Federal Circuit Clarifies the Requirements for a Teaching Away by the Prior Art
In a precedential opinion issued on October 11, 2017, the United States Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeals Board’s (“PTAB”) finding of non-obviousness where the prior art taught away from some, but not all, of the embodiments covered by the challenged claims. In Owens Corning v. Fast Felt Corp., No. 2016-2613 (Fed. Cir. Oct. 11, 2017), the panel held that the PTAB had applied an unreasonably narrow construction to the exclusion of embodiments that were not taught away from by prior combinations disclosing all of the claim elements.
PTAB’s Improper Claim Construction
Fast Felt owns U.S. Patent No. 8,137,757 (“the ‘757 patent”), which it asserted against Owens Corning in the U.S. District Court for the Northern District of Ohio. In turn, Owens Corning petitioned for inter partes review of the claims of ‘757 patent, and the PTAB instituted trial. Owens Corning contended that the challenged claims were rendered obvious by prior art combinations disclosing all elements of the independent claims. However, in its final written decision, the Board determined that Owens Corning failed to provide a motivation to combine and upheld the patentability of the challenged claims. Owens Corning timely appealed.
The ‘757 patent is directed to a method of making roofing or building cover materials with reinforcing nail tabs that attach materials to a wood roof or building stud wall. Claim 1 is illustrative and covers “a method of making a roofing or building cover material,” essentially, by applying pressure and rolling the nail tab material onto the cover material. The ‘757 patent’s preferred embodiments focus on roofing materials that are or will be coated or saturated with asphalt and, in its claim construction, the PTAB limited the claims to materials coated or saturated with asphalt. The Federal Circuit reversed, holding that the PTAB’s construction was not supported by substantial evidence under the broadest reasonable interpretation (“BRI”) standard, where the plain language of the claims encompassed any “roofing or building cover material.”
Teaching Away Is Insufficient If It Does Not Teach Away from All Claimed Embodiments
The closest prior art in the case, “Lassiter,” taught the use of nozzles to deposit nail tab material on roofing and building cover material. Other prior art references taught the addition of reinforcing material using a roller. The Federal Circuit panel observed that when combined with certain secondary references, the Lassiter combinations disclosed all elements of the challenged claims. While the PTAB upheld the ‘757 patent claims in light of these combinations because Lassiter taught away from using “high temperature and roller pressure” as problematic with asphalt materials, the Federal Circuit reasoned that roofing and building cover materials containing asphalt were merely a preferred, but not the only, embodiment disclosed in the ‘757 patent’s specification. Applying the BRI standard, the Federal Circuit concluded that the plain language of the challenged claims was not limited to asphalt materials and that one of skill in the art would not have been sufficiently dissuaded from combining the invalidating prior art for every embodiment covered by the challenged claims. Accordingly, the Federal Circuit reversed the PTAB’s conclusion and held the ‘757 patent claims invalid as obvious.
The Federal Circuit’s decision is instructive and clarifies that the motivation to combine references will not be extinguished based only on preferred or selected embodiments. For patent owners to successfully argue that prior art references teach away from claims challenged in an IPR proceeding, there needs to be a showing that a skilled artisan would not have been led to combine the prior art to reach any of the embodiments within the scope of the challenged claims.