On October 11, 2017, the Federal Circuit issued a decision, which addressed issues related to obviousness.  See Corning v. Fast Felt Corp., No. 2016-2613, 2017 WL 4532001 (Fed. Cir. Oct. 11, 2017).

Fast Felt owns U.S. Patent No. 8,137,757, “which describes and claims methods for printing nail tabs or reinforcement strips on roofing or building cover material”. Id. at *1. After being sued by Fast Felt, Corning petitioned for an inter partes review (IPR) of Fast Felt’s patent. Id.  The Patent Trial and Appeal Board (PTAB) instituted the IPR on the grounds that challenged claims were obvious. Id.  The PTAB concluded that none of the challenged claims were obvious.  Id.  Corning appealed to the Federal Circuit, and the Federal Circuit reversed the PTAB’s decision, finding that the challenged claims were obvious.  Id.

First, the Court determined that the PTAB erred in its claim construction under the broadest reasonable interpretation. The challenged claims include the term “roofing or building cover material.”  Id. at *2. The Court stated that it would not be “reasonable to read the claims as limited to materials that either have been or are to be coated or saturated with asphalt or asphalt mix” because the claims are plainly not limited as such. Id. at *3-4.

Second, the Court analyzed the issue of obviousness under an appropriate claim construction. The Court stated that there was no dispute that “the prior-art combinations at issue disclose all of the elements of the claims”. Id. at *4.  The Court analyzed “whether a relevant skilled artisan would have been led to make the combinations with a reasonable expectation of success.” Id. Because the claim construction of the term “roofing or building cover material” is not limited “to materials that either have been or are to be coated or saturated with asphalt or asphalt mix”, the Court held that Fast Felt failed to prevent substantial evidence that “a skilled artisan would [not have been] motivated to combine the prior-art references to print nail tabs on building cover materials that are not (already or to be) asphalt coated or saturated”. Id. at *5. Therefore, the Court determined that challenged claims of Fast Felt were invalid as being obvious.

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