Huber Engineered Woods LLC

Patent Trials and Appeals Board

Aug 20, 2020

IPR2020-00596 (P.T.A.B. Aug. 20, 2020)

Trials@uspto.gov Paper 12
571.272.7822 Date: August 20, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LOUISIANA-PACIFIC CORPORATION,
Petitioner,

v.

HUBER ENGINEERED WOODS LLC,
Patent Owner.
____________

IPR2020-00596
Patent 8,474,197 B2
____________

Before JENNIFER MEYER CHAGNON, MICHAEL L. WOODS, and
FREDERICK C. LANEY, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314, 37 C.F.R. § 42.4

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I. INTRODUCTION
Louisiana-Pacific Corporation (“Petitioner”) filed a Petition (Paper 1,
“Pet.”) requesting inter partes review of claims 1–20 of U.S. Patent No.
8,474,197 B2 (“the ’197 patent”). Pet. 4. Huber Engineered Woods LLC
(“Patent Owner”) filed a Preliminary Response (Paper 10, “Prelim. Resp.”)
to the Petition, contending that the Petition should be denied as to all
challenged claims. Prelim. Resp. 1.
We have authority to determine whether to institute an inter partes
review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019).
Section 314(a) of Title 35 of the United States Code provides that an inter
partes review may not be instituted “unless . . . the information presented in
the petition . . . shows that there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.” Upon consideration of the evidence and arguments in the Petition
(including its supporting testimonial evidence) as well as the evidence and
arguments in the Preliminary Response, for the reasons below, we do not
institute an inter partes review of any challenged claim.1

A. Related Proceedings
The parties represent that the ’197 patent is at issue in Huber
Engineered Woods LLC v. Louisiana-Pacific Corp., USDC, District of

1 Because we deny institution upon consideration of the merits of
Petitioner’s challenges (see infra Part II), Patent Owner’s argument that we
should exercise our discretion under 35 U.S.C. § 314(a) to deny institution
under the factors set forth in the recent precedential Order in Apple Inc. v.
Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)
(see Prelim. Resp. 18–19) is moot and we do not address it in this Decision.
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Delaware, No. 1:19-cv-00342-LPS, filed February 18, 2019. Pet. 5; Paper 4,
2. We also identify proceedings in IPR2019-00919, IPR2020-00600,
IPR2020-00601, IPR2020-00604, IPR2020-00605, IPR2020-00606,
IPR2020-00607, and IPR2020-00609 as challenging related patents. Each of
these related patents claims priority to U.S. Provisional Application No.
60/547,031, filed on February 23, 2004. See, e.g., Ex. 1001, code (60). Of
these related proceedings, however, only IPR2019-00919 has been
instituted; it involves Petitioner’s challenge to Patent Owner’s patent number
9,546,479 B2. See IPR2019-00919, Paper 9.

B. The ’197 Patent (Ex. 1001)
The ’197 patent, titled “Panel for Sheathing System and Method,”
describes a sheathing panel including a “water resistant barrier layer secured
atop its outward facing surface.” Ex. 1001, codes (54), (57).
To illustrate the ’197 patent’s panel and sheathing system, we first
reproduce its Figure 1, below:
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Figure 1 depicts a “panelized roofing system utilizing the panel of the
present invention.” Ex. 1001, 3:19–20. In particular, Figure 1 depicts
panelized roof sheathing construction system 10 with panels 20 attached to a
building frame structure in abutting relationship. Id. at 4:49–52. The system
preferably includes water-resistant sealing means 40 sealing joints 25
between adjacent panels 20. Id. at 4:61–64.
Although Figure 1 depicts a panelized roofing system, the ’197 patent
describes, specifically, the panels for use in roof or wall construction. See,
e.g., id. at 4:41–45.
We also reproduce Figure 2 of the ’197 patent, below:
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Figure 2 depicts an embodiment of the panel. Ex. 1001, 3:21–22.
Specifically, Figure 2 illustrates panel 20, which is preferably made of an
oriented strand board substrate (“OSB”) having two surfaces 22, 24 with
core layer 26 disposed between the layers. Id. at 4:67–5:3. Barrier layer 30
is secured to the outward facing surface of panel 20. See id. at 6:10–13
(referencing similar Figure 3). The ’197 patent describes that barrier layer
30 is resistant to bulk water but permeable to water vapor. Id. at 6:42–43.
We next reproduce the ’197 patent’s Figure 9A, below:
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Figure 9A depicts a cross-sectional view of two adjacent panels according to
an embodiment of the invention. Ex. 1001, 3:44–46. In particular, Figure
9A depicts an embodiment of two panels 120 secured with tongue-and-
groove joint 129 (id. at 16:4–7) and with a strip of water-resistant pressure-
sensitive seam sealant 140, which is preferably a tape (id. at 16:64–17:4).

C. Illustrative Claims
Claims 1, 12, and 20 are independent. Ex. 1001, 22:48–23:24.
Independent claims 1 and 12 are representative of the subject matter at issue
and are reproduced below, with emphases added to certain limitations
addressed in this decision.
1. A panel system to externally envelope a structure, the
system comprising:
at least two adjacent lignocellulosic panels, each panel
including an outer surface, an inner surface, and at least one edge
extending therebetween, each panel aligned with its at least one
edge proximate to the at least one edge of the adjacent panel and
defining a longitudinal joint between the two adjacent panels;
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a barrier layer secured to the outer surface or the inner
surface of each panel, the barrier layer being substantially bulk
water resistant and substantially water vapor permeable; and
a bulk water resistant edge sealant sealing the joint between
the proximate edges of the two adjacent panels.

12. A method of externally sheathing a building structure,
the method comprising:
obtaining at least two panel assemblies, each panel
assembly including
a lignocellulosic panel including
an outer surface;
an inner surface;
and at least one edge; and
a barrier layer secured to the outer surface of each
panel, the barrier layer being substantially bulk water
resistant and substantially water vapor permeable;
positioning the panel assemblies adjacent to each other
such that the respective edges are proximate to each other and
define a longitudinal joint therebetween and such that the
respective inner surfaces contact the structure;
fastening each panel assembly to the structure; and
sealing the joint between the edges of the panel.
Id. at 21:49–62, 22:25–42 (emphases and indentations added).
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D. References Relied Upon
Petitioner’s challenges rely on the following references (Pet. 8–16):
Name Reference Ex. No.
APA APA Engineered Wood Handbook 1005
Alaska Building in Alaska: Permeability of Common
Building Material to Water Vapor
1008
StoGuard-
2001
Press Release titled, “Sto Corp. Launches Sto
Guard Housewrap Alternative”
1014
StoGuard-
2003
Press Release titled, “Sto Guard a seamless,
fluid-applied air and moisture barrier, provides
superior protection under most claddings. It
does what other wraps only pretend to do”
1015
ASTM
D5795
Standard Test Method for Determination of
Liquid Water Absorption of Coated Hardboard
And Other Composite Wood Products Via
‘Cobb Ring’ Apparatus
1006
ASTM
Report
Interlaboratory Study to Establish Precision
Statements for ASTM D5795, Test Method for
Determination of Liquid Water Permeability of
Applied Coatings on Hardboard and Other
Composite Wood Products Via ‘Cobb Ring’
Apparatus
1007
ASTM
E96
Standard Test Methods for Water Vapor
Transmission of Materials
1016
Van
Wagoner
US Pat. No. 4,719,723, issued Jan. 19, 1988 1018
Hsu US Pat. No. 5,616,419, issued Apr. 1, 1997 1026
Ou US Pat. No. 6,737,155 B1, issued May 18, 2004 1020
Lionel US Pat. No. 6,901,712 B2, issued June 7, 2005 1019
Arnold Installing Housewrap 1022
Grace Wall-Sheathing Seam Tape 1023
DuPont Press Release titled, “Tyvek Tape” 1009
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Name Reference Ex. No.
Forbes GB2364338, published Jan. 23, 2002 1038
Kenji JP2001-020415, published Jan. 23, 2001 1039 &
1040
(English
translation)
Flack US Pat. No. 4,828,635, issued May 9, 1989 1041
Maietta US Pat. No. 5,732,520, issued Mar. 31, 1998 1042
Hedquist CA 1,181,565, issued Jan. 29, 1985 1043
Hoffman US Pat. No. 5,147,486, issued Sept. 15, 1992 1044
PS1-95 Construction and Industrial Plywood; Voluntary
Product Standard PS1-95
1045
Robell US Pat. No. 6,115,926, issued Sept. 12, 2000 1046
Elliott US Pat. No. 3,284,967, issued Nov. 15, 1966 1050
Day US Pat. No. 5,632,095, issued May 27, 1997 1051
Byrd US Pat. Pub. No. 2004/0226247, published Nov.
18, 2004
1052
Peng US Pat. No. 7,159,368 B2, issued Jan. 9, 2007 1054
Kligler US Pat. No. 6,584,742 B1, issued July 1, 2003 1055
Martz US Pat. No. 5,061,258, issued Oct. 29, 1991 1056
English US Pat. No. 5,259,236, issued Nov. 9, 1993 1057
DiPede US Pat. No. 6,925,766 B2, issued Aug. 9, 2005 1058
APA
Glossary
APA Panel Handbook & Grade Glossary,
published April 1997
1047

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E. Alleged Grounds of Unpatentability
Petitioner contends that claims 1–20 of the ’197 patent are
unpatentable under the following grounds:
Claims
Challenged 
35 U.S.C.
§2 
Basis3
1–20 103(a) APA in view of StoGuard-2001 and StoGuard-
2003, in further view of Peng, Flack, ASTM
D5795, ASTM Report, Alaska, ASTM E96, Hsu,
Van Wagoner, Elliott, Hedquist, Day, Robell,
Lionel, Arnold, Grace, DuPont, Glossary, Forbes,
Martz, DiPede, Kligler, Byrd, Maietta, English,
PS1-95, and Hoffman
1–20 103(a) Forbes in view of Peng and Flack, in further view
of ASTM D5795, ASTM Report, Alaska, ASTM
E96, APA, Hsu, Van Wagoner, Hedquist, Day,
Lionel, Elliott, Arnold, Grace, DuPont, Glossary,
Martz, DiPede, Kligler, Byrd, Maietta, English,
PS1-95, and Hoffman
1–20  103(a)  Kenji in view of Peng and Flack, in further view
of ASTM D5795, ASTM Report, Alaska, ASTM
E96, APA, Hsu, Van Wagoner, Hedquist, Day,
Lionel, Elliott, Arnold, Grace, DuPont, Glossary,
Forbes, Martz, DiPede, Kligler, Byrd, Maietta,
English, PS1-95, and Hoffman

2 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
2013. Because the effective filing date of the ’197 patent is before that date,
our citations to Title 35 are to its pre-AIA version. See Ex. 1001, codes (22),
(60), (63).
3 We reproduce the summary of asserted grounds as set forth by Petitioner.
See Pet. 17. Several of the references cited are applied only to certain
dependent claims. The specific combinations of art applied to each claim is
set forth on pages 25–75 of the Petition.
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Petitioner also relies on the declaration testimony of Dr. Peter E. Laks
(Ex. 1002) in support of its Petition. See, e.g., Pet. 27 (referencing
Ex. 1002).

II. ANALYSIS
A. Claim Construction
In an inter partes review proceeding for a petition filed on or after
November 13, 2018, a patent claim shall be construed using the same claim
construction standard that would be used to construe the claim in a civil
action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). This rule adopts
the same claim construction standard used by Article III federal courts,
which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
(en banc), and its progeny. Under the Phillips standard, the words of a claim
are generally given their “ordinary and customary meaning,” which is the
meaning the term would have to a person of ordinary skill at the time of the
invention, in the context of the entire patent including the specification. See
Phillips, 415 F.3d at 1312–13. “If a petitioner believes that a claim term
requires an express construction, the petitioner must include a statement
identifying a proposed construction of the particular term and where the
intrinsic and/or extrinsic evidence supports that meaning.” Consolidated
Trial Practice Guide 44 (Nov. 2019).4
Petitioner submits that the ordinary and customary meaning applies to
the claimed terms and does not propose construction of any particular claim
term. See Pet. 24. Patent Owner, on the other hand, proposes that the terms
“a barrier layer secured to the outer surface or inner surface of each panel”

4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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(claims 1, 20) and “a barrier layer secured to the outer surface of each panel”
(claim 12) require construction. Prelim. Resp. 14.
For purposes of this decision, we discern no need to construe any
claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe
terms ‘that are in controversy, and only to the extent necessary to resolve the
controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999)).

B. Principles of Law
“In an . . . [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016). This burden never shifts to Patent Owner. Dynamic Drinkware,
LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
Petitioner’s challenges are based on obviousness. Pet. 17.
A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) where in evidence, so-called
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secondary considerations. Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17–18 (1966).

C. Level of Ordinary Skill in the Art
In determining whether an invention would have been obvious at the
time it was made, we consider the level of ordinary skill in the pertinent art
at the time of the invention. Graham, 383 U.S. at 17.
Factors pertinent to a determination of the level of ordinary skill in the
art include: (1) educational level of the inventor; (2) type of problems
encountered in the art; (3) prior art solutions to those problems; (4) rapidity
with which innovations are made; (5) sophistication of the technology; and
(6) educational level of workers active in the field. Envtl. Designs, Ltd. v.
Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic
Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed.
Cir. 1983)). Not all such factors may be present in every case, and one or
more of these or other factors may predominate in a particular case. Id.
Moreover, these factors are not exhaustive but are merely a guide to
determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd,
Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
In determining a level of ordinary skill, we also may look to the prior
art, which may reflect an appropriate skill level. Okajima v. Bourdeau,
261 F.3d 1350, 1355 (Fed. Cir. 2001).
Additionally, the Supreme Court informs us that “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR, 550 U.S. at 421.
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The parties propose to adopt the same definition that we applied in
co-pending IPR2019-00919. See Pet. 23–24; see also Prelim. Resp. 13.
Based on our review of the ’197 patent, the types of problems and solutions
described in the ’197 patent and applied prior art, for purposes of this
decision, we agree with the parties and determine that a person having
ordinary skill in the art would have had degree in civil engineering or
building, material or wood science, or other degree, if such other degree
required coursework or experience in the pertinent technology and two years
of industry experience or equivalent therein. See IPR2019-00919, Paper 9,
14.

D. Prior Art Status
The issue is whether the Petition identifies evidence sufficient to
establish that APA (Ex. 1005), StoGuard-2001 (Ex. 1014), and
StoGuard-2003 (Ex. 1015) qualify as printed publications for purposes of
this review.
As the Board held in a precedential decision, “at the institution stage,
the petition must identify, with particularity, evidence sufficient to establish
a reasonable likelihood that the reference was publicly accessible before the
critical date of the challenged patent and therefore that there is a reasonable
likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound
View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20,
2019) (precedential) (“Hulu”).5

5 The Decision to Institute in IPR2019-00919, in which many of the
references cited in the present case also were at issue, was entered before the
Board’s precedential decision in Hulu. Compare IPR2019-00919, Paper 9
(dated Oct. 8, 2019), with Hulu, Paper 29 (dated Dec. 20, 2019). Here, we
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Patent Owner argues that Petitioner failed to satisfy its burden of
proving that the cited art qualify as prior art printed publications, specifically
identifying “APA (EX1005)” and “the Sto Corp. documents (EX1014-
1015).” See Prelim. Resp. 19–20 (citing in-part the Board’s precedential
decision in Hulu, Paper 29).
As to APA (Ex. 1005), we note that it was published by McGraw-Hill,
a well-known publisher, and bears a copyright date of 2002. Ex. 1005, 3.
Additionally, APA contains Library of Congress catalog publication data,
including ISBN information. Id. As such, and for purposes of this Decision,
we find that Petitioner has identified evidence sufficient to establish a
reasonable likelihood that APA was publicly accessible before February 23,
2004, which is the earliest possible critical date of the ’197 patent,6 and
therefore qualifies as a printed publication. See Hulu, Paper 29 at 19–20
(determining that evidence of a textbook’s copyright date, printing date,
ISBN number, and publication by an established publisher was sufficient to
meet the reasonable likelihood standard for institution); see also Coriant
(USA) Inc. v. Oyster Optics, LLC, IPR2018-00258, Paper 13 at 11 (PTAB
June 6, 2018) (“For established publishers, demonstrating a date of
publication is alone sufficient for showing accessibility to the public.”).
Turning to StoGuard-2001 (Ex. 1014), this document appears to be a
website screenshot of a press release dated October 15, 2001. Ex. 1014, 1;

assess the sufficiency of Petitioner’s evidence as to whether APA, StoGuard-
2001, and StoGuard-2003 qualify as printed publications in view of the
guidance provided in Hulu. We note that the Petition was filed on
February 18, 2020, such that Petitioner also had the benefit of the guidance
provided in Hulu when filing its Petition.
6 See Ex. 1001, code (60) (identifying earliest application as a provisional
filed on February 23, 2004).
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see also Pet. 9 (identifying a publication date of 2001). The document also
bears a copyright date of 2003. Ex. 1014, 1.
As to StoGuard-2003 (Ex. 1015), this document also appears to be
website screenshot of a press release and bears a publication date of
March 1, 2003. Ex. 1015, 1; see also Pet. 9 (identifying a publication date
of 2003). StoGuard-2003 also bears a copyright date of “1998-2009.”
Ex. 1015, 2.
We find that Petitioner has failed to meet its burden, as set forth in
Hulu, of establishing a reasonable likelihood that StoGuard-2001 and
StoGuard-2003 qualify as prior art printed publications. The Board’s
precedential decision requires that “the petition must identify, with
particularity, evidence sufficient to establish a reasonable likelihood that the
reference was publicly accessible before the critical date of the challenged
patent.” Hulu, Paper 29 at 13. The Petition submits that StoGuard-2001 and
StoGuard-2003 have publication dates of 2001 and 2003, respectively
(Pet. 9), however the totality of the evidence here is insufficient to establish
a reasonable likelihood of showing public accessibility. As to StoGuard-
2001, the Petition does not reconcile the 2001 publication date with the
seemingly inconsistent 2003 copyright date. See id. Nor does the Petition
reconcile StoGuard-2003’s 2003 publication date with the ambiguous
“1998-2009” copyright date. See id. Additionally, the Petition does not
submit any testimony to support a finding that either of these documents is a
prior art printed publication. See id. Although Dr. Laks testifies that these
documents were not considered during examination, his testimony fails to
address the public accessibility of these documents. See Ex. 1002 ¶¶ 49, 50.
Furthermore, nothing in the record indicates that these screenshots were
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obtained from websites contemporaneously archived at the alleged time of
publication, for example, by the Wayback Machine,7 which the Federal
Circuit and the Board have relied on to validate websites as a source of prior
art in proceedings. See, e.g., In Re Bhagat, 726 F. App’x 772, 775 (Fed. Cir.
2018) (non-precedential); see also, e.g., BMW of N. Am. LLC v. Stragent,
LLC, IPR2017-00677, Paper 32 at 45–46 (PTAB June 13, 2018) (Final
Written Decision).
For the foregoing reasons, Petitioner has failed to identify with
particularity evidence sufficient to establish a reasonable likelihood that
either StoGuard-2001 (Ex. 1014) or StoGuard-2003 (Ex. 1015) was publicly
accessible before the critical date of the ’197 patent.

E. Ground 1 – Unpatentable over APA and Other Cited Art
Petitioner contends that independent claims 1, 12, and 20 are
unpatentable over APA in view of StoGuard-2001, StoGuard-2003, Peng,
Flack, Van Wagoner, and Elliott.8 See Pet. 25–32, 41–44, 48–50 (addressing
independent claims). Petitioner further contends that dependent claims 2–11
and 13–19 are unpatentable over APA in view of various combinations of
references. See id. at 32–41, 45–48 (addressing dependent claims).
Petitioner submits a claim chart in support of these grounds. See id. at 25–
50.

7 The Wayback Machine is a service provided by the Internet Archive that
permits searches of its digital library of archived Internet websites. See
http://web.archive.org (last visited June 17, 2020).
8 Petitioner additionally relies on Lionel, Ou, Hoffman, and PS1-95 in its
challenge to claim 20. Pet. 19.
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1. APA (Ex. 1005)9
APA is a published handbook titled “APA Engineered Wood
Handbook,” published by McGraw-Hill Companies, Inc., in 2002. Ex. 1005,
1, 3. APA has twelve chapters (id. at 4–6), including Chapter 2 (Wood
Structural Panels), Chapter 4 (Structural Glued Laminated Timber
(Glulam)), Chapter 9 (Treatments and Finishes for Wood), and Chapter 12
(Designing and Detailing for Permanence).

2. StoGuard-2001 (Ex. 1014)
StoGuard-2001 (Ex. 1014) appears to be a screenshot of a press
release titled, “STO CORP. LAUNCHES STO GUARD HOUSEWRAP
ALTERNATIVE,” dated February 10, 2001, with a copyright date of 2003.
Ex. 1014, 1. For purposes of this Decision, Petitioner has failed to establish
that StoGuard-2001 is a prior art printed publication. Supra Part II.D.

3. StoGuard-2003 (Ex. 1015)
StoGuard-2003 (Ex. 1015) appears to be a screenshot of a press
release titled, “Sto GuardTM, a seamless, fluid-applied air and moisture
barrier, provides superior protection under most claddings. It does what
other wraps only pretend to do.” Ex. 1015, 1. StoGuard-2003 is dated 2003,
with a copyright date of 1998–2009. Id. As with StoGuard-2001, for
purposes of this Decision, Petitioner has failed to establish that StoGuard-
2003 is a prior art printed publication. Supra Part II.D.

9 Our citations to APA are to the exhibit’s page numbers rather than the
handbook’s native page numbers.
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4. Van Wagoner (Ex. 1018)
Van Wagoner is a U.S. Patent titled “Thermally Efficient, Protected
Membrane Roofing System” and discloses a system for insulating the
interior of a building. Ex. 1018, codes (54), (57).

5. Flack (Ex. 1041)
Flack is a U.S. Patent titled “Laminated, Thermal Insulation Panel”
and discloses a panel with “a board made of expanded, molded polystyrene,
and a membrane laminated on one side of the polystyrene board by means of
an adhesive.” Ex. 1041, codes (54), (57).

6. Peng (Ex. 1054)
Peng is a U.S. Patent titled “Panelized Wall System Utilizing Joint
Tape” and discloses an elastomeric joint tape applied to the seam between
building panels in which the walls are then finished with an elastomeric
finish. Ex. 1054, codes (54), (57).

7. Petitioner’s Challenge
In challenging independent claim 1, Petitioner cites to APA’s figures
2.6 and 2.7 to satisfy the claimed “at least two adjacent lignocellulosic
panels . . . defining a longitudinal joint between the two panels.”10 See

10 Petitioner’s only citation to Elliott is regarding this limitation, contending
that “Elliott likewise discloses lignocellulosic material.” See Pet. 27; see
also id. at 51 (“Elliott specifically discloses that wood in various forms (such
as lumber, plywood, and particle board) is ligno-cellulose material.”). We
need not further discuss Elliott for purposes of this Decision.
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Pet. 25–26 (reproducing APA’s Figures 2.6, 2.7). We reproduce APA’s
Figure 2.7, below:

Ex. 1005, 29. Figure 2.7 depicts sheathing with 1/8” recommended spacing
“at all edge and end joints unless otherwise indicated by panel
manufacturer.” Id.
To address the claimed “barrier layer secured to the outer surface of
each panel,” Petitioner presents three alternative positions.
First, Petitioner submits that APA discloses the claimed barrier, citing
to APA’s disclosure of water-resistive barriers, including Kraft building
paper. See Pet. 27–29 (citations omitted). In particular, Petitioner cites to
APA’s Figure 12.27 and 12.28 and asserts that these figures “show general
installation techniques.” Id. at 28 (citing Ex. 1005, 121). We reproduce
APA’s Figure 12.27, below:
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Ex. 1005, 121. Figure 12.27 depicts two rolls of barrier being wrapped
around a building structure. See id.
Second, Petitioner asserts that “the StoGuard references [Exs. 1014,
1015] teach a liquid-applied water-resistant coating for panels that is bulk
water resistant and water vapor permeable, that can serve as the APA’s
water-resistant barrier or substitute.” Pet. 29; see also id. at 29–31 (citing
Exs. 1014, 1015).
Third, Petitioner asserts that Flack discloses a water-vapor permeable
membrane. Pet. 31 (citations omitted).
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To address the claimed “bulk water resistant edge sealant sealing the
joint between the proximate edges of the two adjacent panels,” Petitioner
again cites to APA’s Figures 12.27 and 12.28 as “show[ing] ‘seam tape’ and
taping joints with air-barrier tape.” Id. (citing Ex. 1005, 120–22).
In combining APA with the “StoGuard references” (Exs. 1014, 1015),
Petitioner reasons that a skilled artisan would have used the “StoGuard
waterproof coating and joint filler, as a form of or substitute for the water-
resistive barrier and joint sealants of APA (or the joint sealant of Peng),
motivated to improve resistance to water infiltration with cost-effective and
functionally effective alternative to housewraps.” Pet. 52.

8. Patent Owner’s Response
Patent Owner argues that the combination fails to teach the claimed
sealant for sealing the joint between adjacent panels. See Prelim. Resp. 27–
28.
We agree.

9. Analysis
Independent claim 1 recites, “a bulk water resistant edge sealant
sealing the joint between the proximate edges of the two adjacent panels.”
Ex. 1001, 21:61–62. Independent claims 12 and 20 recite similar
limitations. See id. at 22:42 (claim 12), 23:23–24 (claim 20). Petitioner
presents multiple positions under Ground 1 to satisfy this claimed limitation
(see Pet. 51–53), none of which we find persuasive. We address each of
these positions separately, below:

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a) APA Discloses Joint Sealant
First, Petitioner submits that APA discloses the claimed joint sealant.
See Pet. 31 (“APA discloses elastomer sealants and tape for joints.”).
We disagree.
Petitioner cites to several different disclosures within APA, but none
of them discloses sealing the joint between the proximate edges of two
adjacent panels, as required by the claims. See id. at 31–32.
First, Petitioner cites to APA’s disclosure of caulk. Id. at 31 (citing
Ex. 1005, 112–13, Figs. 12.48, 12.49, 12.16). The cited disclosure of APA’s
caulk, however, describes:
Caulking. Elastomeric exterior sealants called caulks are
a popular component of the waterproofing system used in
modern structures. They are used to seal up the cracks between
individual elements of the buildings [sic] exterior finish to keep
wind and water from penetrating the skin of the structure. In this
respect, the caulking provides a part of the walls’ first line of
defense against water intrusion. The waterproofing performance
of modern structures often depends on many hundreds of feet of
caulked joints.
Ex. 1005, 112–14.
APA discloses that this caulk is used as an exterior sealant applied to
the exterior finish of a building, in order to serve as the “first line of
defense” against water intrusion. See id. APA does not disclose that these
caulks are applied to seal the joints between adjacent panels of its sheathing
panels. Claim 1 requires a “bulk water resistant edge sealant sealing the
joint between the proximate edges of the two adjacent panels” (Ex. 1001,
21:61–62) and Petitioner’s general citation to APA’s caulk for sealing the
cracks on a building’s exterior finish falls short of addressing the claimed
limitation.
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Second, Petitioner cites to APA’s Figure 12.16 (Pet. 31), which we
reproduce, below:

Ex. 1005, 111. Figure 12.16 depicts sill flashing at a sliding glass
door and illustrates caulk or sealant between the frame and flashing.
Id. Petitioner does not fully explain its position beyond a citation to
the figure, and we do not find anything in this figure that depicts caulk
used as a sealant between the joint created by two adjacent sheathing
panels.
Third, Petitioner cites to APA’s Figures 12.27 and 12.28, asserting
that these figures depict tape for sealing the claimed joints. Pet. 31 (“Figs
12.27 and 12.28 show ‘seam tape’ and taping joints with air-barrier tape.”).
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Regarding Figure 12.27 (reproduced above), the tape that Petitioner
relies on is used for sealing the area where different layers of housewrap
overlap, not for sealing the joints created by adjacent sheathing panels. See
Ex. 1005, Fig. 12.27 (depicting tape used to seal an upper roll of house
overwrap to a lower roll of house overwrap).
As to Figure 12.28, we reproduce that figure, below:

Ex. 1005, 122. Figure 12.28 depicts “Air barrier installation details using
header wrap.” Id. As can be seen in the above figure, APA’s seam tape is
used to seal the seams of the header wrap. Petitioner does not fully explain
its position beyond a citation to the figure, and we find nothing in this figure
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that depicts the joint formed between two adjacent sheathing panels as being
sealed by the tape.
Based on the record before us, Petitioner has not established that APA
discloses a sealant for sealing the joint between the proximate edges of two
adjacent panels, as required by the claims.

b) Obvious to use StoGuard’s Coating and Joint Filler
Petitioner also reasons that a skilled artisan would have used “the
StoGuard waterproof coating and joint filler, as a form of substitute for the
water-resistive barrier and joint sealants of APA . . . , motivated to improve
resistance to water infiltration with a cost-effective and functionally
effective alternative to housewraps.” Pet. 52.
As discussed above, however, Petitioner has failed to establish that
either StoGuard-2001 (Ex. 1014) or StoGuard-2003 (Ex. 1015) qualifies as a
prior art printed publication. Supra Part II.D. As such, we do not consider
this alternative challenge based on the StoGuard references.

c) Obvious to use Peng’s Caulk or Tape
Petitioner also submits that “Peng also teaches an elastomeric
joint/seam sealant (caulk or tape)” (Pet. 32 (citations omitted)) and reasons
that
It would have been obvious to use the StoGuard
waterproof coating and joint filler, as a form of or substitute for
the water-resistive barrier and joint sealants of APA (or the joint
sealant of Peng), motivated to improve resistance to water
infiltration with a cost-effective and functionally effective
alternative to housewraps.
Id. at 52 (emphasis added).
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As discussed above, however, we do not consider StoGuard’s
waterproof coating or joint filler in our analysis. See supra Part II.E.9.b.
Without the benefit of StoGuard-2001 or StoGuard-2003, we are not
persuaded that a skilled artisan would have replaced APA’s housewrap with
Peng’s caulk or tape to improve water resistance. APA’s housewrap covers
both the panels and the joints. See, e.g., Ex. 1005, Fig. 12.27. Assuming
arguendo that Peng teaches a joint sealant, as Petitioner asserts (Pet. 32), we
are not persuaded that a skilled artisan would have replaced APA’s
housewrap with Peng’s joint sealant to improve water resistance, as removal
of APA’s housewrap would leave APA’s panels exposed to water intrusion.
In other words, even if Peng’s joint sealant seals the joints between adjacent
panels, the sealant would not seal the panels themselves, and removing
APA’s housewrap would leave the panels exposed to water intrusion.
Based on the record before us, Petitioner has not established that APA
in view of Peng satisfies the claimed sealant for sealing the joint between the
proximate edges of two adjacent panels.

d) Obvious to use Flack’s Membrane and Van Wagoner’s Seam
Tape
Finally, Petitioner asserts that “Flack discloses a panel with a board
and a membrane laminated on one side of the board” and that “Van Wagoner
discloses sealing seams between panels with a waterproof but vapor
permeable tape.” Pet. 52 (citations omitted). Petitioner reasons that
It would have been obvious to use the Flack membrane and the
seam tape of Van Wagoner as a form of or substitute for the
water-resistive barrier and joint sealants of APA (or the joint
sealant of Peng), motivated to improve resistance to water
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infiltration with a cost-effective and functionally effective
alternative to housewraps.
Id.
We are not persuaded, as Petitioner’s reasoning that the combination
would “improve resistance to water resistance” is not supported by the
record. “In an . . . [inter partes review], the petitioner has the burden from
the onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3)
(requiring inter partes review petitions to identify “with particularity . . . the
evidence that supports the grounds for the challenge to each claim”)); see
also 37 C.F.R. § 42.104(b)(5) (requiring petitioners to state “[t]he exhibit
number of the supporting evidence relied upon to support the challenge and
the relevance of the evidence to the challenge raised, including identifying
specific portions of the evidence that support the challenge.”). Petitioner
cannot satisfy its burden of proving obviousness by employing “mere
conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
1380 (Fed. Cir. 2016).
In the present case, the Petition cites no declaration testimony and
there is no evidence to support a finding that replacing APA’s housewraps
with Flack’s membrane and Van Wagoner’s seam tape would either improve
resistance to water infiltration or reduce costs. Although Flack discloses a
water-resistant membrane, the membrane is applied over a polystyrene
insulation board (see, e.g., Ex. 1041, code (57)), not a panel of plywood, as
disclosed in APA (see, e.g., Ex. 1005, 73 (9.4.4)), and we are not persuaded
that applying Flack’s membrane would adhere to APA’s plywood panels, let
alone provide an advantage over the housewraps disclosed in APA. See
Prelim. Resp. 59 (arguing the same).
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10. Summary
For the foregoing reasons, Petitioner has not established a reasonable
likelihood of prevailing on its contention that APA in view of StoGuard-
2001, StoGuard-2003, Peng, Flack, Van Wagoner, and Elliott renders claim
1 unpatentable. Petitioner’s arguments and evidence regarding independent
claims 12 and 20 include the same deficiencies discussed above with respect
to claim 1. See Pet. 74, 75. Further, Petitioner does not contend that the
other secondary references relied upon in challenging the dependent claims
remedy these deficiencies. See id. at 53–60. Accordingly, Petitioner has not
established a reasonable likelihood of prevailing on its contentions based on
APA that any of claims 1–20 are unpatentable.

F. Ground 2 – Unpatentable over Forbes and Other Cited Art
Petitioner contends that claims 1–20 are unpatentable “based upon
Forbes as the primary reference, in various combinations with other
references from Ground 1.” Pet. 61. In particular, Petitioner relies on
Forbes, Van Wagoner, and Flack in addressing independent claims 1, 12,
and 20. See id. at 63–64, 67. 68. Petitioner further relies on numerous other
references in challenging the dependent claims. See id. at 63–68. Unlike in
Ground 1, Petitioner does not present a claim chart in support of this
challenge. Compare id. at 25–50, with id. at 60–68.

1. Forbes (Ex. 1038)
Forbes is a U.K. patent publication titled, “Insulated, Vapour-
Permeable, Liquid-Permeable Panel,” and discloses a panel with a first layer
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of rigid insulation material and a second layer of vapor permeable, but liquid
impermeable, material. Ex. 1038, codes (54), (57).

2. Petitioner’s Challenge
Petitioner submits that “Forbes discloses the claimed panel structure
with aligned and substantially parallel edges along with a barrier layer.”
Pet. 63. In support of its challenge, Petitioner submits copies of Forbes’s
Figures 3 and 4 (id. at 61), which we reproduce below:

Figures 3 and 4 of Forbes illustrate structural insulated panel 50 with first
layer of insulation material 52, “typically expanded polystyrene . . . or other
suitable insulation material, and a second layer 54,” which is “at least
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partially vapour permeable but substantially liquid impermeable.” Ex. 1038,
9:7–15.
Petitioner submits that “Forbes discloses a lignocellulosic structural
wall panel with a water vapor permeable and liquid impermeable barrier
layer.” Pet. 60 (citing Ex. 1038, 1). In citing Figures 3 and 4, Petitioner
appears to rely on first layer 52 as the claimed panel structure with second
layer 54 as the claimed barrier layer. See id. at 63 (“Forbes discloses the
claimed panel structure aligned and substantially parallel edges along with a
barrier layer.”); see also id. at 62 (“Fig. 3 shows the second layer (54)
secured to the panel’s outer surface.”). Petitioner further submits that the
joint between two adjacent panels are “secured by a waterproof adhesive.”
Id. at 61 (citing Ex. 1038, 9–11, 15–18).
As with Ground 1, Petitioner also relies, in the alternative, on the
addition of Flack and Van Wagoner to the combination, reasoning that a
skilled artisan would have used “the Flack membrane as a form of or
substitute for the ‘second layer’ of Forbes, with the joint tape of Van
Wagoner, motivated to improve resistance to water infiltration with a cost-
effective and functionally effective alternative to housewraps.” Id. at 63.

3. Patent Owner’s Response
Patent Owner argues that Forbes does not disclose a lignocellulosic
panel with a barrier layer (Prelim. Resp. 43) or the bulk water resistant edge
sealant (id. at 45).
Patent Owner’s arguments are persuasive.

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4. Analysis
Each of independent claims 1, 12, and 20 recites, “lignocellulosic
panels.” Ex. 1001, 21:51, 22:29, 23:8. Petitioner submits that “Forbes
discloses a lignocellulosic structural wall panel,” citing page 1 of Forbes.
Pet. 60. Page 1 of Forbes indeed discloses that prior art systems disclose
plywood or OSB panels, yet these wood or OSB panels are not the “panels”
that Petitioner points to in satisfying the claim limitations. Rather, and as
explained above, Petitioner relies on Forbes’s insulation material 52 to
satisfy the claimed adjacent panels, yet Forbes’s “panels” are made of
insulation material, typically expanded polystyrene. See Ex. 1038, 9:7–15.
Petitioner does not point to anything in Forbes that discloses that “panels”
52 are made from wood or other lignocellulosic material. Nor does
Petitioner contend this would have been obvious. See Pet. 63–64. As such,
we agree with Patent Owner that Petitioner’s challenge is deficient in at least
this respect.
We also agree with Patent Owner that this challenge fails to satisfy the
claimed sealant or sealing the joint between two adjacent panels, as called
for in the claims. See Ex. 1001, 21:61–62 (claim 1), 22:22 (claim 12),
23:23–24 (claim 20). Petitioner cites to Forbes for disclosing a sealant for
the joint between adjacent panels (Pet. 61), yet we find no such disclosure.
The “sealant” that Petitioner appears to refer to is instead an adhesive for
affixing second layer 54 to first layer 52. Ex. 1038, 11:12–13 (“A suitable
adhesive is PVA Dispersion Glue for Assembly . . . .”).
Petitioner also reasons, in the alternative, that a skilled artisan would
have used “the Flack membrane as a form of or substitute for the ‘second
layer’ of Forbes, with the joint tape of Van Wagoner, motivated to improve
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resistance to water infiltration with a cost-effective and functionally
effective alternative to housewraps.” Pet. 63. This reasoning, however, falls
short for at least two reasons. First, Petitioner proposes that the combination
is an “alternative to housewraps,” yet Petitioner’s challenge does not
propose to use a housewrap, as Forbes’s “barrier layer” 54 is not a
housewrap. Second, and as discussed above, the Petition fails to cite to any
evidence, such as testimony or citations to the record, to support a finding
that the combination would either improve water resistance or reduce costs.
See supra Part II.E.9.d. Petitioner does not explain how Forbes’s water-
resistive barrier and sealants are deficient at resisting water or how
substituting Flack’s membrane or Van Wagoner’s seam tape would have
improved Forbes’s water resistance or reduce costs such that one of ordinary
skill in the art would have been motivated to make this substitution. See
37 C.F.R. § 42.104(b)(5).
Although Petitioner also relies on Peng and Elliott in challenging
independent claim 1 under Ground 2 (see Pet. 19), Petitioner cites to nothing
in either of these references that overcomes the deficiencies discussed above
(see id. at 60–64).

5. Summary
For the foregoing reasons, Petitioner has not established a reasonable
likelihood of prevailing on its contention that Forbes in view of Flack or Van
Wagoner renders claim 1, 12, or 20 unpatentable. Further, Petitioner does
not contend that the other secondary references relied upon in challenging
the dependent claims remedy these deficiencies. See Pet. 63–68.
Accordingly, Petitioner has not established a reasonable likelihood of
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prevailing on its contentions based on Forbes that any of claims 1–20 are
unpatentable.

G. Ground 3 – Unpatentable over Kenji and Other Cited Art
Petitioner contends that claims 1–20 are unpatentable based on Kenji
and the art discussed above in connection with Grounds 1 and 2. See
Pet. 68. In particular, Petitioner relies on Kenji, Van Wagoner, and Flack in
addressing independent claims 1, 12, and 20. See id. at 68–71. Petitioner
further relies on numerous other references in challenging the dependent
claims. See id. at 63–68. As with Ground 2, Petitioner does not present a
claim chart in support of this challenge. See id. at 68–75.

1. Kenji (Ex. 1040 (English Translation of Ex. 1038))
Kenji (Ex. 1040) is an English-language translation of Japanese Patent
Publication JP2001020415. Ex. 1040, 1 (Certificate of Translation). Kenji
is titled, “Exterior wall panel, joining structure of exterior wall panels and
methods for joining exterior wall panels.” Id. at code (54).

2. Petitioner’s Challenge
Petitioner submits that “Kenji discloses the claimed panel structure
with aligned and substantially parallel edges along with a barrier layer.”
Pet. 70. Petitioner further submits that Kenji discloses a “[b]ulk water
resistant tape [that] seals joints between panels.” Id. at 69 (citing Ex. 1040,
5–6, Fig. 4).
In the alternative, and as with Grounds 1 and 2, Petitioner submits that
a skilled artisan would have used “the Flack membrane as a form or
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substitute for the barrier layer of Kenji, with the joint tape of Van Wagoner,
motivated to improve resistance to water infiltration with a cost-effective
and functionally effective alternative to housewraps.” Id. at 71.

3. Patent Owner’s Response
Patent Owner argues that the claims require a sealant to seal the joint
between the proximate edges of two adjacent panels, and the proposed
combination fails to satisfy this structure. See Prelim. Resp. 46–53.
We agree.

4. Analysis
The Petition cites to Kenji’s Figures 1 and 9 for “show[ing] at least
two panels with a face (outer face), back (inner face), and edges between the
faces, with adjacent panels aligned such that a joint is formed between the
edges of the panels.” Pet. 68–69 (citing Ex. 1040, 7). We reproduce Kenji’s
Figure 1, below:
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According to Kenji, Figure 1 depicts exterior wall panel 1 with main body 5,
waterproof sheet 6, adhesive agent S coated along the peripheries of edge
portions 5a, 5b, and 5c. See Ex. 1040 ¶ 6. Petitioner relies on Kenji’s side
wall panel 2, spandrel wall panel 4, and dwarf wall panel 3 as satisfying the
claimed “at least two panels.” See Pet. 68–69.
To address the claimed “edge sealant sealing the joint between the
proximate edges of the two adjacent panels,” Petitioner submits an annotated
version of Kenji’s Figure 4 (id. at 69–70), which we reproduce, below:
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Figure 4 depicts
joint 11a of the large-sized wall panel 1 and the other wall panel
11 is fixed by screwing the screw nails 12 . . . . into the vertical
frame member 2a, and at the seam of the joint 11a, a joint tape
13 having waterproofness is stuck so as to overlap with both
water proof sheets 6.

Ex. 1040 ¶ 26.
As shown in Figure 4, joint tape 13 is used to seal the seam of joint
11a, which is formed by vertical members 2a. Petitioner does not cite to
anything in Kenji that discloses joint tape 13 as being used to seal the joint
between side wall panel 2, spandrel wall panel 4, and dwarf wall panel 3,
which Petitioner relies on for addressing the claimed at least two adjacent
panels. See Pet. 68–69. “In an . . . [inter partes review], the petitioner has
the burden from the onset to show with particularity why the patent it
challenges is unpatentable.” Harmonic, 815 F.3d at 1363; see also
37 C.F.R. § 42.104(b)(5).
We are also unpersuaded by Petitioner’s alternative position, that a
skilled artisan would have used “the Flack membrane as a form of or
substitute for the barrier layer of Kenji, with the joint tape of Van Wagoner,
motivated to improve resistance to water infiltration with a cost-effective
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and functionally effective alternative to housewraps.” Pet. 71. This
reasoning fails for the same reason as discussed above in connection with
Grounds 1 and 2, specifically, the Petition fails to cite to any evidence, such
as testimony or citations to the record, to support a finding that the
combination would either improve water resistance or reduce costs. See
supra Part II.E.9.d. We further note that the “joints” formed between
Kenji’s side wall panel 2, spandrel wall panel 4, and dwarf wall panel 3 are
covered by a single waterproof sheet, such as Tyvek, so we do not see any
need or desire to cover the “joints” formed between Kenji’s underlying
panels with seam tape or sealant. See, e.g., Ex. 1040 ¶ 24 (“waterproof sheet
6 is stuck on the panel main body 5 coated with the adhesive agent S. As the
waterproof sheet 6, for example, Tyvek”); see also id. ¶ 20 (“panel main
body 5 in a square shape consisting of two side wall panels 2 and 2, the
dwarf wall panel 3 and the spandrel wall panel 4 . . . a waterproof sheet 6 is
stuck on one surface of the said panel main body 5.”); see also id. at Fig. 1
(depicting panel main body 5 as consisting of several smaller panels,
including dwarf wall panel 3, spandrel wall panel 4, and two side wall panels
2).
Although Petitioner also relies on Peng and Elliott in challenging
independent claim 1 under Ground 3 (see Pet. 20), Petitioner cites to nothing
in either of these references that overcomes the deficiencies discussed above
(see id. at 68–71).

5. Summary
For the foregoing reasons, Petitioner has not established a reasonable
likelihood of prevailing on its contention that Kenji in view of Flack or Van
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Wagoner renders claim 1, 12, or 20 unpatentable. Further, Petitioner does
not contend that the other secondary references relied upon in challenging
the dependent claims remedy these deficiencies. See Pet. 70–75.
Accordingly, Petitioner has not established a reasonable likelihood of
prevailing on its contentions based on Kenji that any of claims 1–20 are
unpatentable.

III. CONCLUSION
After considering the evidence and arguments presented in the
Petition and Preliminary Response, we determine that the record does not
demonstrate a reasonable likelihood that Petitioner will prevail with respect
to any claim challenged in the Petition. We, therefore, do not institute inter
partes review of the ’197 patent.

IV. ORDER
In consideration of the foregoing, it is hereby ORDERED that, no
inter partes review is instituted.

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PETITIONER:

W. Edward Ramage
eramage@bakerdonelson.com

Aaron Chaloner
achaloner@bakerdonelson.com

PATENT OWNER:

Daniel W. McDonald
dmcdonald@merchantgould.com

Jeffrey D. Blake
jblake@merchantgould.com

Paige S. Stradley
pstradley@merchantgould.com

Peter S. Selness
pselness@merchantgould.com