Johns Manville Corp. v. Knauf Insulation, Inc.

Informative decision only: persuasive authority, not binding precedent. When a petitioner under § 103 shows only that references are analogous art, in the same field, or merely compatible, and offers conclusory expert support, the Board may find no reasonable likelihood of prevailing under 35 U.S.C. § 314(a) because no reason to combine the references in the manner claimed has been shown. The petitioner must articulate and support, with evidence, why a skilled artisan would have selected the secondary reference's composition for the claimed application, with a reasonable expectation of success. No prior Board precedential or informative decision is named in the text; the Board relies on Federal Circuit and Supreme Court authority. For petitioners, analogous-art status, shared field, and compatibility cannot substitute for a reason to combine, and a declaration that merely repeats the petition's reasoning gets little weight under 37 C.F.R. § 42.65(a). Patent owners can win denial at the preliminary stage by pointing out that the references teach considerably different systems and that no comparison or substitution rationale was given. The Board relied on KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367-1368 (Fed. Cir. 2016); Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017); and Securus Techs., Inc. v. Global Tel*Link Corp., 701 F. App'x 971, 977 (Fed. Cir. 2017). LEGAL TEST OR STANDARD: Institution requires "a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition." 35 U.S.C. § 314(a). For obviousness, the petitioner bears the burden to show "that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so," and obviousness requires "a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." Analogous art is only a threshold inquiry. TRIGGERING FACTS: Petitioner argued the references were analogous art or in similar endeavors, that all were thermosetting binders, and that combination would be predictable and within the skill of the art. It did not compare the secondary reference's binder (shell molds, refractory blocks) with the primary reference's fiberglass insulation binder, or give a reason to substitute one for the other in fiberglass insulation. It did not identify which prior art elements had a known, predictable function. Its declarant's testimony was substantially the same as the petition. It also relied on unpatentability of related claims in another patent without comparing the claims. KEY QUOTE: "Demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim." (Paper 9, p. 10) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: In a petition, do not rest the reason to combine on analogous-art status, shared field, compatibility, or a generic thermosetting-binder label; compare the references' specific teachings, explain why a skilled artisan would select the secondary reference for the claimed application with a reasonable expectation of success, and support it with a declaration that discloses underlying facts and does not merely repeat the petition.