October 22, 2019

October 21, 2019

Subscribe to Latest Legal News and Analysis

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 everyembodiment 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.


©1994-2019 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.


About this Author

Adam Samansky, Mintz Levin Law Firm, Boston, Patent Litigation Attorney

Adam’s practice focuses on intellectual property litigation. He handles patent, trademark, and trade secret matters on behalf of innovators and investors in a range of industries. His core practice includes patent and trade secret litigation involving complex technologies in the pharmaceutical, medical, high-tech, and defense industries. Adam has tried cases before multiple US District Courts, briefed and argued cases before the US Court of Appeals for the Federal Circuit, and has briefed bet-the-company issues before the US Supreme Court.

Peter J. Cuomo, Mintz Levin, Patent Litigation Lawyer, Expert Discovery Attorney,Patent Litigation IPRs & Other Post-Grant Proceedings Federal Circuit Appeals Hatch-Waxman ,ANDA Litigation Federal District Court
Of Counsel

Peter’s practice involves intellectual property enforcement and defense, and client counseling on issues related to IP rights. Peter's primary focus is in patent litigation where he has experience in every phase from pre-suit investigations through appeal, including, initial evaluation and case initiation, fact and expert discovery, pre-and post-trial motion practice, and trials and appeals. In addition to suits centered on the assertion and defense of infringement claims, Peter has experience with the successful resolution of multiple inventorship disputes and related misappropriation claims.

Peter has represented clients across a wide range of technologies such as biotechnology inventions, automotive parts, medical and mechanical devices, consumer products. He has also worked on numerous high-stakes Hatch-Waxman litigations for major pharmaceutical companies through trial and appeals. In addition to patent litigation, Peter has experience in disputes involving breach of contracts, unfair competition, trademarks and trade secret misappropriation claims.

Peter is a registered patent attorney licensed to practice and argue before the United States Patent and Trademark Office. In addition to representing clients in US District Courts and the US Court of Appeals for the Federal Circuit, he has experience in multiple post-grant proceedings before the Patent Trial and Appeal Board and its predecessor. He also provides patent and product analyses, and evaluations of prior art related to infringement and invalidity opinions.

Prior to joining the firm, he practiced in the intellectual property litigation practice in the Boston office of another international law firm. Peter also previously worked in and supervised an academic laboratory focused on researching infectious diseases. He is a co-author on multiple scientific papers and spent time in Zambia investigating the co-infection of measles and HIV. During law school, Peter was an editor on the Boston University Journal of Science and Technology Law and worked as a research assistant in intellectual property and the Health Law Department.

Joseph D. Rutkowski, Mintz Levin, Civil Litigation Matters Lawyer, Intellectual Property Litigation Matters

Joseph’s practice focuses on a variety of civil litigation matters, including patent litigation, trade secret disputes, and complex commercial litigation. Joseph’s primary focus is intellectual property litigation, and he is experienced in many aspects, including expert discovery and pretrial motion practice.

In addition, Joseph gained valuable experience representing a homeless shelter, pro bono, as lead attorney in over a dozen housing court matters, including summary process jury trial and mediations, and he supervised junior associates on...