News & Insights

Gish PLLC Client GAF Invalidates All Patent Claims in Successful Inter Partes Review

05/24/2022News

In a Final Written Decision issued on May 24, 2022, the Patent Trial and Appeal Board found that GAF Materials LLC successfully demonstrated by a preponderance of the evidence that all claims in U.S. Patent No. 6,308,482 (“the ‘482 patent”) are unpatentable in light of multiple prior art references.

Patent Owner Kirsch Research & Development, LLC originally asserted the ‘482 patent against GAF’s FeltBuster synthetic roofing underlayment products in the Northern District of Texas. GAF successfully moved for transfer to the District of New Jersey (Case No. 2:20-cv-13683), and filed a petition for inter partes review (“IPR”) against claims 1-34 of the ‘482 patent. After its IPR petition was granted on May 25, 2021, GAF successfully obtained a stay of the New Jersey action pending resolution of the IPR proceeding.

GAF’s petition asserted grounds of both anticipation and obviousness against the ‘482 patent. An oral hearing was held on March 22, 2022. In its Final Written Decision, the PTAB adopted GAF’s interpretation of a key claim limitation, and found that the prior art disclosed that limitation, as well as all other claim elements of all 34 challenged claims.

The PTAB proceeding is Case No. IPR2021-00192. Gish PLLC partner Ed Tulin was a member of the team that represented Petitioner GAF, and also represents GAF in the District of New Jersey.