  United States Court of Appeals
      for the Federal Circuit
               ______________________

                OWENS CORNING,
                   Appellant

                          v.

           FAST FELT CORPORATION,
                     Appellee
              ______________________

                     2016-2613
               ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2015-
00650.
                 ______________________

              Decided: October 11, 2017
               ______________________

    CONSTANTINE L. TRELA, JR., Sidley Austin LLP, Chi-
cago, IL, argued for appellant. Also represented by
THOMAS D. REIN, STEVEN J. HOROWITZ, STEPHANIE P. KOH,
BRYAN C. MULDER; PETER S. CHOI, ANNA MAYERGOYZ
WEINBERG, Washington, DC.

   SCOTT A. BRISTER, Andrews Kurth Kenyon LLP,
Austin, TX, argued for appellee. Also represented by
GREGORY LAWRENCE PORTER, Houston, TX; JAMES D.
PETRUZZI, The Petruzzi Law Firm, Houston, TX.
                ______________________
2                 OWENS CORNING   v. FAST FELT CORPORATION



     Before NEWMAN, DYK, and TARANTO, Circuit Judges.
TARANTO, Circuit Judge.
    Fast Felt Corporation owns U.S. Patent No.
8,137,757, which describes and claims methods for print-
ing nail tabs or reinforcement strips on roofing or building
cover material. Fast Felt sued Owens Corning for in-
fringement, and Owens Corning then filed a petition with
the Patent and Trademark Office (PTO) seeking an inter
partes review of claims 1, 2, 4, 6, and 7 under 35 U.S.C.
§§ 311–19. The Patent Trial and Appeal Board, acting as
the delegate of the PTO’s Director under 37 C.F.R.
§ 42.4(a), instituted a review of all of the challenged
claims on grounds of obviousness. Institution of Inter
Partes Review at 26, Owens Corning v. Fast Felt Corp.,
No. IPR2015-00650 (P.T.A.B. Aug. 13, 2015), Paper No. 9
(Institution Decision). After conducting the review, the
Board concluded that Owens Corning had failed to show
obviousness of any of the challenged claims. Final Writ-
ten Decision, Owens Corning v. Fast Felt Corp., No.
IPR2015-00650, 2016 WL 8999740, at *23 (P.T.A.B. Aug.
11, 2016) (Final Decision).
    Owens Corning appeals from the Board’s decision. It
contends that, once the key claim term is given its broad-
est reasonable interpretation, the record conclusively
establishes obviousness. We agree, and we reverse the
Board’s decision.
                             I
                             A
    The ’757 patent addresses applying polymer “nail
tabs” on “roofing and building cover material.” ’757
patent, abstract; id., col. 1, lines 29–34 (“The invention
relates generally to roofing materials or other building
materials normally employed as cover materials over a
wood roof deck or stud wall and more specifically to such
cover materials and methods for incorporating therein a
OWENS CORNING   v. FAST FELT CORPORATION                    3



plurality of integrally formed nail tabs or a continuous
reinforcing strip.”). The specification explains that nail
tabs have been used to reinforce specific locations on
roofing or building cover material at which nails will be
driven through the material to attach it to a wood roof
deck or a building stud wall. See id., col. 1, lines 29–34.
Such reinforcement helps prevent the nails from tearing
through the cover material. See id., col. 2, lines 20–26.
Commonly, the specification observes, separate washers
or tabs are applied with every nail to provide reinforce-
ment, but that practice is expensive, inefficient, and
dangerous. Id., col. 2, lines 44–63.
     The ’757 patent proposes an asserted improvement:
use of an “automated” process to “permanently and relia-
bly” affix or bond “tab material that quickly solidifies and
adheres or bonds to the surface.” Id., col. 5, line 63–col. 6,
line 2. The surface to which the tab material is affixed or
bonded can be “either dry felt, saturated felt, a fiberglass,
polyester or other inorganic substrate roofing material
whether or not coated with asphalt or an asphalt mix, or
roll roofing material or shingles.” Id., col. 5, lines 64–67.
The automated process can be “gravure, rotogravure or
gravure-like transfer printing (the ‘gravure process’) or
offset printing.” Id., col. 3, lines 24–26. 1
    Claim 1 is one of two independent claims. It reads:
        A method of making a roofing or building cov-
    er material, which comprises treating an extended
    length of substrate, comprising the steps of:



    1   Gravure printing transfers a print material from
an engraved cylinder directly onto a substrate. Appel-
lant’s Br. 7. Offset-gravure printing uses a second roller
to pick up the print material from the engraved cylinder
and transfer the print material onto the substrate. Id. at
8.
4                  OWENS CORNING    v. FAST FELT CORPORATION



         depositing tab material onto the surface of
    said roofing or building cover material at a plural-
    ity of nail tabs from a lamination roll, said tab
    material bonding to the surface of said roofing or
    building cover material by pressure between said
    roll and said surface.
Id., col. 13, lines 13–20. All of the challenged claims
contain the claim term “roofing or building cover materi-
al.” Id., col. 13, line 13–col. 14, line 17. Claim 7, the
second independent claim, is similar to claim 1 but does
not require a lamination roll. Id., col. 14, lines 11–17. On
appeal, the parties treat independent claims 1 and 7 as
substantively equivalent. Several dependent claims add
narrowing limitations, but Fast Felt does not argue them
separately here.
                              B
    The Board instituted review on three grounds, all un-
der 35 U.S.C. § 103 (2006). Institution Decision at 26. 2
Owens Corning does not press one of those grounds on
appeal, so we discuss only two of the grounds. U.S. Pa-
tent No. 6,451,409 (Lassiter) is the key piece of prior art.
It specifically teaches a process of using nozzles to deposit
polymer nail tabs on roofing and building cover materials
to solve some of the same industry problems as are identi-
fied in the ’757 patent. Lassiter, abstract, col. 1, lines 10–
15, col. 2, lines 3–18.
    The first ground of asserted unpatentability, applica-
ble to claims 1, 2, 4, 6, and 7, is obviousness over a combi-
nation of Lassiter and U.S. Patent No. 5,101,759 (Hefele).


    2   The ’757 patent, which issued from a 2010 appli-
cation, is governed by the version of § 103 that was in
effect before the provision’s amendment by the Leahy-
Smith America Invents Act, Pub. L. No. 112-29, § 3(n)(1),
125 Stat. 284, 293 (2011).
OWENS CORNING   v. FAST FELT CORPORATION                    5



Institution Decision at 26. Hefele discloses an offset-
gravure printing process using a pressure roller to form
“grid-like coatings” on a variety of “web-like flexible
planar” materials. Hefele, abstract. The other asserted
ground of unpatentability that is presented to us, applica-
ble to claims 1, 2, 4, 6, and 7, is obviousness over a combi-
nation of Lassiter and U.S. Patent No. 6,875,710 (Eaton).
Institution Decision at 26. Eaton discloses a process of
using a transfer roll to apply “discrete polymeric regions”
to reinforce various substrates and a process for laminat-
ing two substrates together. Eaton, col. 2, lines 16–29,
col. 3, lines 6–22.
    In its Final Written Decision, the Board found that,
contrary to Fast Felt’s contentions, all of the elements of
the independent claims are disclosed in Lassiter when
combined with either Hefele or Eaton. See Final Decision,
2016 WL 8999740, at *12–13, *20–21. Fast Felt has not
meaningfully argued to this court that those findings are
unsupported by substantial evidence. 3 The Board further
found that Owens Corning had failed to show that a
skilled artisan would have combined Lassiter with Hefele
or Eaton. Id. at *13–15, *21–22. On that basis, the Board
rejected Owens Corning’s challenges to claim 1. Id.
Finding no material difference between claim 1 and either
claim 7 or the dependent claims 2, 4, and 6, the Board
also rejected the challenges to those claims for the same
reasons. Id. at *16, *22.
   Owens Corning appeals the Board’s decision.            We
have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).


    3   The two-sentence footnote in Fast Felt’s brief re-
asserting its position, Appellee’s Br. 5 n.2, does not suffice
to preserve a challenge. See SmithKline Beecham Corp. v.
Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006). In
any event, it does not persuasively show error by the
Board in this respect.
6                  OWENS CORNING   v. FAST FELT CORPORATION



                             II
                             A
    Owens Corning first argues that the Board, when
evaluating obviousness in light of the prior art, at least
implicitly adopted an erroneous claim construction.
Specifically, it contends that the Board effectively treated
the “roofing or building cover material” as limited to
material that either has been or would be coated or satu-
rated with asphalt or asphalt mix. And it contends that
such a construction is legally incorrect under the broad-
est-reasonable-interpretation standard applicable in the
IPR. We agree as to both parts of this contention.
     In the claim-construction portion of its opinion, the
Board construed the claim term “roofing or building cover
material” to mean “base substrate materials such as dry
felt, fiberglass mat, and/or polyester mat, before coating
or saturation with asphalt or asphalt mix, and asphalt
coated or saturated substrates such as tar paper and
saturated felt.” Final Decision, 2016 WL 8999740, at *4.
It later noted, correctly, that this construction “does not
require an asphalt-coated substrate.” Id. at *14. But
when evaluating Owens Corning’s arguments regarding
motivation to combine and reasonable expectation of
success, the Board made clear its understanding of its
construction, and hence of the claims, as requiring mate-
rials that would eventually be coated with asphalt even if
they had not already been coated before printing. Id. at
*13–16, *21–22.
     That is evident in the Board’s determination, based on
a statement in Lassiter and certain expert testimony, that
Lassiter would discourage a skilled artisan from using
“high temperatures and roller pressure” to apply nail tabs
to a base substrate. Id. at *14, *21. The cited statement
in Lassiter refers only to problems during an asphalt
coating process after nail tabs have been applied. Lassit-
er, col. 2, lines 32–40. And both of Fast Felt’s experts, Dr.
OWENS CORNING   v. FAST FELT CORPORATION                 7



Bohan and Mr. Todd, testified that they considered only
“heavily saturated asphalt” materials in their analyses.
Bohan Dep. J.A. 1436–37, Todd Dep. J.A. 1542–43.
    The same understanding of the claims is evident in
the Board’s rejection of Owens Corning’s argument that
the gravure-based methods in Hefele and Eaton were
interchangeable with Lassiter’s nozzle-based method.
The Board reasoned that Owens Corning had not ac-
counted for the differences in materials. Final Decision,
2016 WL 8999740, at *15, *22. In doing so, the Board
relied on the testimony of Fast Felt’s expert, Mr. Todd,
that Hefele and Eaton do not “address utilizing anything
even remotely resembling a heavily asphalt saturated
substrate,” and “[w]ithout this link there does not seem to
be any reason someone manufacturing a roofing product
would ever look to a common printing or coating process.”
Id. The Board simply did not address roofing or building
cover materials that would never be coated in asphalt.
    The exclusion of such materials from the scope of the
claims is mistaken. In an inter partes review proceeding,
the Board is to give a claim “its broadest reasonable
construction in light of the specification of the patent in
which it appears.” 37 C.F.R. § 42.100(b). “We review
underlying factual determinations concerning extrinsic
evidence for substantial evidence and the ultimate con-
struction of the claim de novo.” In re Cuozzo Speed
Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir. 2015), aff’d
sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
2131 (2016). It is not 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.
    It is true that the preferred embodiments in the ’757
patent focus on roofing materials that are or will be
coated or saturated with asphalt or asphalt mix. See, e.g.,
’757 patent, col. 7, lines 27–54. But that is not enough to
narrow the claim scope in the IPR. The claims are plainly
8                  OWENS CORNING   v. FAST FELT CORPORATION



not so limited. Indeed, they are not even limited to “roof-
ing materials,” as they all expressly include “building
cover material” as well as roofing material. Id., col. 13,
line 13–col. 14, line 25. Moreover, even the specification,
when not discussing preferred embodiments, is not lim-
ited to roofing materials: it speaks of “roofing materials or
other building materials normally employed as cover
materials over a wood roof deck or stud wall.” Id., col. 1,
lines 29–31. And Fast Felt has not disputed, or pointed to
any evidence disputing, that some building cover materi-
als (like the common Tyvek wrap referred to in the Board
oral argument) is commonly installed without ever being
coated or saturated with asphalt or asphalt mix.
    In these circumstances, the broadest reasonable con-
struction of “roofing or building cover material” would
include materials that neither have been nor are to be
coated or saturated with asphalt or asphalt mix. We
conclude that the Board erred in effectively construing the
claims to exclude such materials.
                             B
     In this case, it is not necessary or appropriate to re-
mand for the Board to reassess the evidence in light of the
correct claim construction. On the evidence and argu-
ments presented to the Board, there is only one possible
evidence-supported finding: the Board’s rejection of Ow-
ens Corning’s challenge, when the correct construction is
employed, is not supported by substantial evidence. See,
e.g., Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077,
1082 (Fed. Cir. 2015) (reversing rejection of IPR chal-
lenge). Moreover, in this court, after Owens Corning
sought outright reversal on this ground in its opening
brief, Fast Felt in its responsive brief did not ask for a
remand if this court adopted a claim interpretation not
limited by any requirement of asphalt coating or satura-
tion. In particular, Fast Felt did not respond that this
was a late-arising interpretation and it had lacked an
OWENS CORNING   v. FAST FELT CORPORATION                   9



opportunity in the Board proceedings to introduce evi-
dence relevant under this interpretation. Nor do we see a
basis for such an argument. Owens Corning’s petition did
not restrict the claim scope based on coating or satura-
tion; the Institution Decision did not adopt such a limiting
construction, Institution Decision at 5; and when Fast Felt
relied on a limitation based on asphalt coating or satura-
tion in its Patent Owner’s Response, Owens Corning
clearly asserted in its Reply that “Asphalt Saturated
Substrates Cannot Be Used To Distinguish The Prior Art
Because No Such Limitation Is Recited In The Claims,”
J.A. 339. In these circumstances, where only one answer
is supported by substantial evidence and there is neither
a request nor an apparent reason to grant a second rec-
ord-making opportunity, reversal is warranted.
    Whether a claimed invention would have been obvious
is a question of law (reviewed de novo), based on factual
determinations (reviewed for substantial-evidence sup-
port) regarding the scope and content of the prior art,
differences between the prior art and the claims at issue,
the level of ordinary skill in the pertinent art, the motiva-
tions to modify or combine prior art, and any objective
indicia of non-obviousness. Randall Mfg. v. Rea, 733 F.3d
1355, 1362 (Fed. Cir. 2013). Here, as explained above, it
is settled that the prior-art combinations at issue disclose
all of the elements of the claims. The only question is
whether a relevant skilled artisan would have been led to
make the combinations with a reasonable expectation of
success. See L.A. Biomedical Research Inst. at Harbor-
UCLA Med. Ctr. v. Eli Lilly & Co., 849 F.3d 1049, 1064
(Fed. Cir. 2017). As relevant here, that inquiry is to be
conducted in light of the Supreme Court’s observation
that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no
more than yield predictable results.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007).
10                 OWENS CORNING   v. FAST FELT CORPORATION



    Lassiter itself, by its terms, suggests that a person of
ordinary skill in the art would be motivated to print nail
tabs on building cover materials that are not and will not
be asphalt coated. Lassiter teaches its process for such
building cover materials, including “covering sheets” and
“styrofoam board sheathing” that can be attached to stud
walls. Lassiter, col. 7, line 25–col. 8, line 2. Before the
Board, at the oral argument, Owens Corning discussed
covering sheets such as plastic “house wrap,” and a Board
member specifically asked about “Tyvek . . . or some other
wrap or lighter material.” J.A. 416, 427. Fast Felt’s
expert, Mr. Todd, also mentioned “synthetic underlay-
ment” materials in his declaration. Final Decision, 2016
WL 8999740, at *10 (quoting Todd Decl. ¶ 8, J.A. 1656).
There is no evidence that any of these materials must be
coated with asphalt.
    As to expert testimony, the only such testimony about
printing on materials not coated or to be coated (or satu-
rated) with asphalt (or asphalt mix) is that of Dr. Leven-
son, Owens Corning’s expert. The Board found that the
knowledge of an ordinary skilled artisan would include
“knowledge of . . . gravure/offset printing,” Final Decision,
2016 WL 8999740, at *9, and Dr. Levenson attested to
that knowledge. He explained, citing Hefele and a text-
book, that a gravure process would allow for polymer nail
tabs to be printed on a wider range of substrates (e.g.,
“synthetic” and “polyethylene” (plastic) materials, Leven-
son Dep. J.A. 1818) and would provide economic ad-
vantages over nozzle-based methods. Owens Corning, No.
IPR2015-00650, Ex. 1014, Levenson Decl. ¶¶ 40–41.
Owens Corning provided background materials that
clearly support Dr. Levenson’s testimony. J.A. 803, 805–
08. Dr. Levenson further testified that the prior-art
combinations involved “a simple substitution of one well
known polymer deposition technique [nozzle-based print-
ing] for another [gravure-based printing] to obtain pre-
dictable results.” Ex. 1014, Levenson Decl. ¶¶ 43–44.
OWENS CORNING   v. FAST FELT CORPORATION                11



    Fast Felt had no meaningful evidence in response to
the foregoing that was independent of its too-narrow view
of what materials are covered by the patent at issue. The
testimony of its experts, Mr. Todd and Dr. Bohan, wheth-
er as to motivation to combine or teaching away or expec-
tation of success, was entirely based on an analysis of
asphalt saturated substrates. J.A. 1694–96, 1698, 1704–
05, 1738, 1757–59. Fast Felt’s evidence did not answer
Owens Corning’s evidence as to other, building cover
materials. And the Board’s statement that Dr. Levenson
“does not provide any objective support for his opinion”
about motivation to combine and expectation of success,
Final Decision, 2016 WL 8999740, at *15, *22, not only is
dependent on the improperly narrow focus of Fast Felt’s
experts, but plainly contradicts the record, given the
documentary supporting materials submitted, when the
focus is widened, as it must be, to include substrates not
(yet or to be) asphalt coated or saturated.
    Based on the record before us, there is only one per-
missible factual finding—a skilled artisan would be
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. Lassiter’s nozzle-based
printing technique and Hefele’s and Eaton’s gravure-
based printing processes were known substitutes, with
success predictable as to materials covered by the claims.
There is no substantial evidence to the contrary. “[W]hen
a patent simply arranges old elements with each perform-
ing the same function it had been known to perform and
yields no more than one would expect from such an ar-
rangement, the combination is obvious.” KSR, 550 U.S. at
417 (internal quotation marks omitted).
    That conclusion requires reversal as to claim 1. And
Fast Felt has not made any argument to us for a different
result as to independent claim 7 or as to dependent claims
2, 4, and 6.
12                OWENS CORNING   v. FAST FELT CORPORATION



                            III
    For the foregoing reasons, we hold that claims 1, 2, 4,
6, and 7 of the ’757 patent are unpatentable for obvious-
ness. The Board’s decision is reversed.
                      REVERSED
