiner objected to the petition to accept a color photograph, to the

drawing, and to the specification, and ultimately rejected the sole claim. See ’136

Application Prosecution History, Office Action (Aug. 6, 2010) (Ex. 1002 at 28-

34). The Examiner objected to the petition to accept a color photograph because

the petition did not meet the requirements of 37 C.F.R. 1.84(a)(2), instructing that

“[a] grantable petition under 37 CFR 1.84(a)(2) must explain that color drawings

or color photographs are necessary because color is an integral part of the claimed

design. MPEP 1503.02.V.” Id . at 29. The Examiner objected to the Applicant’s

use of the title “Fig. 1” in the drawing because “[w]here only a single view is used

in an application to illustrate the claimed design, it must not be numbered and the

abbreviation ‘FIG.’ must not appear. 37 CFR 1.84(u)(1).” Id . The Examiner

objected to the specification, requiring that “Fig. 1” be replaced with “[t]he sole

figure” and the words “of a first embodiment” be deleted from the figure

description. Id . at 30. The Examiner also objected to the “description of the sole

view as a ‘front perspective view’” because “the view appears to be a top plan

view. The view shows none of the discernible three-dimensional qualities of a

perspective view.” Id . The Examiner also requested deletion of the sentence

stating that “[o]nly elements in the view shown are claimed” under the reasoning


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that “in US design patent practice the design claim is limited to what is shown and

described in the drawings and specification.” Id .

The Examiner further rejected the application’s sole claim based on 35

U.S.C. §§ 102, 103, and 112. See id . at 30-33. Under 35 U.S.C. § 102, the

Examiner held that the claim was “clearly anticipated by the Foltz Buildings.” Id .

at 30-31. The Foltz Buildings reference (“Foltz”) contains photographs of yellow

fiberglass insulation installed in the walls of a building. See id. at 31. The file

history contains a black and white reproduction of one image and a link to the

Foltz website where multiple images can be seen. See id . In the § 102 analysis,

the Examiner took “official notice that the claim appears to be for ordinary

fiberglass batt-type insulation material and has no aesthetic effect that is unique or

different from the common appearance of fiberglass batt insulation material.

MPEP 2144.03.” Id . at 30. The Examiner further held that “the shape and

appearance of Foltz Buildings insulation material is identical in all material

respects to that of the claimed design.” Id . at 31.

Under 35 U.S.C. § 103, the Examiner characterized the Foltz insulation as

“insulation material that includes long fibers that have an overall appearance

remarkably similar to the claimed design.” Id . at 32. The Examiner went on to

outline the design characteristics that “are basically the same” between Foltz and

the claimed invention: “[t]he fibers of the insulation material have been pressed


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In summary, the application was objected to and rejected on multiple

grounds, and the Examiner identified at least the following elements in the claimed

design that were present in the prior art and that rendered the claimed design

anticipated and/or obvious: (1) insulation material; (2) with a cloud-like

appearance; and (3) variations in a swirl pattern.

Examiner Interview

On September 14, 2010, counsel for the Applicant conducted an Examiner

Interview at the USPTO. See ’136 Application Prosecution History, Interview

Summary (Sept. 14, 2010) (Ex. 1002 at 25-26). The Examiner’s summary of the

interview indicates that counsel for the Applicant and the Examiner agreed that a

Replacement Drawing would be filed “of much higher quality than the original” so

that “with a greater resolution the darker and lighter areas would have more

contrast and would permit better understanding of the claimed design’s drastic

differences in contrast.” Id . at 26. There is no record that counsel for the

Applicant ever argued that the claimed design was based in any way on specific

colors, but instead urged that a color drawing was needed solely to allow

appreciation of the “differences in contrast” in the drawing, that is, the lightness

and darkness present in the image. See id.

The Examiner also stated “it was noted that there appeared to be a very

slight indication in some places on the sole figure that there may be a ‘waffle’


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pattern in evidence of production processes.” Id . Agreement between the

Examiner and Applicant’s counsel was also noted regarding changes to the

specification, substitutions, and the deletion of some wording. Id .

Response to Non-Final Office Action

On September 24, 2010, the Applicant submitted a response to the

Examiner’s Office Action. See ’136 Application Prosecution History, Resp. to

Office Action (Sept. 24, 2010) (Ex. 1002 at 15-21). In the response, the Applicant

amended the specification partially in accordance with the Examiner’s objection,

amending Fig. 1 to refer to “[t]he sole figure” and removing reference to “a first

embodiment of.” Id . at 19. The Applicant failed to correct the language objected

to by the Examiner as inaccurately describing the figure as “a front perspective

view.” See id . The Applicant further amended the specification to remove the

language stating that “the design continues in similar fashion beyond the field of

view shown.” Id. at 21.

In responding to the rejections of the claim under 35 U.S.C. §§ 102 and 103,

the Applicant did not address any of the three elements of the claimed design

identified by the Examiner in the Office Action. In particular, the Applicant did

not challenge or attempt to correct the Examiner’s findings that the prior art

showed insulation material that commonly had a cloud-like appearance and

variations in the swirl pattern. Instead, the Applicant focused on an additional


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element not mentioned in the prior office action or interview, arguing that the cited

reference, Foltz, “fails to disclose or suggest an insulation material with a variation

of distinct hues throughout the insulation material, as claimed in the design of the

present invention.” Id. at 19. The Applicant argued that Foltz instead “discloses

an insulation material with the same hue – yellow – throughout. 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 . The Applicant

contrasted this “same hue” in the prior art with the claimed invention which

“includes a variation of distinct hues.” Id . at 20. Although Foltz is a yellow-color

insulation and Applicant’s insulation “design” is not, the Applicant did not attempt

to distinguish Foltz based on its yellow color per se, but instead focused

exclusively on the number of “distinct hues” present. The Applicant also did not

provide any definition of the alleged “variation of distinct hues.” Instead, the

Applicant merely provided an example of what he considered to represent “a

variation of distinct hues,” specifically, a combination “such as brown and cream.”

Id .

The Applicant also attempted to distinguish Foltz on the basis that it “fails to

disclose or suggest an insulation material with a waffle pattern on the surface.” Id .

The Applicant did not provide a definition of “waffle pattern,” and this mention of

a “waffle pattern” appears to stem from the Examiner’s brief observation in the


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Interview Summary of “a very slight indication in some places on the sole figure

that there may be a ‘waffle’ pattern in evidence of production processes” in the

drawing. ’136 Application Prosecution History, Interview Summary (Sept. 14,

2010) (Ex. 1002 at 26).

In summary, in his Response to the Office Action, to overcome the

Examiner’s rejection, the Applicant expressly sought to add two distinct elements

to his claim: a “waffle pattern” and a “variation of distinct hues.”

Petition To Accept Color Photograph

In conjunction with filing the Response to the Office Action, on September

24, 2010, the Applicant filed a revised Petition For Color Photograph. See ’136

Application Prosecution History, Resp. to Office Action (Sept. 24, 2010) (Ex. 1002

at 13). As mandated by the Examiner, the revised petition states that “[a] color

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

Id . The Applicant provided no further explanation as to how color is related to the

claimed invention.

Notice of Allowability

On December 10, 2010, the Examiner issued a Notice of Allowance and

accepted the claim and drawings without a statement of reasons. See ’136

Application Prosecution History, Notice of Allowance and Fee(s) Due (Dec. 10,

2010) (Ex. 1002 at 7-8).


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Final Summary of the ’670 Patent Elements Disclosed in the File History

As described above, the file history of the ’670 patent sets forth five

elements associated with the claimed design: (1) insulation material; (2) with a

cloud-like appearance; (3) with variations in a swirl pattern; (4) with a waffle

pattern; and (5) with a variation of distinct hues. See generally ’136 Application

Prosecution History (Ex. 1002).

Notably, no specific color per se is an element of the ’670 patent’s claim,

just a “variation of distinct hues.” In particular, “brown and cream” were never

claimed by the Applicant during prosecution, but instead merely cited as examples

of the “variation of distinct hues” purportedly shown in the photocopy. The

Applicant did later recite that “color is an integral part of the claimed invention”

when revising his “Petition To Accept a Color Photograph,” but only as a

perfunctory repetition of the Examiner’s citation to the MPEP requirement that the

petition “must explain that color drawings or color photographs are necessary

because color is an integral part of the claimed design.” ’136 Application

Prosecution History, Office Action (Aug. 6, 2010) (Ex. 1002 at 29). Although

repeating the Examiner’s words, the Applicant did not identify any particular color

or colors that are “integral,” nor did the Applicant assert that color is “integral to


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the claimed invention” beyond the “variation of distinct hues” described

previously.2

2. Analysis of the Potential Claim Elements

(a) Insulation material

The ’670 patent’s title, sole claim, and file history all designate that the

claimed design is for “insulation material.” See Ex. 1001; generally Ex. 1002.

Therefore, “insulation material” properly is a claim element.

(b)

Cloud-like appearance

The ’670 patent claims insulation material with a cloud-like appearance.

During prosecution, the Examiner characterized the fibers of the insulation

material as having “been pressed together to form a cloud like appearance.” See

2 The Federal Circuit has held that “color may play a role in the patentability of a

claimed design,” but the patentability of a design may not rest on color alone. In

Re Haruna, 249 F.3d 1327, 1334, 1336 (Fed. Cir. 2001) (citations omitted). To be

an essential feature of a design, color “must be so defined or connected with some

symbol or design.” In Re Cohn, 23 C.C.P.A. 766, 768 (1935). In this case, the

purported colors of the insulation depicted in Applicant’s drawing (e.g., “such as

brown and cream”) have never been defined or connected with any symbol or

design.


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Ex. 1002 at 33. This characterization was not challenged by the Applicant.

Therefore, insulation having a “cloud like appearance” properly is a claim element.

(c) Variations in a swirl pattern

The ’670 patent claims insulation material that contains variations in a swirl

pattern – a well-known characteristic of insulation material. See id . During

prosecution, the Examiner characterized the design as having a surface “swirl

pattern” and further explained that “[v]ariations in swirl pattern of the material are

considered normal in batt insulation materials, as evidenced by reviewing the prior

art listed by the examiner.” See id. Therefore, “variations in a swirl pattern”

properly is a claim element.

(d)

Waffle pattern

For the reasons stated below, and explained in greater detail in the

Declaration of Martin J. Bide (“Bide Decl.”) in conjunction with the Declaration of

Mark A. Granger (“Granger Decl.”), a “waffle pattern” is not properly considered

part of the claimed ornamental design. See Bide Decl. at ¶¶ 21, 23-24 (Ex. 1013);

Granger Decl. at ¶¶ 6-10 (Ex. 1015). The ’670 patent prosecution history first

mentions a waffle pattern in the Examiner’s Interview when the Examiner (not the

Applicant) observed that “there appeared to be a very slight indication in some

places on the sole figure that there may be a ‘waffle’ pattern in evidence of

production processes.” ’136 Application Prosecution History, Interview Summary


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(Sept. 14, 2010) (Ex. 1002 at 26). As explained by Professor Bide, the claim of a

“waffle pattern” is likely an allusion to what appear to be bumpy vertical lines in

the ’670 patent drawing depicting a type of geometric pattern imprinted on the

surface of the insulation material. See Bide Decl. at ¶ 23 (Ex. 1013). Mr.

Granger’s testimony confirms this interpretation of the drawing. See Granger

Decl. at ¶¶ 6-8 (Ex. 1015); see also Bide Decl. at ¶¶ 21, 23-24 (Ex. 1013). In

particular, such a faint waffle pattern is common on the surface of light-density

fiberglass insulation and, as the Examiner surmised, is merely evidence of

production processes. See Granger Decl. at ¶¶ 6-10 (Ex. 1015) (explaining the

fiberglass production process in detail). Specifically, fiberglass insulation that is

sprayed with a binder typically comes to rest on a conveyor belt of a chain-like or

meshed nature (allowing air to contact the fiberglass from underneath) and is

passed through parallel conveyor belts for the drying/curing process. Id . at ¶¶ 5-6.

During this drying/curing process, the pattern of the chain or mesh is imprinted on

both sides of the insulation material. Id . at ¶¶ 6-8. Hence, as inferred by the

Examiner, and as common sense would suggest, this “waffle pattern” is not an

ornamental feature but simply evidence of the well-known insulation production

process.

The law is well established that such an artifact of a production process

cannot constitute an element of an ornamental design. See MPEP § 1504.01(c) (a


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valid design patent “must be the result of a conscious act by the inventor,”

representing “an exercise of the inventive faculty”); Blumcraft of Pittsburgh v.

Citizens & S. Nat. Bank of S.C., 407 F.2d 557, 560 (4th Cir. 1969) (“The statutory

grant of a design patent is for appearance and not for a method of manufacture or

assemblage, function, or utility.”) (citations omitted); Blisscraft of Hollywood v.

United Plastic Co., 189 F. Supp. 333, 336 (S.D.N.Y. 1960) (“It must be motivated

by ornamental or decorative inventiveness because a design dictated solely by

mechanical or functional requirements is not patentable.”) (citations omitted); also

Harmon Paper Co. v. Prager , 287 F. 841, 843 (2nd Cir. 1923) (invalidating a

design patent on wallpaper created by a certain method of manufacturing the paper,

and stating that “what plaintiff really seeks is to cover with this design patent all

paper resulting from the method of manufacturing above described. This cannot be

done.”). As described in the Granger Declaration and observed by the Examiner,

the claimed “waffle pattern” in this design is a well-known byproduct of the

commercial process used to manufacture light-density fiberglass insulation. As

such, a “waffle pattern” should not be considered an element of the sole claim of

the ’670 design patent.

(e)

Variation of distinct hues

The ’670 patent claims insulation material that contains a “variation of

distinct hues,” as exemplified in the sole figure. During the Examiner interview,


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the Examiner commented that a Replacement Drawing was to be filed which

“would have more contrast and would permit better understanding of the claimed

design’s drastic differences in contrast.” See ’136 Application Prosecution

History, Interview Summary (Sept. 14, 2010) (Ex. 1002 at 26). Subsequently, in

Applicant’s Remarks Made in Amendment, the Applicant stated that “the claimed

invention includes a variation of distinct hues,” and distinguished the claimed

invention from the prior art to overcome an Examiner’s rejection by stating that the

cited prior art reference “discloses an insulation material with the same hue.” See

’136 Application Prosecution History, Resp. to Office Action (Sept. 24, 2010) (Ex.

1002 at 19-20). Notably, the Applicant did not distinguish the prior art on the basis

of any specific color, but solely on the absence of a purported “variation of distinct

hues.” Further, as noted previously, Applicant provided no definition or guidance

on how to interpret the meaning of the phrase “variation of distinct hues.”

Therefore, its ordinary meaning applies.

VIII. THE APPLICABLE LEGAL STANDARDS

A.

Obviousness

The test for determining obviousness of a design patent under 35 U.S.C. §

103 is “whether the claimed design would have been obvious to a designer of

ordinary skill who designs articles of the type involved.” Durling v. Spectrum

Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (citation omitted); see also


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Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012). This

inquiry “focuses on the visual impression of the claimed design as a whole and not

on selected individual features.” In re Borden, 90 F.3d 1570, 1574 (Fed. Cir.

1996) (citations omitted). The inquiry “is whether one of ordinary skill would

have combined teachings of the prior art to create the same overall visual

appearance as the claimed design.” Durling, 101 F.3d at 103.

The first step in an obviousness inquiry is to identify a single reference,

which already exists, that has “basically the same” design characteristics as the

claimed design. Durling, 101 F.3d at 103 (citation omitted). Second, “other

references may be used to modify [the primary reference] to create a design that

has the same overall visual appearance as the claimed design.” Id. (citation

omitted); see also High Point Design, LLC v. Buyers Direct, Inc., 730 F.3d 1301,

1311 (Fed. Cir. 2013). The secondary references may be used to modify the

primary reference if the two are “so related that the appearance of certain

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

other.” In re Borden, 90 F.3d at 1575 (citations omitted).

B.

Anticipation

The “ordinary observer test” is used to determine anticipation of a design

patent under 35 U.S.C. § 102. See Int’l Seaway Trading Corp. v. Walgreens Corp.,

589 F.3d 1233, 1240 (Fed. Cir. 2009) (applying Egyptian Goddess to the test for


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anticipation). In the “ordinary observer test,” the design as claimed is compared

with a prior art reference and the Court determines whether an ordinary observer,

familiar with the prior art, would believe that, taken as a whole, the prior art

reference and the claimed design are the same. Egyptian Goddess, 534 F.3d 665,

675, 681 (Fed. Cir. 2008); Sensio, Inc. v. Select Brands, Inc., IPR2013-00500,

Paper 8 at 8 (PTAB Feb. 11, 2014) (confirming use of the ordinary observer test

for anticipation of a design patent). This comparison thus takes into account only

significant differences between two designs; “minor differences cannot prevent a

finding of anticipation.” Int’l Seaway, 589 F.3d at 1243; Sensio, IPR2013-00500,

Paper 8 at 14. Comparison of the overall visual effect of the designs looks to

whether, to an ordinary observer, the claimed design and prior art are substantially

the same. See Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1303 (Fed. Cir.

2010) (citations omitted).

C. Inherency

Under the doctrine of inherent anticipation, a claim limitation that is not

explicitly disclosed by a prior art reference may be inherently anticipated if the

limitation “is necessarily present, or inherent, in the single anticipating reference.”

Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003). Inherent

anticipation applies even if the inherent feature would not have been recognized by

one skilled in the art at the time of the invention. Id. at 1377-78. The Federal


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Circuit has recognized “[t]he patent law principle ‘that which would literally

infringe if later in time anticipates if earlier.’” Id. at 1379 (quoting Bristol-Myers

Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001)). A

limitation claiming the “natural result” flowing from the prior art’s limitations will

be considered anticipated. King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,

1275-76 (Fed. Cir. 2010); SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d

1331, 1343-44 (Fed. Cir. 2005).

D.

One of Ordinary Skill

In this case, one of ordinary skill would be someone with a background and

training in color and color management. See Bide Decl. at ¶ 13 (Ex. 1013); also In

re Nalbandian, 661 F.2d 1214, 1215-16 (C.C.P.A. 1981) (“In design cases we will

consider the fictitious person identified in [section] 103 as ‘one of ordinary skill in

the art’ to be the designer of ordinary capability who designs articles of the type

presented in the application.”). This person would be capable of understanding

color science, the communication of color, and the relevant language of color. See

Bide Decl. at ¶ 13 (Ex. 1013). This person would routinely examine and specify

color as part of their job responsibilities, 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. Id. One of


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ordinary skill could have either an undergraduate degree in color science or the

equivalent training as part of his or her professional work at a color lab or color

instrument manufacturer. Id.

IX. DETAILED EXPLANATION OF GROUNDS FOR

UNPATENTABILITY UNDER THE BROADEST REASONABLE

CONSTRUCTION

The ’670 patent is obvious under 35 U.S.C. § 103 on multiple grounds. The

references and grounds cited are not cumulative to each other. One of ordinary

skill in the art would recognize these references to be important and relevant in

deciding whether the claim is patentable. The arguments below follow the analysis

presented in, and are supported by, the accompanying declaration of Professor

Martin J. Bide, who has taught and worked in the field of color for more than 30

years. See Ex. 1013. With respect to the fourth alleged claim element (the

purported “waffle pattern”), analysis and support also is found in the

accompanying declaration of Mark A. Granger, who has worked in the area of

insulation manufacturing for nearly 40 years. See Ex. 1015.

A.

Ground 1: The Claim Would Have Been Rendered Obvious

Under § 103 by the Johns Manville Thermal and Acoustical

Equipment Insulations for OEM Applications Brochure (Ex.

1004) in View of Either Soundproofing Your Walls, The FamilyHandyman Magazine (Ex. 1008) or Owens Corning – 2006 at a

Glance Report (Ex. 1010)

The Johns Manville Thermal and Acoustical Equipment Insulations for

OEM Applications Brochure (“JM 1997 Brochure”) (Ex. 1004), considered in


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combination with either of two secondary references, renders the ’670 patent

design obvious under 35 U.S.C. § 103.

The JM 1997 Brochure is a printed advertising brochure published in

December 1997 – many years prior to the filing date of the ’670 patent. Ex. 1004

at 14; see also Mota Decl. at ¶ 2 (Ex. 1017); Mullendore Decl. at ¶ 6 (Ex. 1003).

Therefore, the JM 1997 Brochure is a prior-art printed publication under § 102(b).

Below is a visual comparison between the ’670 patent claim and an image excerpt

from the JM 1997 Brochure:

Jackson ’670


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Comparing the two images, it is clear that they have “basically the same” design

characteristics, such that they are substantially similar. See Durling, 101 F.3d at

103 (“Before one can begin to combine prior art designs, however, one must find a

single reference, a something in existence, the design characteristics of which are

basically the same as the claimed design.”) (citation omitted).

1. Elements 1-3

Both designs are (1) insulation material with (2) a cloud-like appearance,

and (3) variations in a swirl pattern.3 See Bide Decl. at ¶ 38 (Ex. 1013).

3 As characterized by the Examiner during prosecution, variations in a swirl pattern

are considered normal in batt insulation materials. See ’136 Application

Prosecution History, Office Action at 6 (Aug. 6, 2010) (Ex. 1002 at 33).

JM 1997 Brochure


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2. Alleged Element 4

(a) A Waffle Pattern Is Inherent in Light-Density

Fiberglass Insulation

As discussed previously in Section VII, a “waffle pattern” should not be

considered an element of the ’670 patent claim. Nevertheless, even if this

comment from the file wrapper is considered a claim element, it is inherent in the

light-density fiberglass insulation products depicted in the references relied upon in

this Petition. This conclusion is supported by the Declaration of Mark A. Granger,

an engineer with nearly four decades of experience in the manufacture of fiberglass

insulation for Owens Corning and Johns Manville – two global fiberglass industry

leaders.

As a result of his experience, Mr. Granger has personal knowledge of the

methods and equipment used in the manufacture of fiberglass insulation. Granger

Decl. at ¶¶ 1-3 (Ex. 1015). There are only a few companies in the U.S. that

manufacture fiberglass insulation, and he is generally familiar with the processes

that are used by each to make such products. Id. at ¶¶ 3-4. Indeed, these

manufacturing techniques have been in use for more than 30 years. Id. at ¶ 4. In

particular, the processes he describes in his declaration have been widely used by

JM and others since at least the year 2005 when he started work at JM. Id. And

the same or similar methods and equipment were in continuous use during his

entire tenure at Owens Corning from 1976 - 2005. Id.


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As Mr. Granger explains, in making fiberglass insulation, very small

diameter glass fibers are generated by melting sand-like materials using specialized

processes and machines. Id. at ¶ 5. When first made, the glass fibers are loose and

without structure. Id. In order to provide the product with sufficient form and

structure to be able to be installed (for example, vertically in walls), the insulation

must be adhered together using chemical binders (adhesives) that are sprayed on

the formed glass fibers, and thereafter the binder must be cured in a heated oven.

Id. While companies may use different binders, the process for curing the binders

on newly formed glass fibers is common and involves transporting the glass fibers

between upper and lower conveyor belts into an oven or kiln where the binder

solution and the glass fibers are heated to a standard curing temperature to adhere

the fibers together to become fiberglass insulation products. Id. at ¶ 6.

As further explained by Mr. Granger, conveyor belts that are used in the

process of fabricating fiberglass insulation share the common characteristic that

they imprint the heated glass fibers that are lying on the conveyor belt with the

surface pattern of the belt. Id. at ¶ 8. The surface of a conveyor belt in this context

is typically a metal mesh that allows hot gases to be forced through the fibers as

the binder is cured. Id. These metal mesh “chains” or metal plates with patterns

and perforations—called “flights”— quite predictably and normally leave a waffle-

like pattern on the surface of the insulation reflecting the contact between the


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conveyor belt surface and the top and bottom surfaces of the insulation bundle

during the curing stage of the production process. Id. In other words, the

conveyor belt pattern literally is baked onto the surface of the insulation as a result

of the heating process that is used to cure the binder, and thus subsequently is

visible to an observer of the cured fiberglass insulation product. Id.

As indicated in Mr. Granger’s testimony, the appearance of a waffle or other

pattern imprinted on a surface of light-density fiberglass insulation is necessarily

part of the production process and is common to light-density fiberglass insulation

of the type depicted in the drawing of the ’670 patent. Because this type of pattern

inevitably is present, this aspect of the claimed design—even if it is a considered

claim element (which it should not be)—is inherent in the insulation disclosed in

each of the prior art references cited in this Petition.

(b)

A Waffle Pattern Is Disclosed in the JM 1997

Brochure (Ex. 1004)

Given that a “waffle pattern” inevitably is present in insulation products of

the type depicted in the prior art references cited in this Petition, it is no surprise

that the alleged waffle pattern element of the ’670 patent claim is visible in the JM

1997 Brochure. In particular, the waffle pattern can be seen imprinted on the

surface of the cured fiberglass product in the below magnified segment of the JM

1997 Brochure, where there is a geometric pattern imprinted on the surface of the

cured fiberglass product. See Bide Decl. at ¶¶ 24, 38 (Ex. 1013).


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3.

Element 5

The Applicant used the phrase “a variation of distinct hues,” but never

defined or explained any part of the phrase. Based on a simple visual assessment,

the JM 1997 Brochure shows some “variation in hues,” so the only potential

question is one of degree. To the extent the Board finds that the “variation of

distinct hues” in the JM 1997 Brochure does not meet this element of the ’670


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patent claim,4 it would have been obvious to modify the variation of distinct hues

in the JM 1997 Brochure in light of either of two different references that each

show nearly identical insulation with an even greater “variation of distinct hues”

than that shown in the ’670 patent image.

(a) Scientifically Evaluating the Claim Element a

“Variation of Distinct Hues”

In the science of color, “hue” is not color per se, but rather refers to an

attribute of color. To scientifically assess “a variation of distinct hues,” Petitioners

retained Dr. Martin Bide of the University of Rhode Island who addressed the

issue by performing spectrophotometric analysis. As described in his

accompanying declaration, Dr. Bide used well-established techniques to quantify

hue as a numeric value. See Bide Decl. at ¶¶ 30-32 (Ex. 1013). In particular, Dr.

Bide used a spectrophotometer to shine light on a small area within the subject (in

this case, a copy of an image). Id . at ¶ 32. The spectrophotometer collected the

light reflected from the colored image and analyzed its intensity compared to that

of the original light at (typically) 10 nm intervals throughout the visible spectrum.

Id. Using an internationally recognized standard called “CIE,” Dr. Bide then

4 Alternatively, should the Board find that the JM 1997 Brochure discloses a

“variation of distinct hues” based on a simple visual assessment, the Board should

find the sole ’670 patent claim unpatentable under 35 U.S.C. § 102(b).


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performed mathematical calculations on the reflectance data. Id. The result is

numerical expressions of lightness, chroma, and hue (L,c,h) values of the color

seen by the standard observer under the given light source. Id. For hue, this is the

“hue angle” measured in degrees. Id. This exercise effectively translates the

measured wavelength reflectance values into values that actually quantify what a

person (who sees color like the standard observer does) looking at the image would

see under that light source. Id. The foregoing technique was employed by Dr.

Bide to evaluate the patented design and used in an identical fashion to evaluate

additional prior art references to determine whether they possess a variation of

distinct hues as great or greater than the patented design. See id. at ¶¶ 37, 39-44.5

5 Importantly, Petitioners take no position here on the ultimate meaning of

“variation of distinct hues.” In fact, the claim is invalid because it is indefinite.

But for the purposes of analysis here, Petitioners are simply using Applicant’s own

design as the measuring stick, that is, the variation in distinct hues present in the

patented design. Thus, in evaluating Petitioner’s grounds under § 103, the Board

need not decide here precisely how much “variation” in hue is needed to fall within

the claim as claimed by the Applicant. The range of variation of hues in each of

the two secondary references discussed is greater than the variation in hues shown

in the claimed ’670 patent design. Thus it would have been obvious to modify the


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(b) Each of Two Secondary References Discloses

Insulation Products with a Greater “Variation of

Distinct Hues” than the ’670 Patent Image

A “variation of distinct hues” is exceedingly common in ordinary light-

density insulation of the type depicted in the ’670 patent image, as seen in each of

the secondary prior art references included with this Petition. This is evidenced in

the Declaration of Martin J. Bide, in which he analyzed six different prior art

references, each of which renders the ’670 patent claim obvious in combination

with the JM 1997 Brochure. See Bide Decl. at ¶¶ 38-45 (Ex. 1013). Nonetheless,

for reasons of efficiency, only two of these references are discussed below: (1) the

Family Handyman article entitled Soundproofing Your Walls by Mac Wentz

(“Soundproofing”) (Ex. 1008); and (2) The Owens Corning – 2006 at a Glance

Report (“OC 2006 Report”) (Ex. 1010).

i.

Soundproofing (Ex. 1008) Discloses a “Variationof Distinct Hues”

Soundproofing (Ex. 1008) is a magazine article published in June 1998 –

many years prior to the filing date of the ’670 patent. Ex. 1008 at 6; see also

Barker Decl. at ¶ 3 (Ex. 1018). Therefore, Soundproofing is a prior art printed

publication under § 102(b).

hues in the JM 1997 Brochure in a manner consistent with these secondary prior

art references.


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With respect to claim element 5 (“variation of distinct hues”), using

spectrophotometric analysis on five or six distinct regions of the prior art images in

this reference, it was determined that three Soundproofing images (shown below)

each contain a variation of distinct hues. See Bide Decl. at ¶ 41 (Ex. 1013).


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The ’670 claimed design contains a variation of hue angles of 36.3. See Bide

Decl. at ¶ 37 (Ex. 1013). The variation of hue angles in the Soundproofing images

is greater: the Soundproofing I image contains a variation of hue angles of 49.7; the

Soundproofing II image contains a variation of hue angles of 40.9; and the

Soundproofing III image contains a variation of hue angles of 41.9. Id . at ¶¶ 37,

41. Hence, the Soundproofing reference discloses the fifth claim element of the

’670 patent claim.

ii.

The OC 2006 Report (Ex. 1010) Discloses a“Variation of Distinct Hues”

The OC 2006 Report (Ex. 1010) is a printed business document published in

October 2006 – more than one year prior to the filing date of the ’670 patent. Ex.


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1010 at 40; see also Barker Decl. at ¶ 5 (Ex. 1018). Therefore, the OC 2006 Report

is a prior art printed publication under § 102(b).

With respect to claim element 5 (“variation of distinct hues”), using

spectrophotometric analysis on five distinct regions of this prior art image (shown

below), it was determined that the OC 2006 Report image contains a variation of

distinct hues. See Bide Decl. at ¶ 43 (Ex. 1013).

Specifically, the OC 2006 Report image contains a variation of hue angles of 51.6

degrees, which is greater than the hue angles variation of 36.3 degrees in the ’670

patent image. Id . at ¶¶ 37, 43. Therefore, the ’670 patent claim element of a

“variation of distinct hues” is present in the OC 2006 Report image.


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(c) To the Extent Not Disclosed in the JM 1997 Brochure,

the Combination of the JM 1997 Brochure with Each

of Soundproofing and the OC 2006 Report Would

Have Been Obvious to One of Ordinary Skill

Using the framework for obviousness described above in Section VIII, the

primary JM 1997 Brochure reference has “basically the same” design

characteristics as the claimed ’670 patent design, thus satisfying the first criterion

for showing obviousness. Durling, 101 F.3d at 103 (citation omitted). And to the

extent that the Board finds that the variation of distinct hues in the JM 1997

Brochure does not satisfy this claim element based on a simple visual comparison,

Soundproofing and the OC 2006 Report each contains a variation of distinct hues

even greater than the ’670 patent design.

Thus, viewing the JM 1997 Brochure in light of either Soundproofing or the

OC 2006 Report yields a design that has substantially the same overall visual

appearance as the claimed design of the ’670 patent. Specifically, such a

combination would be obvious for the reason that the JM 1997 Brochure and both

Soundproofing and the OC 2006 Report are “so related that the appearance of

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

to the other.” In re Borden, 90 F.3d at 1575 (citations omitted). In particular, the

JM 1997 Brochure and both Soundproofing and the OC 2006 Report are highly

related in appearance because they each depict ordinary insulation products with a

cloud-like appearance and a variation in swirl pattern. Moreover, as discussed


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previously (see Section IX.A.2(a), supra), the insulation products depicted in each

reference, either explicitly or inherently, would have a “waffle pattern” on its

surface. In addition, these products are manufactured by companies that directly

compete in the insulation industry. See Granger Decl. at ¶ 2 (Ex. 1015). Not to

mention that, on its face, the JM 1997 Brochure already shows some degree of hue

variation. So to the extent a variation of hues of a magnitude greater than or equal

to that shown in the ’670 patent is required to meet this last claim limitation,

modifying the JM 1997 Brochure in light of the “variation of distinct hues” in

either Soundproofing or the OC 2006 Report would create a hypothetical reference

that has an overall appearance that is identical to that of the ’670 patent design.

See Durling, 101 F.3d at 103. Hence, using a greater “variation of distinct hues”

would have been an obvious modification to the JM 1997 Brochure.

4.

Even If “Brown and Cream” Constitute a Claim Element,

the Claim of the ’670 Patent Would Have Been Rendered

Obvious Under § 103

(a)

“Brown and Cream” Should Not Be Considered a

Color Element of the Claim of the ’670 Patent

As noted earlier, the Federal Circuit has held that “color may play a role in

the patentability of a claimed design,” but the patentability of a design may not rest

on color alone. In Re Haruna, 249 F.3d 1327, 1334, 1336 (Fed. Cir. 2001)

(citations omitted); see also Office Action in Reexamination Control No.

90/012,884 (Aug. 5, 2015), p. 3. To be an essential feature of a design, color


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“must be so defined or connected with some symbol or design.” In Re Cohn, 23

C.C.P.A. 766, 768 (1935). In this Petition, Petitioner has demonstrated how the

Applicant for the ’670 patent never claimed a specific color or combination of

colors as an element of the ’670 patent’s claim, nor has any particular color been

connected with any symbol or design. See Section VII.B.1, supra. On the

contrary, the prosecution history of this patent reflects that the Applicant did not

claim color per se, but rather a “variation of distinct hues” in his drawing. Id.

In his original “Petition To Accept a Color Photograph,” the Applicant did

not claim any particular color and stated only that “[i]t is believed that a color

photograph is the sole practical medium by which to disclose the subject matter of

the application.” ’136 Application Prosecution History, Office Action (Aug. 6,

2010) (Ex. 1002 at 83). After the Petition was rejected and the Applicant was

instructed that a proper Petition To Accept a Color Photograph “must explain that

color drawings or color photographs are necessary because color is an integral part

of the claimed design,” the Applicant still did not claim specific colors. Instead, as

reflected in the Examiner’s Interview Summary, it was agreed that a replacement

drawing was to be submitted “which would be of much higher quality than the

original.” Id. at 26. This higher quality drawing was not submitted to claim a

specific color, but rather because “with a greater resolution the darker and lighter

areas would have more contrast and would permit better understanding of the


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claimed design’s drastic differences in contrast.” Id. And when the Applicant

submitted his second “Petition To Accept a Color Photograph,” he merely repeated

the phrase “color is an integral part of the claimed invention,” but did not identify

any particular color that is “integral,” or explain how color is “integral to the

claimed invention” beyond the “variation of distinct hues” described previously.

See id. at 13.

Against this backdrop, Patent Owner should not now be permitted to claim

“brown and cream” together as a color element of the claimed design.

Nonetheless, in anticipation that the Patent Owners likely will make such an

argument in response to this Petition, Petitioner submits the following.

(b) Even if Brown and Cream Are Considered a Color

Element of the Claim of the ’670 Patent, the Claim Is

Still Obvious

Even if brown and cream are together deemed a color element of the claimed

design of the ’670 patent (and they should not be), the sole claim is still rendered

obvious by the JM 1997 Brochure (Ex. 1004), either alone or in combination with

Soundproofing or the OC 2006 Report. Specifically, the ’670 patent is rendered

obvious because the JM 1997 Brochure (i) possesses itself or, in combination with

Soundproofing or the OC 2006 Report, renders obvious all the other elements of

the claim for the reasons discussed previously (see Section IX.A.1-3, supra); and

(ii) itself possesses a color scheme that is nearly, if not entirely, identical to the


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“brown and cream” color scheme depicted in the ’670 patent drawing. Based on

these similarities, a designer of ordinary skill familiar with the relevant prior art

(see, e.g. , Exs. 1004-1011) would believe that, taken as a whole, the JM 1997

Brochure is substantially the same design as the claimed design. See Durling, 101

F.3d at 103. Therefore, the ’670 patent’s claim is rendered obvious by this

reference. See id . As such, the sole claim of the ’670 patent is not patentable over

the JM 1997 Brochure, even if the colors brown and cream together improperly are

considered a color claim element.

5. JM 1997 Brochure Conclusion

Based on the above similarities, and for the reasons stated, the JM 1997

Brochure contains all of the actual claim elements of the ’670 patent claim;

however, to the extent it does not sufficiently disclose the “variation of distinct

hues” element of the ’670 patent image, then in combination with either

Soundproofing or the OC 2006 Report, the JM 1997 Brochure renders the ’670

patent obvious under § 103. Hence, the Board should find that the sole claim of

the ’670 patent is unpatentable under § 103.


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B. Ground 2: The Claim Would Have Been Rendered Obvious

Under § 103 by the Johns Manville the Worldwide Leader in

Thermal and Acoustical Equipment Insulations for OEM

Applications Brochure (Ex. 1005) in View of Either

Soundproofing Your Walls, The Family Handyman Magazine (Ex.

1008) or Owens Corning – 2006 at a Glance Report (Ex. 1010)

Johns Manville the Worldwide Leader in Thermal and Acoustical

Equipment Insulations for OEM Applications Brochure (“JM 2000 Brochure”)

(Ex. 1005), considered in combination with either Soundproofing or the OC 2006

Report, renders the ’670 patent design obvious under 35 U.S.C. § 103.

The JM 2000 Brochure is a printed advertising brochure published in

October 2000 – many years prior to the filing date of the ’670 patent. Ex. 1005 at

10; see also Mota Decl at ¶ 3 (Ex. 1017); Mullendore Decl. at ¶ 6 (Ex. 1003).

Therefore, the JM 2000 Brochure is a prior-art printed publication under § 102(b).

Below is a visual comparison between the ’670 patent claim and an image excerpt

from the JM 2000 Brochure:


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Comparing the two images, it is clear that they have “basically the same”

design characteristics, such that they are substantially similar. See Durling, 101

F.3d at 103 (“Before one can begin to combine prior art designs, however, one

JM 2000 Brochure

Jackson ’670


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must find a single reference, a something in existence, the design characteristics of

which are basically the same as the claimed design.”) (citation omitted)

1. Elements 1-3

First, both of the designs comprise (1) insulation material with (2) a cloud-

like appearance, and (3) variations in a swirl pattern. See Bide Decl. at ¶ 49 (Ex.

1013).

2.

Alleged Element 4

As with the JM 1997 Brochure (Ex. 1004), given that a “waffle pattern”

inevitably is present in insulation products of the type depicted in the prior art

references cited in this Petition, it is no surprise that the alleged waffle pattern

element of the ’670 patent claim also is visible in the JM 2000 Brochure.

Specifically, the waffle pattern can be seen in the below magnified section of the

JM 2000 Brochure image, where there is a geometric pattern imprinted on the

surface of the cured fiberglass product. See id. at ¶¶ 24, 38.


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3.

Element 5

Based on a simple visual assessment, the JM 2000 Brochure shows some

degree of “variation in hues,” so the only potential issue is one of sufficiency. To

the extent the Board finds that the “variation of distinct hues” in the JM 2000

Brochure does not sufficiently disclose this element of the ’670 patent claim,6 it

would have been obvious to modify the variation of distinct hues in the JM 2000

6 Alternatively, should the Board find that the JM 2000 Brochure discloses a

“variation of distinct hues” based on a simple visual assessment, the Board should

find the sole ’670 patent claim unpatentable under 35 U.S.C. § 102(b).


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Brochure in light of either Soundproofing (Ex. 1008) or the OC 2006 Report (Ex.

1010) – each of which show nearly identical insulation with an even greater

“variation of distinct hues” than that shown in the ’670 patent image.

Using the framework for obviousness described above in Section VIII,

supra, the primary JM 2000 Brochure reference has “basically the same” design

characteristics as the claimed ’670 patent design, thus satisfying the first

requirement for obviousness. Durling, 101 F.3d at 103 (citation omitted).

Moreover, to the extent that the Board finds that the variation of distinct hues in

the JM 2000 Brochure does not satisfy this claim element based on a simple visual

comparison, Soundproofing and the OC 2006 Report each contains a variation of

distinct hues even greater than the ’670 patent design as described previously (see

Section IX.A.3(b), supra).

Thus, viewing the JM 2000 Brochure in light of either Soundproofing or the

OC 2006 Report yields a design that has substantially the same overall visual

appearance as the claimed design of the ’670 patent. Specifically, such a

combination would be obvious because the JM 2000 Brochure and both

Soundproofing and the OC 2006 Report are “so related that the appearance of

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

to the other.” In re Borden, 90 F.3d at 1575 (citations omitted). In particular, the

JM 2000 Brochure and both Soundproofing and the OC 2006 Report are highly


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related in appearance because they each depict ordinary insulation products with a

cloud-like appearance and a variation in swirl pattern. Moreover, as discussed

previously (see Section IX.A.2(a), supra), the insulation products depicted in each

reference, either explicitly or inherently, would have a “waffle pattern” on its

surface. In addition, these products are manufactured by companies that directly

compete in the insulation industry. See Granger Decl. at ¶ 2 (Ex. 1015). In fact,

the JM 2000 Brochure already shows some amount of hue variation. So to the

extent a variation of hues of a magnitude greater than or equal to that shown in the

’670 patent is required to meet this last claim limitation, modifying the JM 2000

Brochure in light of the “variation of distinct hues” in either Soundproofing or the

OC 2006 Report would create a hypothetical reference that has an overall

appearance that is identical to that of the ’670 patent design. See Durling, 101

F.3d at 103. Hence, using a greater “variation of distinct hues” would have been

an obvious modification to the JM 2000 Brochure.

4. Even If “Brown and Cream” Constitute a Claim Element,

the Claim Would Have Been Rendered Obvious Under §

103

Even if brown and cream together are considered to be a color element of

the claimed design of the ’670 patent (and they should not be), then the sole claim

is still rendered obvious by the JM 2000 Brochure (Ex. 1005), either alone or in

combination with Soundproofing or the OC 2006 Report. Specifically, the ’670


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patent is rendered obvious because the JM 2000 Brochure (i) possesses or, in

combination with Soundproofing or the OC 2006 Report, renders obvious all the

other elements of the claim for the reasons discussed previously (see Section

IX.B.1-3, supra); and (ii) itself possesses a color scheme that mirrors the “brown

and cream” color scheme depicted in the ’670 patent claim. Based on these

similarities, a designer of ordinary skill familiar with the relevant prior art (see,

e.g. , Exs. 1004-1011) would believe that, taken as a whole, the JM 2000 Brochure

is substantially the same design as the claimed design. See Durling, 101 F.3d at

103. Therefore, the ’670 patent’s claim is rendered obvious by this reference. See

id. As such, the sole claim of the ’670 patent is not patentable over the JM 2000

Brochure, even if the colors brown and cream together are improperly considered a

color claim element.

5.

JM 2000 Brochure Conclusion

Based on the above similarities, and for the reasons stated, the JM 2000

Brochure contains all of the actual claim elements of the ’670 patent claim;

however, to the extent it does not sufficiently disclose the “variation of distinct

hues” element of the ’670 patent claim, then in combination with either

Soundproofing or the OC 2006 Report, the JM 2000 Brochure renders the ’670

patent obvious under § 103. Therefore, the Board should find that the sole claim of

the ’670 patent is unpatentable under § 103.


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C. Ground 3: Based Upon the Patent Owners’ Claim Construction,

the Claim of the ’670 Patent Is Unpatentable Under § 102 In View

of Johns Manville Thermal and Acoustical Equipment Insulations

for OEM Applications Brochure (Ex. 1004)

As disclosed above, this is the second IPR filed by JM challenging the ’670

patent. In connection with the first IPR (Case IPR2015-01453), on October 13,

2015, the Patent Owners submitted Paper No. 10, a Preliminary Response to JM’s

Petition (the “Response”) (Ex. 1020). In the Response, the Patent Owners take the

position that “[t]he actual ordinary meaning of ‘hue’ is ‘color.’” Response at 12

(Ex. 1020). The Patent Owners also assert that “brown and cream” are colors that

“form a necessary and integral part of the claimed design” and “form one of the

ornamental aspects of the claimed design.” Id. at 11-12. Further, in the Response,

the Patent Owners reject JM’s claim construction analysis and assert that “[t]his

concocted list of elements ignores the overall appearance of the claimed design”

(id. at 6), which is simply brown and cream color insulation.

JM disagrees with the Patent Owners’ simplistic and grossly incomplete

claim construction, but for the purposes of this alternate ground of this Petition,

accept the Patent Owners’ construction that the claimed design is simply brown

and cream color insulation as shown in the drawing of the ’670 patent. Using that

construction, the JM 1997 Brochure (Ex. 1004) anticipates the single claim of the

’670 patent. The JM 1997 Brochure shows brown and cream color insulation as

shown in the drawing of the ’670 patent. Any ordinary observer can confirm this.


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Accordingly, under the Patent Owners’ claim construction, the ’670 patent is

unpatentable under § 102 in view of the JM 1997 Brochure.

D. Ground 4: Based Upon the Patent Owners’ Claim Construction,

the Claim of the ’670 Patent Is Unpatentable Under § 102 In View

of Johns Manville The Worldwide Leader in Thermal and

Acoustical Equipment Insulations for OEM Applications

Brochure (Ex. 1005)

As just mentioned, this is the second IPR filed by JM challenging the ’670

patent. In connection with the first IPR (Case IPR2015-01453), on October 13,

2015, the Patent Owners submitted the Response (Ex. 1020). In the Response, the

Patent Owners take the position that “[t]he actual ordinary meaning of ‘hue’ is

‘color.’” Response at 12 (Ex. 1020). The Patent Owners also assert that “brown

and cream” are colors that “form a necessary and integral part of the claimed

design” and “form one of the ornamental aspects of the claimed design.” Id. at 11-

12. Further, in the Response, the Patent Owners reject JM’s claim construction

analysis and assert that “[t]his concocted list of elements ignores the overall

appearance of the claimed design” (id. at 6), which is simply brown and cream

color insulation.

Again, JM disagrees with the Patent Owners’ claim construction, but for the

purposes of this alternative ground, accept the Patent Owners’ construction that the

claimed design is simply brown and cream color insulation as shown in the

drawing of the ’670 patent. Using that construction, the JM 2000 Brochure (Ex.


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1005) anticipates the single claim of the ’670 patent. The JM 2000 Brochure

shows brown and cream color insulation as shown in the drawing of the ’670

patent. Any ordinary observer can confirm this. Accordingly, under the Patent

Owners’ claim construction, the ’670 patent is unpatentable under § 102 in view of

the JM 2000 Brochure.

X. CONCLUSION

For the reasons set forth in the grounds above, the sole claim of the ’670

patent is obvious under § 103 or, in the alternative, anticipated under § 102. As a

result, this Board should institute inter partes review and find the sole claim of the

’670 patent unpatentable.

Respectfully submitted,

By: /s/ Kristopher L. Reed

Kristopher L. ReedRegistration No. 58,694

Lead Counsel for Petitioners


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Appendix – List of Exhibits

Exhibit

No.Description

Ex. 1001 U.S. Design Patent No. D631,670 to Jackson

Ex. 1002 Prosecution History of U.S. Design Patent No. D631,670 to Jackson

Ex. 1003 Declaration of Laura K. Mullendore

Ex. 1004Johns Manville Thermal and Acoustical Equipment Insulations for

OEM Applications Brochure

Ex. 1005 Johns Manville The Worldwide Leader in Thermal and AcousticalEquipment Insulations for OEM Applications Brochure

Ex. 1006 Owens Corning PROPINK Smartperm™ Vapor Retarder

Ex. 1007 Johns Manville SG Series Spin-Glas® & Range Spin Glas Brochure

Ex. 1008 Soundproofing Your Walls, The Family Handyman Magazine

Ex. 1009 Knauf: Timber Frame External Walls: Non-Residential Brochure

Ex. 1010 Owens Corning – 2006 At A Glance Report

Ex. 1011 Owens Corning 2007 Progress Report

Ex. 1012 U.S. Patent No. 4,734,996 to Kim et al.

Ex. 1013 Declaration of Dr. Martin Bide

Ex. 1014 Curriculum Vitae of Dr. Martin J. Bide

Ex. 1015 Declaration of Mark A. Granger

Ex. 1016 Declaration of Teresa K. O’Brien

Ex. 1017 Declaration of Joe Mota

Ex. 1018 Declaration of Anne N. Barker


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Ex. 1019 Declaration of Michael Fay

Ex. 1020

US PTAB, Case IPR2015-01453, Paper No. 10, Patent Owners’

Preliminary Response to Petition for Inter Parties Review of U.S.

Patent No. D631,670 Under 35 U.S.C. §§ 311-319 and 37 C.F.R. §42.100 et seq. (October 13, 2015)


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CERTIFICATE OF SERVICE

Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), I, Kristopher L. Reed,

certify that on November 2, 2015, a true and correct copy of the foregoing

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.

D631,670 (and accompanying Exhibits 1001-1020) was served upon the below-

listed counsel by Express Mail:

Daniel J. Lueders

Spiro BereveskosWOODARD, EMHARDT, MORIARTY

Johns Manville v. Knauf - 2d IPR Petition

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