[00:00:37] Speaker 00:
Okay.

[00:00:38] Speaker 00:
The next argued case is number 16, 2613, Owens Corning against Fast Felt Corporation.

[00:00:45] Speaker 00:
Mr. Trelo.

[00:00:50] Speaker 04:
Thank you, Your Honor.

[00:00:51] Speaker 04:
Good morning and may it please the Court.

[00:00:54] Speaker 04:
The disagreement in this appeal is really quite narrow.

[00:00:58] Speaker 04:
It's undisputed that the Lasseter patent discloses everything in the 757 claims except

[00:01:04] Speaker 04:
that instead of the 757's revere or offset method of depositing tab material, Lasseter uses a nozzle spray method.

[00:01:13] Speaker 04:
Now that's only in a preferred embodiment in Lasseter.

[00:01:17] Speaker 04:
Lasseter's claims aren't limited to the spray-on method.

[00:01:20] Speaker 04:
And the specification of Lasseter invites substitution by describing a specific spray-on environment, I'm sorry, embodiment, one that uses actually a cardboard box machine

[00:01:32] Speaker 04:
and noting that any other suitable equipment can be used if desired.

[00:01:37] Speaker 04:
As the board found, the Heffel and Eaton patents disclose such alternative equipment and methods.

[00:01:43] Speaker 04:
The board found that each of those, in combination with Lasseter, discloses an alternative way of depositing nail-tab material, namely the same gravure and offset methods claimed in the 757 patent.

[00:01:57] Speaker 04:
Background references in the record taught that gravure and offset-type print methods

[00:02:02] Speaker 04:
have recognized advantages over other methods, including they were cheaper, simpler.

[00:02:07] Speaker 01:
Why is the board, on this record, not entitled to find?

[00:02:14] Speaker 01:
You had the burden of persuasion.

[00:02:16] Speaker 01:
You just haven't persuaded us that the relevant skilled artisan would look over at the H&E references, like Heffley and Eaton.

[00:02:30] Speaker 01:
which are potentially something somebody might look at, but they don't in fact involve a substrate that is either has been or is to be coated with asphalt, which is what the claim construction means.

[00:02:49] Speaker 01:
And so you just haven't proved the critical step in adding to Lassiter what

[00:02:58] Speaker 01:
is taught for different kinds of substrates by the other two references?

[00:03:04] Speaker 04:
Well, that's what the board said.

[00:03:08] Speaker 04:
And that was its conclusion.

[00:03:09] Speaker 04:
But I think its reasoning underlying that conclusion reflects some legal errors.

[00:03:14] Speaker 04:
And that's the problem.

[00:03:16] Speaker 04:
And let me start with the claim construction.

[00:03:18] Speaker 04:
Because I don't think the claim construction properly understood, in fact,

[00:03:23] Speaker 04:
requires that the materials will eventually be asphalt saturated.

[00:03:27] Speaker 04:
I don't think it matters, because what matters is the condition of the material at the time that the printing, the depositing of the tab material is placed.

[00:03:36] Speaker 04:
And it's crystal clear that that can be unsaturated, including dry felt material, which is a fibrous paper made from recycled paper and cardboard.

[00:03:46] Speaker 02:
But what the... Well, let's talk about the client construction, because I find it very confusing.

[00:03:53] Speaker 02:
references in the specification that suggest that an asphalt substrate is not required.

[00:03:59] Speaker 02:
And then on page 33 of the board's decision, we have this, what I consider a very confusing sentence, beginning, although we agree with the issue, the claim one does not require an asphalt coated substrate, and then it goes on to say we can screw it in such and such a way.

[00:04:16] Speaker 02:
The two parts of that sentence on the face may be inconsistent

[00:04:22] Speaker 04:
Well, I think there is.

[00:04:24] Speaker 04:
I agree with you.

[00:04:25] Speaker 04:
I think there's a non sequitur there, because we had been arguing, as the board recounts just before that, that all of Fassfeld's arguments, its experts, in fact, were focused completely on asphalt saturated substrates.

[00:04:38] Speaker 04:
And its position was it has to be asphalt saturated at the time that the tabs are applied.

[00:04:44] Speaker 04:
And so we argued, well, no, that's not what the claims mean.

[00:04:47] Speaker 04:
The board said, well, we agree with that.

[00:04:49] Speaker 04:
But then the board flipped right back to,

[00:04:52] Speaker 04:
focusing on asphalt saturation.

[00:04:55] Speaker 02:
I'm trying to, I guess, get your view as to how I should interpret that sentence, which seems to be internally contradictory.

[00:05:06] Speaker 04:
The although sentence?

[00:05:07] Speaker 04:
Yeah.

[00:05:09] Speaker 04:
I think that that sentence, I'm not entirely sure how to interpret that sentence.

[00:05:16] Speaker 04:
I mean, the first part of it is right.

[00:05:19] Speaker 04:
It does not require an asphalt-coated substrate.

[00:05:22] Speaker 04:
And so I think the board's right there.

[00:05:28] Speaker 04:
But then it seems to ignore that, and then go on and say, but we're going to look at asphalt saturated substrates anyway.

[00:05:35] Speaker 04:
I don't have any better explanation than just, I think, the board had the construction right, but then failed to apply it properly.

[00:05:42] Speaker 01:
Right, but I mean, in your brief and here, when you seem to be referring to asphalt saturated

[00:05:51] Speaker 01:
substrates as a singular thing when the board's claim construction expressly referred to the pre and post saturation versions of that.

[00:06:04] Speaker 01:
And what it rejected was the argument that the claim referred only to the already saturated material and said, no, it also refers to material before it has been saturated, which I took to be a

[00:06:18] Speaker 01:
pretty clear implication that this is the material that is going to be saturated?

[00:06:25] Speaker 04:
Well, I don't think that's... I mean, I see... When you focus on that one sentence in the board's opinion, I can certainly see how you would draw that conclusion.

[00:06:33] Speaker 04:
I don't think it's right, though, for a couple of reasons.

[00:06:36] Speaker 04:
First of all, there's nothing in the claims calling for an asphalt saturation step.

[00:06:41] Speaker 04:
Fastheldt had argued for one.

[00:06:43] Speaker 04:
The board has specifically rejected that.

[00:06:45] Speaker 04:
And if you look elsewhere in the board's opinion, and I'll just point to a couple of places.

[00:06:51] Speaker 04:
For example, appendix page 13, the board says there is no indication that asphalt treatment must be part of the process or that it must occur before nail tabs are applied to the roofing material.

[00:07:04] Speaker 04:
Goes on page 14.

[00:07:06] Speaker 04:
The treating and extended length of substrate language in the preamble of claim one is not a limitation.

[00:07:11] Speaker 04:
Accordingly, we find that claim one does not preclude depositing tab material onto base substrate materials that are not asphalt-coated or saturated.

[00:07:19] Speaker 04:
And there are multiple other places in the board's opinion where it does not suggest that there has to be some unclaimed subsequent saturation step.

[00:07:29] Speaker 04:
And the other thing I would note.

[00:07:31] Speaker 01:
is that the only time... Let me just add, it seems to me that is still a somewhat different point from the question if the material that is to be printed on is eventually going to be saturated with asphalt, what does that tell you about what the relevant skilled artisan would be looking around to

[00:08:00] Speaker 01:
to find techniques to do.

[00:08:02] Speaker 01:
And I think at the heart of this, this page 33 is really the heart of it, where it seems to me the board has said, you just haven't shown us why the relevant roofing material focused person is going to look at the clothing art.

[00:08:19] Speaker 04:
Understood.

[00:08:21] Speaker 04:
And here are the problems with that.

[00:08:23] Speaker 04:
First of all, this is not limited to roofing material.

[00:08:27] Speaker 04:
Every time the patent talks about asphalt, it's talking about in the context of roofing material, this patent covers roofing and building cover material, there's no indication that building cover material has to be asphalt saturated.

[00:08:39] Speaker 04:
And to the contrary, the Lasseter reference, which talks about styrofoam sheeting and styrofoam boards, it's clear that that's not asphalt saturated in the main prior art reference.

[00:08:50] Speaker 04:
So there's no indication, even if

[00:08:54] Speaker 04:
you take the board at its face value there, this patent goes beyond roofing material.

[00:08:59] Speaker 04:
It goes to building cover materials, which are not asphalt saturated.

[00:09:03] Speaker 01:
The other problem here is... That's a point that maybe I'm just misremembering, but I don't remember that being a point of specific contention before the board, because it would have been hard for the board to write its claim construction with that before language in it, which

[00:09:23] Speaker 01:
You don't dispute if you're talking about, like, Tyvek is at the... That's an example.

[00:09:30] Speaker 01:
Tyvek is doing on the sides of buildings.

[00:09:34] Speaker 04:
Well, I would note, Your Honor, on page 33 that you were referring to, up at the top, the board does note that Lassiter discloses forming nail cuts on unsaturated sub-3, such as styrofoam board, et cetera.

[00:09:50] Speaker 04:
So the board, I mean, the point was made to the board.

[00:09:53] Speaker 04:
The board seemed to acknowledge it, but then seemed not to follow through on it.

[00:09:57] Speaker 04:
So that's the problem.

[00:10:00] Speaker 04:
And I think the reason that that before coding crept into at least that one part of the board's claim construction is because that's the way the issue was teed up for the board.

[00:10:11] Speaker 04:
Fast Help was arguing, it's got to be coded or saturated at the time the TAM material is applied.

[00:10:17] Speaker 04:
We were saying, no, look at the specification.

[00:10:19] Speaker 04:
It makes clear that it doesn't have to be coded when tabs are applied.

[00:10:23] Speaker 04:
And so that's what the board zeroed in on.

[00:10:25] Speaker 04:
There was no discussion about what happens afterwards.

[00:10:29] Speaker 04:
That simply wasn't a concern.

[00:10:31] Speaker 04:
And I think the other statements in the board's opinion put that into the proper context.

[00:10:38] Speaker 04:
That wasn't the focus.

[00:10:39] Speaker 04:
That wasn't really the point the board was making.

[00:10:41] Speaker 04:
It's not actually a point that Fast Health has made on appeal.

[00:10:45] Speaker 04:
So when you look at the materials that are within the scope of the claims, that is, what are you printing tap material on?

[00:10:53] Speaker 04:
Yeah, tap material on.

[00:10:55] Speaker 04:
It's unsaturated things.

[00:10:57] Speaker 04:
It's dry felt.

[00:10:58] Speaker 04:
It's polyester.

[00:10:59] Speaker 04:
It's materials that are just like the materials in Heffal and Eaton.

[00:11:03] Speaker 04:
And I'd also add, Your Honor, that the relevant field here is not just the manufacturing.

[00:11:13] Speaker 04:
Pardon me.

[00:11:13] Speaker 04:
is not just the manufacture of roofing materials.

[00:11:17] Speaker 04:
It's revere and offset printing.

[00:11:19] Speaker 04:
So the person of ordinary skill is familiar with both of those.

[00:11:23] Speaker 04:
And it would be perfectly logical for that person, as we argued, to look to references like Eaton and Heffel when you're dealing with printing on material that is not asphalt saturated.

[00:11:34] Speaker 04:
The other point I would make, Your Honor, is that background references that the board ignored, like the Lahlwani and Allman patents,

[00:11:43] Speaker 04:
specifically teach that spray-on and gravure methods are alternatives when manufacturing roofing material.

[00:11:54] Speaker 04:
Lalwani, in particular, is dealing with shingles, which are asphalt saturated.

[00:12:01] Speaker 04:
And the problem is allergies.

[00:12:05] Speaker 04:
I don't think water's going to help me.

[00:12:08] Speaker 01:
I appreciate that.

[00:12:09] Speaker 04:
Water's on.

[00:12:10] Speaker 04:
Oh, thanks.

[00:12:15] Speaker 04:
But the board ignored references that directly taught substituting one method of depositing polymeric material for another in the roofing material context.

[00:12:25] Speaker 04:
So even if you were just looking at someone with skill in roofing materials, references that the board ignored would have led that person to look to reviewer, which had noted advantages as a substitute for spray-on.

[00:12:38] Speaker 04:
They accomplished the same thing.

[00:12:40] Speaker 00:
But that's really the issue, is it not?

[00:12:43] Speaker 00:
What would have led them?

[00:12:45] Speaker 00:
to look to a reviewer.

[00:12:46] Speaker 00:
It was clear that the board was impressed that there was nothing that would have led to the reviewer system.

[00:12:54] Speaker 04:
That's correct.

[00:12:55] Speaker 04:
And the reason the board thought there was nothing was because of this supposed limitation to asphalt saturated materials.

[00:13:02] Speaker 04:
And let me just touch on the teaching away part of the board's opinion, which is part of this.

[00:13:07] Speaker 04:
That all hinge specifically on the material being treated with hot asphalt

[00:13:13] Speaker 04:
and being hot when the tabs were applied.

[00:13:15] Speaker 00:
Can you point to a suggestion to look through Gruevier?

[00:13:19] Speaker 04:
Oh, I can point to a suggestion to look through other methods, and that's in Lasseter itself, which says that, yeah, I'm using this particular spray-on machine that had been used to make cardboard boxes, but other suitable equipment can be used if desired.

[00:13:33] Speaker 04:
And Lasseter's claims, as I mentioned, aren't limited to the spray-on method.

[00:13:37] Speaker 04:
It just says deposit tab material on this, you know,

[00:13:40] Speaker 04:
The substrate.

[00:13:41] Speaker 00:
But it doesn't mention gravure.

[00:13:42] Speaker 00:
It does not mention gravure.

[00:13:43] Speaker 00:
This is what we have the obstacle, I think, that needs to be overcome.

[00:13:47] Speaker 04:
Well, and it's overcome, I think, by Allman and Lallani, which in the roofing context say that spray-on and roller-type gravure processes are alternatives to one another.

[00:13:58] Speaker 00:
Do they use the word gravure?

[00:14:03] Speaker 04:
Allman uses the word gravure.

[00:14:05] Speaker 04:
And the Lawani talks about print roller method, but that's the point.

[00:14:09] Speaker 04:
It's a roller method that uses contact with the substrate, which is what the board thought was the problem here.

[00:14:15] Speaker 04:
The other point that I'd like to make is on the teaching away point, first of all, it's completely limited to materials being treated with hot asphalt at the time that the tabs are applied.

[00:14:26] Speaker 04:
That's not required by these claims.

[00:14:28] Speaker 04:
The other thing I would note is that to the extent

[00:14:31] Speaker 04:
that Lasseter identifies some sort of a problem with that, or in some sense teaches a way.

[00:14:37] Speaker 04:
This patent does not solve that problem.

[00:14:39] Speaker 04:
It doesn't claim or identify any solution to it.

[00:14:43] Speaker 04:
It's basically Lasseter with the substitution of standard gravure process.

[00:14:47] Speaker 04:
There's no special rollers.

[00:14:49] Speaker 04:
There's no special equipment.

[00:14:50] Speaker 04:
There's nothing that's supposed to somehow solve this problem.

[00:14:55] Speaker 04:
And an unclaimed and undescribed solution to a problem is not evidence of non-obviousness.

[00:15:01] Speaker 04:
I'd like to save the remainder of my time if the court has no further questions.

[00:15:06] Speaker 00:
Okay.

[00:15:06] Speaker 00:
Thank you, Mr. Treller.

[00:15:07] Speaker 00:
Thank you.

[00:15:12] Speaker 00:
Mr. Burser?

[00:15:15] Speaker 03:
May it please the court?

[00:15:16] Speaker 03:
There's an obvious difference between printing the paper... Let me tell you what my problem is.

[00:15:22] Speaker 02:
I'm not sure what the board's claim construction was, but it seems to me, looking at the claim line, which doesn't mention asphalt,

[00:15:31] Speaker 02:
and looking at the specification that it's very hard under VRI to say that this doesn't cover material that's not asphalt saturated.

[00:15:42] Speaker 02:
For example, in column one it talks about usually asphalt saturated twice and then most significantly in column five at line 65 and 66 it

[00:15:56] Speaker 02:
lists the kind of materials that are involved here and says whether or not coated with asphalt or an asphalt mix.

[00:16:05] Speaker 02:
So how is it in the light of that language and the specification that in the VRI standard that you get this claim limited to asphalt saturated material?

[00:16:17] Speaker 03:
Well, first of all because they haven't complained about the claim interpretation.

[00:16:22] Speaker 03:
There's

[00:16:22] Speaker 03:
the claim interpretation.

[00:16:24] Speaker 03:
Well, let's skip over that for a moment.

[00:16:29] Speaker 02:
If the board, and I don't know what the board's construction is, frankly, because of those seemingly conflicting statements on 33 and elsewhere, suppose that the board did say it has to be asphalt saturated, that's why Lassiter teaches away.

[00:16:46] Speaker 02:
How can that be correct in the light of the claim language

[00:16:51] Speaker 02:
and this specific reference in the specification whether or not coated with asphalt uh... several reasons one the only expert in roofing said for decades that predominant roofing cover material for wood frame construction has utilized asphalt roofing products purpose of a roof is to shape water please let's just stick with the intrinsic evidence in trying to make a claim construction here based on the claim language and the specification how can

[00:17:21] Speaker 02:
How can it be under the BRI standard in the light of this very specific language and specification that the claim is limited to asphalt saturated?

[00:17:31] Speaker 03:
Because the claim is limited to roofing and building cover materials.

[00:17:37] Speaker 03:
I don't think there's anything unclear about the board's construction of roofing and building cover materials.

[00:17:42] Speaker 02:
It's either... You're just not answering my question.

[00:17:46] Speaker 02:
I'm sorry.

[00:17:47] Speaker 02:
I'm asking you

[00:17:49] Speaker 02:
A specific question is how can it be that these claims are construed to be limited to S-Fault saturated material when the specification says the opposite?

[00:18:06] Speaker 03:
It's a little unfair, Judge, to ask me how to respond on the run about an argument that was never made.

[00:18:15] Speaker 03:
This argument about stock

[00:18:17] Speaker 03:
You don't put Styrofoam on the roof.

[00:18:19] Speaker 03:
There's no evidence at all that you put Styrofoam on the roof.

[00:18:22] Speaker 02:
You can't answer my question.

[00:18:26] Speaker 03:
That's what the answer is.

[00:18:27] Speaker 03:
The specification is for siding for Styrofoam.

[00:18:31] Speaker 03:
Yes, you can do that.

[00:18:32] Speaker 02:
It says whether or not coated with asphalt or an asphalt mix.

[00:18:39] Speaker 02:
Does not that suggest that it could be without asphalt saturation?

[00:18:45] Speaker 03:
I spoke that language, which suggested it could be without it.

[00:18:49] Speaker 03:
But when a person of skill in the art interprets claims, they keep in mind what the skill in the art is.

[00:18:59] Speaker 03:
And the skill in the art is not what a lawyer can figure out later.

[00:19:02] Speaker 03:
Oh, there might be a hole here.

[00:19:05] Speaker 03:
This is roofing.

[00:19:07] Speaker 03:
Roofing.

[00:19:08] Speaker 01:
Can I just ask, Mr. Trello pointed out that

[00:19:13] Speaker 01:
The claim term construed at the bottom of page 10 is roofing or building cover material, which is beyond roofing.

[00:19:25] Speaker 01:
The stuff on the sides of the building would presumably be covered.

[00:19:29] Speaker 01:
Was there an issue made out of that?

[00:19:32] Speaker 01:
Because it seems to me, why not?

[00:19:39] Speaker 03:
the board construed roofing and building cover material to be saturated before or after with asphalt.

[00:19:48] Speaker 03:
That's not one of their points on appeal.

[00:19:50] Speaker 03:
That's not one of their complaints that the interpretation of that term was wrong.

[00:19:56] Speaker 03:
So I am a little non-blusted to how to answer that.

[00:20:02] Speaker 02:
They say the board didn't interpret it to require asphalt saturation.

[00:20:06] Speaker 02:
They did not.

[00:20:07] Speaker 02:
Not enough.

[00:20:08] Speaker 02:
The board did, too.

[00:20:10] Speaker 02:
Well, that's a question.

[00:20:11] Speaker 02:
But they certainly argue that in their view, the board claim interpretation didn't require asphalt saturation.

[00:20:19] Speaker 02:
And there is that language on page 33 where the board seems to agree with the petitioner in that respect.

[00:20:26] Speaker 03:
I don't think so, Your Honor, respectfully.

[00:20:30] Speaker 03:
It says the case substrate material before COVID.

[00:20:34] Speaker 01:
I'm sorry.

[00:20:34] Speaker 01:
What are you reading from?

[00:20:36] Speaker 03:
The interpretation of the roofing and building coverage.

[00:20:40] Speaker 01:
At the bottom of A10.

[00:20:42] Speaker 01:
Accordingly, we interpret.

[00:20:43] Speaker 03:
Right.

[00:20:44] Speaker 03:
And it's before coating and asphalt-coated or saturated substances such as tar paper.

[00:20:51] Speaker 03:
So that's the after coating.

[00:20:53] Speaker 02:
Well, what are we to understand when they say we agree with the petitioner that claim one does not require an asphalt-coated substrate?

[00:21:02] Speaker 03:
because it doesn't require the substrate to be coated with asphalt before.

[00:21:07] Speaker 02:
It does require it.

[00:21:08] Speaker 02:
But that wasn't the petitioner's argument, right?

[00:21:10] Speaker 02:
The petitioner's argument is it didn't require asphalt at all.

[00:21:13] Speaker 03:
No, that was not their argument.

[00:21:15] Speaker 03:
They never made that argument?

[00:21:16] Speaker 03:
That was not.

[00:21:17] Speaker 03:
Their argument was it didn't require it before.

[00:21:19] Speaker 03:
That's why 15% of the board's opinion is whether it's required to be the asphalt goes on before or after the nail taps.

[00:21:29] Speaker 03:
15% of the opinion is only about before or after

[00:21:32] Speaker 03:
15% of the opinion is not about cyber foam or non-asphalted materials.

[00:21:39] Speaker 02:
And the only expert evidence is... I thought they did argue before the board that it didn't have to be asphalted.

[00:21:47] Speaker 03:
Well, maybe you can ask opposing counsel where exactly that is.

[00:21:53] Speaker 03:
And I would warn you, of course, they say the board required a specific statement of motivation to improve.

[00:22:00] Speaker 03:
Where exactly did the board state that?

[00:22:03] Speaker 03:
The board didn't ever say that.

[00:22:04] Speaker 03:
The board noted there was no... That's a different point.

[00:22:06] Speaker 02:
The question is, did they argue to the board, and interpreting this language on page 33, it's important to know what they argued to the board.

[00:22:16] Speaker 02:
I agree.

[00:22:16] Speaker 02:
Did they argue to the board that the claims don't require an asphalt substrate?

[00:22:22] Speaker 02:
I thought they did, but I may be wrong about that.

[00:22:25] Speaker 03:
As you state that it doesn't require the asphalt coated substrate,

[00:22:29] Speaker 03:
is that it doesn't have to be coated before.

[00:22:32] Speaker 03:
The argument they never made is it doesn't have to be coated before or after.

[00:22:39] Speaker 03:
Their argument is that it doesn't have to be coated before.

[00:22:44] Speaker 03:
There's obvious problems if you have to send hot asphalt through when you're trying to put the nail tabs on.

[00:22:49] Speaker 03:
But they're the same problems, and additional ones, if you send it to asphalt coating after you put the nail tabs on.

[00:23:00] Speaker 03:
With the time I've got left, let me just make a few statements.

[00:23:05] Speaker 00:
Was there any movement to amend the claims, to restrict the broadest claims, either to the reviewer process, which is not here at issue, or to something which would have resolved the issues that we're debating?

[00:23:22] Speaker 03:
No.

[00:23:24] Speaker 03:
The dispute in the patent and trade board was whether these

[00:23:30] Speaker 03:
combinations were obvious because they both involved paper.

[00:23:35] Speaker 03:
That's what the whole dispute was about.

[00:23:37] Speaker 03:
That's what the briefing was about.

[00:23:39] Speaker 03:
And what the board found is there's an obvious difference between paper in the secondary references and tar paper.

[00:23:46] Speaker 03:
Tar paper is a term of art.

[00:23:48] Speaker 03:
Tar paper means it's got asphalt coating on it.

[00:23:52] Speaker 03:
And what comes out of the process and goes under your shingles is tar paper.

[00:23:57] Speaker 03:
It has to have asphalt on it.

[00:23:59] Speaker 03:
That's what the only expert testimony is.

[00:24:04] Speaker 03:
So the dispute was, and their briefing here is that, well, there's an overlap because they both use paper.

[00:24:11] Speaker 03:
But they're very different types of paper.

[00:24:19] Speaker 03:
Skip through and eliminate some things here.

[00:24:22] Speaker 01:
Did you happen to remember was

[00:24:27] Speaker 01:
Owens Corning's argument about this claim construction made only in reply to your patent owner response?

[00:24:36] Speaker 03:
No, it was in their petition, as I recall.

[00:24:40] Speaker 03:
The argument that it was before and that the problem was it was before and after.

[00:24:45] Speaker 03:
And the reason is because the teaching away in Lassiter is not a teaching away from

[00:24:55] Speaker 03:
fixing nail tabs to asphalt saturated materials.

[00:24:59] Speaker 03:
It's just the opposite.

[00:25:02] Speaker 03:
Laster says the problem is if you spray on these tabs and then send it through a pressure roller to apply the asphalt, it's going to knock the tabs loose.

[00:25:13] Speaker 03:
It's going to melt the sprayed materials.

[00:25:19] Speaker 03:
That was itself an argument against, they say, oh, well, that doesn't teach you a way, because it's a different process it's putting on the tabs before you send it to the asphalting process.

[00:25:32] Speaker 03:
But you create other problems as well, but that's not a reason.

[00:25:39] Speaker 03:
Teaching a way, let me put it this way.

[00:25:42] Speaker 03:
They say the teaching away doesn't explain how they fix this.

[00:25:46] Speaker 03:
Well, it's not our burden to explain how the teaching way is right or wrong.

[00:25:52] Speaker 03:
Teaching away can discourage improvements or innovations even if it's wrong.

[00:25:57] Speaker 03:
The teaching away, it's their burden to have somebody who's in the roofing industry say teaching away, this teaching away, everybody would have known this is wrong and therefore it's not a discouragement.

[00:26:09] Speaker 01:
What do you do with the fact that the

[00:26:11] Speaker 01:
Borge didn't limit the person of relevant skill in the art to a roofing person.

[00:26:21] Speaker 01:
This is a particular kind of roofing person that also knows about printing processes, maybe even from outside the roofing world.

[00:26:32] Speaker 01:
I'm being imprecise.

[00:26:35] Speaker 03:
Said you need somebody an expert in printing, and you need somebody who's an expert in roofing, and they only have one in printing.

[00:26:41] Speaker 03:
printing, of course, is being used here for affixing.

[00:26:44] Speaker 03:
You're not really printing a picture of a nail tab, you're sticking something on it.

[00:26:49] Speaker 03:
And that's got to be correct because section 103 says it's got to be obvious to a person, skilled in the art of the subject matter.

[00:27:00] Speaker 03:
So if you're

[00:27:01] Speaker 03:
It is true, there are going to be certain times, the background references say no, there's going to be certain times when you can spray print or you can impression print.

[00:27:10] Speaker 02:
It's probably pretty hard to find an expert who can combine roofing expertise with rubber printing expertise.

[00:27:17] Speaker 03:
I'd say that's probably right.

[00:27:19] Speaker 03:
But the deal then, what you can't do is leave out the art that you're trying to create.

[00:27:23] Speaker 03:
So if you want to say, we're going to print on silicon chips,

[00:27:28] Speaker 03:
pretty useful but you're going to need somebody who knows something about silicon chips because you're printing on something very small.

[00:27:34] Speaker 03:
Somebody will say printing in outer space.

[00:27:37] Speaker 03:
Printing is useful but a spray printer is probably not going to work in outer space.

[00:27:41] Speaker 03:
So you're going to have to know somebody who knows something about outer space.

[00:27:46] Speaker 03:
And the same is true here.

[00:27:47] Speaker 03:
We're printing on roofing materials and building siding materials.

[00:27:52] Speaker 01:
Can I just?

[00:27:53] Speaker 01:
Right.

[00:27:53] Speaker 01:
So let me pick up on your last four or five words.

[00:27:56] Speaker 01:
And building siding materials.

[00:27:57] Speaker 01:
So I'm looking at

[00:27:59] Speaker 01:
Owens' reply brief at pages 347, 342 of the appendix, where Owens says, all of this talk about saturated materials, that's not in the claim.

[00:28:16] Speaker 01:
And look at Lasseter.

[00:28:17] Speaker 01:
Lasseter specifically discloses depositing nail tab material on unsaturated building cover materials, such as siding materials.

[00:28:26] Speaker 01:
So I guess I'm not sure that it would be fair to say, unless you can show me something, that Owens failed to argue to the board that non-roofing building materials, including materials that would never be saturated, were outside the scope of his claim.

[00:28:50] Speaker 01:
I step away for a moment, and I'm not sure what you're referring to.

[00:28:59] Speaker 03:
Again, the board construed building and roofing materials to be saturated before or saturated after.

[00:29:08] Speaker 03:
They had not appealed or complained about that point.

[00:29:13] Speaker 03:
If I lose on that point, I'm going to lose on a point that they didn't raise.

[00:29:17] Speaker 03:
They didn't put it as an issue or complaint about what the board did wrong.

[00:29:23] Speaker 03:
The board is going to be as surprised as me that that is what

[00:29:27] Speaker 03:
because that was the first thing they construed.

[00:29:32] Speaker 03:
And as I said, it's 15% of the opinion.

[00:29:34] Speaker 03:
And if that's wrong, they should have said something more about that.

[00:29:38] Speaker 03:
Then I'm sorry, and you said, where on page?

[00:29:41] Speaker 01:
Well, the argument made is, I guess, starts at page 339.

[00:29:48] Speaker 01:
And then I was looking at particular, and it goes for three and a half pages.

[00:29:52] Speaker 01:
The heading is

[00:29:53] Speaker 01:
Asphalt saturated substrates can't be used to distinguish a prior art because no such limitation is recited in the claims.

[00:30:01] Speaker 01:
Subheading asphalt saturated substrates are not recited in the claims and eventually then it starts talking about the prior art.

[00:30:08] Speaker 01:
Lasseter also prints nails, nails tabs on unsaturated substrates and in particular quotes something, this is a 342, so page six of the reply brief, but A, the appendix 342,

[00:30:21] Speaker 01:
quoting Lasseter in referring not to roofing materials, but siding materials used for wrapping the side of a framed house or other structure before securing the finished siding.

[00:30:32] Speaker 03:
What they're arguing there is, well, I see the stud wall.

[00:30:42] Speaker 03:
Of course, the stud wall is just the wood frame of the house.

[00:30:45] Speaker 01:
But this wrapping, I mean, this is what we all see when we drive around before the siding is put on this.

[00:30:51] Speaker 01:
Tyvek material.

[00:30:52] Speaker 01:
I imagine there are other brands, but I'm not sure I've ever seen one.

[00:30:56] Speaker 03:
Well, this is the background facts.

[00:31:03] Speaker 03:
There's two points they complain about, about what the board did wrong, and neither of those is that they misconstrued building or roofing cover materials.

[00:31:12] Speaker 02:
Well, this held me that they didn't make this argument before the board that asphalt saturation wasn't required.

[00:31:18] Speaker 02:
And Judge Toronto has just shown you that they did make that, right?

[00:31:22] Speaker 02:
No, that does not complain.

[00:31:23] Speaker 02:
They don't make any complaint about that.

[00:31:25] Speaker 02:
What are they complaining about?

[00:31:26] Speaker 02:
They say that they are saying explicitly here that asphalt saturation is not part of the claim.

[00:31:36] Speaker 03:
They say that Lasseter also prints on unsaturated substrates.

[00:31:39] Speaker 03:
We don't dispute that.

[00:31:40] Speaker 03:
We don't dispute that.

[00:31:43] Speaker 03:
But nobody disputed the board's conclusion about what these materials were.

[00:31:48] Speaker 03:
when the board wrote a 57-page opinion.

[00:31:51] Speaker 02:
Well, the question is how do I understand that statement that on page 33 where they say, we agree with the petitioner that asphalt's not required.

[00:32:01] Speaker 02:
And then you said, oh no, the petitioner only argued that asphalt wasn't required at the initial step.

[00:32:08] Speaker 02:
But that's not true.

[00:32:09] Speaker 02:
Your representation of what they argued is not correct.

[00:32:14] Speaker 03:
They did not.

[00:32:16] Speaker 03:
I stand by my argument they did not argue to the board that roofing and building cover materials needed to be construed to include styrofoam board.

[00:32:29] Speaker 03:
It is a fact that both Lassiter and I are, and I believe mention things that would not require asphalt, but the

[00:32:39] Speaker 03:
Fight on the dispute before the board was whether the asphalt had to be put on, the nail taps had to be put on before or after.

[00:32:47] Speaker 02:
That was a fight before the board, but they also argued that asphalt wasn't a requirement, period.

[00:32:54] Speaker 01:
Do you happen to recall in the, I guess what they call the oral hearing, even though it's just lawyers talking, the oral argument in front of the board panel?

[00:33:06] Speaker 01:
Was this a specific subject of discussion?

[00:33:09] Speaker 01:
And did Owen say something to the effect?

[00:33:15] Speaker 01:
It's not that I recall, but I can do it.

[00:33:17] Speaker 03:
It wouldn't take long to do a word search to find out.

[00:33:22] Speaker 00:
OK.

[00:33:23] Speaker 00:
OK.

[00:33:23] Speaker 00:
Any more questions?

[00:33:25] Speaker 00:
Any more questions?

[00:33:26] Speaker 00:
OK.

[00:33:27] Speaker 00:
Thank you.

[00:33:28] Speaker 00:
Mr. Trever?

[00:33:31] Speaker 04:
Thank you, Your Honor.

[00:33:33] Speaker 04:
Judge Gerrano, to pick up on your last point.

[00:33:36] Speaker 04:
In fact, it did come up at the board.

[00:33:37] Speaker 04:
And I prefer the court to, or maybe other places, but appendix page 416 and 417.

[00:33:44] Speaker 04:
This is during Owens Corning's presentation at the hearing.

[00:33:48] Speaker 04:
And if you start right at the top of that page,

[00:33:51] Speaker 04:
You can see that the argument was that this indication in multiple places that the roofing or building cover material does not have to be saturated substrate.

[00:34:00] Speaker 04:
And then it goes on to talk about building cover material in particular, talking about the, it doesn't use a brand name, but he's talking about Tyvek, the white paper that is a synthetic weed that's a house rat.

[00:34:12] Speaker 04:
And so he's making exactly this argument.

[00:34:14] Speaker 04:
It's the same argument.

[00:34:15] Speaker 01:
Can I just assume as a background fact, would everybody agree that

[00:34:21] Speaker 01:
the sidewall building wrap never gets asphalt saturated?

[00:34:25] Speaker 04:
We certainly agree.

[00:34:26] Speaker 04:
And it's clear in Lasseter also that the side wrap material is not asphalt saturated.

[00:34:33] Speaker 04:
In fact, the one claim, Lasseter has eight claims.

[00:34:35] Speaker 04:
Seven of them are to roofing material and require saturation.

[00:34:38] Speaker 04:
Claim eight is to building cover material and does not require saturation.

[00:34:42] Speaker 04:
So the record is very clear on this, I think.

[00:34:45] Speaker 04:
And so we did argue this before the board.

[00:34:47] Speaker 04:
We did not challenge the board's claim construction on appeal because we didn't understand the board's claim construction to require that all roofing and building cover materials eventually have to be saturated.

[00:34:59] Speaker 04:
The issue before the board was, what condition does this stuff have to be in when the TAB material is applied?

[00:35:06] Speaker 04:
Fastfelt argued it's got to be.

[00:35:08] Speaker 04:
And their experts were very clear on this.

[00:35:10] Speaker 04:
They said that there are unique problems

[00:35:13] Speaker 04:
in applying tab material to hot asphalt saturated substrate.

[00:35:17] Speaker 04:
That was the entire basis for both of their opinions.

[00:35:20] Speaker 04:
And that is the record support on which the board relied in its decision.

[00:35:25] Speaker 04:
And so that was the focus of the dispute about what roofing or building covered materials means.

[00:35:32] Speaker 04:
And the board resolved precisely the dispute the parties had presented, which is, what condition does this have to be in at the time the nail tabs are applied?

[00:35:43] Speaker 02:
I think you're confusing things by mixing up two separate points.

[00:35:48] Speaker 02:
There's the question of before and after.

[00:35:51] Speaker 02:
And if we look at the board's decision, it may be very difficult to say that they were wrong in saying that Lassiter taught away from both before and after.

[00:36:03] Speaker 02:
But there's the separate question whether siding materials and things like that

[00:36:10] Speaker 02:
which are covered by the claim have to be asphalt-coated at all, at any time.

[00:36:16] Speaker 02:
And insofar as the board said, we're limiting the claims to asphalt-coated, or said that the lasso caught away from asphalt-coated, it's not directing itself to the central question of whether the claims are broader than asphalt-coated.

[00:36:35] Speaker 04:
That's exactly right, Your Honor.

[00:36:38] Speaker 04:
Smooshing two things together, I apologize.

[00:36:40] Speaker 04:
But that's exactly right.

[00:36:42] Speaker 04:
The board did not consider the prior art in light of the full scope of these claims.

[00:36:48] Speaker 04:
That's the fundamental problem.

[00:36:49] Speaker 04:
The other problem is that the board did, in fact, point to the fact that there was no statement in last year saying there's some problem that needs to be improved, which is inconsistent with KSR and this court's precedent.

[00:37:01] Speaker 04:
See them out of time, so if the court has no further questions.

[00:37:05] Speaker 04:
Any more questions?

[00:37:06] Speaker 04:
Thank you.

[00:37:06] Speaker 00:
Thank you, thank you both.

[00:37:08] Speaker 00:
The case is taken under submission.