Case: 3:14-cv DAK Doc #: 1 Filed: 04/14/14 1 of 13. PageID #: 1

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1 Case: 3:14-cv DAK Doc #: 1 Filed: 04/14/14 1 of 13. PageID #: 1 IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF OHIO WESTERN DIVISION FAST FELT CORPORATION, Plaintiff, v. OWENS CORNING ROOFING AND ASPHALT, LLC and OWENS CORNING, CASE NO. JURY TRIAL DEMANDED Defendants. COMPLAINT Plaintiff Fast Felt Corporation ( Fast Felt ) complains of Defendants Owens Corning Roofing and Asphalt, LLC and Owens Corning (collectively Owens Corning ) as follows: THE PARTIES A. Fast Felt 1. Fast Felt Corporation is a Texas corporation having a place of business located at Memorial Drive, Houston, Texas Fast Felt is an owner, innovator and a supplier of nail reinforcement technology for roofing cover or building cover materials to participants in the roofing or building cover products industry. Fast Felt also supplies manufacturing equipment for the application of its patented nail reinforcement tabs, including tabs made of polymers. 2. Fast Felt s core nail reinforcement technology and the manufacturing equipment which applies its nail reinforcements relate to products in the roofing and/or building cover materials industries. Fast Felt s efforts have resulted in patented technology in the fields of roofing and building cover materials which it calls its Fast Felt Technology.

2 Case: 3:14-cv DAK Doc #: 1 Filed: 04/14/14 2 of 13. PageID #: 2 3. Fast Felt sells its roofing cover materials having a pre-affixed nail reinforcement tab under Fast Felt s trade name: Fast Felt. The roofing cover materials industry includes both (a) underlayments (the bottom layer immediately above the roof deck) and (b) shingles (the top cover layer or the layer normally exposed on a roof). Underlayments and shingles are separate material items used in a roof covering system. 4. Fast Felt has developed products and manufacturing methods for roll and shingle roofing products that are the subject of several United States patents owned by Fast Felt. B. Owens Corning 5. Owens Corning Roofing and Asphalt, LLC is a Delaware limited liability company having a principal place of business at One Owens Corning Parkway, Toledo, Ohio Owens Corning Roofing and Asphalt, LLC has a manufacturing location for its roofing products in Ohio. 6. Owens Corning is a Delaware corporation with its principal place of business at One Owens Corning Parkway, Toledo, Ohio Owens Corning is the parent of Owens Corning Roofing and Asphalt, LLC. Owens Corning and Owens Corning Roofing and Asphalt, LLC are hereinafter collectively referred to as Owens Corning. 7. Roofing cover materials manufactured by Owens Corning include at least one shingle product with polymer nail reinforcement material. Owens Corning calls the products having a polymer nail reinforcement material secured to the asphalt coated surface of a shingle product, SureNail. One product manufactured by Owens Corning that implements SureNail is the Duration Series Shingles. Another roofing cover product manufactured by Owens Corning that implemented SureNail is the Oakridge Pro Series Shingle. 2

3 Case: 3:14-cv DAK Doc #: 1 Filed: 04/14/14 3 of 13. PageID #: 3 8. The Duration and Oakridge Pro Series Shingles with SureNail are manufactured in Ohio. JURISDICTION AND VENUE 9. This is an action for patent infringement arising under the patent laws of the United States, Title 35 of the United States Code. The Court has original subject matter jurisdiction of this action pursuant to 28 U.S.C and 1338(a). 10. Owens Corning is headquartered in this district, has conducted business in this district and has committed acts of infringement in this district. 11. Venue is proper in this district under 28 U.S.C. 1391(b)-(c) and 1400(b) because Owens Corning is subject to personal jurisdiction in this district and has committed acts of infringement in this district. A. The Patent-in-Suit DEFENDANTS INFRINGEMENT OF THE PATENT-IN-SUIT 12. United States Patent No. 8,137,757 (the Fast Felt 757 Patent ) was duly and legally issued by the United States Patent and Trademark Office on March 20, A copy of the Fast Felt 757 Patent is attached hereto as Exhibit A. 13. Fast Felt owns all right, title and interest in, and has standing to sue for infringement of, the Fast Felt 757 Patent. 14. Independent claims 1 and 7 of the Fast Felt 757 Patent are recited as follows: Claim 1. A method of making a roofing or building cover material, which comprises treating an extended length of substrate, comprising the steps of: depositing tab material onto the surface of said roofing or building cover material at a plurality 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. 3

4 Case: 3:14-cv DAK Doc #: 1 Filed: 04/14/14 4 of 13. PageID #: 4 Claim 7. A method of making a roofing or building cover material comprising the steps of: first depositing nail tab material at a plurality of locations on said roofing or building cover material, said nail tab material is substantially made of a polymeric material, and subsequently pressure adhering said nail tab material into nail tabs on said roofing or building cover material with a pressure roll. 15. In addition to claims 1 and 7, the Fast Felt 757 Patent includes dependent claims 2-6 and 8-9. For reference, dependent claims 2, 4 and 6 of the Fast Felt 757 Patent are recited as follows: Claim 2. A method of making a roofing or building cover material in accordance with claim 1, wherein said tab material is substantially a polymer material. Claim 4. A method of making a roofing or building cover material in accordance with claim 1, wherein said nail tabs are formed in a continuous strip. Claim 6. A method of making a roofing or building cover material in accordance with claim 1, wherein said tab material is pre-formed before contact with said lamination roll. 16. Claims 1-9 of the Fast Felt 757 Patent are presumed valid and enforceable pursuant to 35 U.S.C B. Owens Corning SureNail 17. Owens Corning manufactures and sells asphalt-based roofing cover materials which are commonly installed on the roofs of homes or other buildings. Typically, these roofing cover materials are constructed of a substrate material, consisting of fibers: typically (a) paper and wood (organic) fibers or (b) glass (inorganic) fibers made into an extended sheet, which is then saturated or coated with asphalt. The front end of an asphalt roofing products 4

5 Case: 3:14-cv DAK Doc #: 1 Filed: 04/14/14 5 of 13. PageID #: 5 manufacturing line, for both underlayment and shingle products, is substantially the same. In the production of asphalt-based materials, the base substrate sheet is unrolled from a large diameter roll and passed through a tank or a coater which contains or applies a hot ( 400 F) liquid asphalt. This results in the formation of an extended length of a hot, tacky, asphalt coated substrate sheet material. 18. Included among the asphalt roofing cover materials manufactured and sold by Owens Corning are products having a polymer nail reinforcement material pressed onto the substrate material. As noted in paragraph 7, Owens Corning roofing cover products with this polymerstrip of nail reinforcement material applied to it are sold under the brand name SureNail. 19. Owens Corning advertises SureNail as a breakthrough design: featuring a tough, woven engineered reinforcing fabric in the nailing area that promotes easy, fast and consistent nail gun fastening. 20. Owens Corning describes its SureNail as a strip made of polyester. Polyester is polyethylene terephthalate (PET), a long-chain polymer. 21. SureNail is advertised at the website: professional/shingles/surenail.aspx. C. Owens Corning s Later Filed Patents Describe Its SureNail Roof Shingles And The Method Of Manufacture 22. Owens Corning Intellectual Capital, LLC owns United States Patent No. 7,836,654, entitled, Shingle With Reinforced Nail Zone And Method Of Manufacturing (the OC 654 Patent ). 23. Owens Corning Intellectual Capital, LLC also owns United States Patent No. 8,430,983 (the OC 983 Patent ). 5

6 Case: 3:14-cv DAK Doc #: 1 Filed: 04/14/14 6 of 13. PageID #: The effective filing date of Fast Felt s 757 Patent predates that of the OC 654 and the OC 983 Patents because the Fast Felt 757 Patent claims priority to Provisional Application No. 60/474,194 filed on May 29, 2003, more than two (2) years before the Owens Corning OC 654 Patent filing date of August 5, Roof shingles that include SureNail that are manufactured by Owens Corning are covered by the OC 654 Patent. 26. Roof shingles that included SureNail that are manufactured by Owens Corning are marked with the OC 654 Patent. 27. On its website, Owens Corning represents that SureNail roofing cover materials are covered by the OC 654 Patent. 28. Figure 1 of the OC 654 Patent is described as a schematic elevational view of an apparatus and method for making roof cover materials according to the Owens Corning invention. 29. Figure 1 of the OC 654 Patent is reproduced below: 6

7 Case: 3:14-cv DAK Doc #: 1 Filed: 04/14/14 7 of 13. PageID #: Figure 1 of the OC 654 Patent is a schematic elevational view of an apparatus and method used to manufacture the Owens Corning roof cover materials that include SureNail. 31. Figure 1 of the OC 983 Patent is a schematic elevational view of an apparatus and method for manufacturing the Owens Corning roof cover materials that include SureNail. 32. Figure 1 of the OC 983 Patent is reproduced below: 33. In the OC 983 Patent, the application of a polymer fabric nail reinforcement tab material is described as follows: During shingle production, the woven or non-woven fabric may be pushed into the hot, filled-asphalt coating, such that some of the filled-asphalt bleeds up and around the individual fibers and fiber bundles of the fabric. This creates a positive mechanical bond between the fabric and the shingle substrate. (Col. 4, lns ). 7

8 Case: 3:14-cv DAK Doc #: 1 Filed: 04/14/14 8 of 13. PageID #: 8 D. SureNail Infringes The Fast Felt 757 Patent 1. Claims 1 and Owens Corning s roof shingles that include SureNail are roofing or building cover materials. 35. The method by which Owens Corning manufactures its roof shingles that include SureNail includes depositing a polymer nail reinforcement tab material onto the surface of the roofing or building cover material. 36. The method by which the polymer nail reinforcement tab material is deposited onto the surface of the roofing or building cover material for Owens Corning roof shingles having SureNail is shown in Figure 1 of the OC 654 Patent. 37. The method by which Owens Corning manufactures its roof shingles that have SureNail includes depositing polymer nail reinforcement tab material onto the surface of the roofing or building cover material at a plurality of nail tabs from a lamination roll. 38. The method by which the nail reinforcement tab material is deposited onto the surface of the roofing or building cover material at a plurality of nail tabs from a lamination roll for Owens Corning roof shingles having SureNail is shown in Figure 1 of the OC 654 Patent. 39. The method by which Owens Corning manufactures its roof shingles that have SureNail includes pushing the polymer nail reinforcement fabric tab material into the hot, filled-asphalt coating such that a positive mechanical bond is created between the nail reinforcement tab material and the shingle substrate. (See OC 983 Patent reference in paragraph 33 above.) 8

9 Case: 3:14-cv DAK Doc #: 1 Filed: 04/14/14 9 of 13. PageID #: The method by which tab material bonded to the surface of the roofing or building cover material for Owens Corning roof shingles having SureNail is shown in Figure 1 of the OC 654 Patent. 41. The method by which Owens Corning manufactures its roof shingles that have SureNail includes bonding by pressure between a roll and the surface of the roofing or building cover material. 42. The method by which bonding by pressure between a roll and the surface of the roofing and building cover material for Owens Corning roof shingles having SureNail is shown in Figure 1 of the OC 654 Patent. 2. Claim The method by which Owens Corning manufactures its roof shingles that have SureNail includes a nail reinforcement tab material which is a polymer material. 44. The nail reinforcement tab material used in the Owens Corning roof shingles having SureNail is described in the OC 654 Patent as follows: the tape 19 is formed from a polyester [or] a polyolefin, such as polypropylene or polyethylene. (See Col. 3, lns ). Each and every one of the nail reinforcement tab materials described above are polymer materials. 3. Claim The method by which Owens Corning manufactures its roof shingles that have SureNail includes a tab formed in a continuous strip. 46. The tab formed in a continuous strip in the Owens Corning roof shingles having SureNail is described in the OC 654 Patent as follows: A continuous strip of a reinforcement material or tape. (See Col. 3, lines ). 9

10 Case: 3:14-cv DAK Doc #: 1 Filed: 04/14/14 10 of 13. PageID #: Claim The method by which Owens Corning manufactures its roof shingles that have SureNail includes a tab material that is preformed before contact with a lamination roll. 48. The preformed tab material is shown in Figure 1 of the OC 654 Patent. E. Allegations of Infringement 49. Owens Corning has been, and is now, making, using, selling, offering for sale within the United States, and/or importing into the United States products including roofing cover products such as Duration and Oakridge Pro Series Shingles with SureNail. 50. Owens Corning has manufactured, made, had made, used, practiced, imported, sold and/or offered for sale products including roofing cover products that have SureNail that infringe, either literally or under the doctrine of equivalents, at least, claims 1, 2, 4, 6 and 7 of the Fast Felt 757 Patent. 51. Owens Corning has directly infringed and continues to directly infringe at least claims 1, 2, 4, 6 and 7 of the Fast Felt 757 Patent under 35 U.S.C. 271(a) by at least practicing the method described in those claims. 52. As a direct and proximate result of Owens Corning s infringement of the Fast Felt 757 Patent, Fast Felt has suffered, and will continue to suffer, serious irreparable injury for which Fast Felt is entitled to recover damages adequate to compensate it for such infringement, but, in no event, less than a reasonable royalty. 53. To the extent required by law, Fast Felt complied with the provisions of 35 U.S.C. 287 with respect to the 757 Patent. 54. Owens Corning publicly states it has a policy to appropriately respect the intellectual property of others by not knowingly infringing the valid and enforceable intellectual 10

11 Case: 3:14-cv DAK Doc #: 1 Filed: 04/14/14 11 of 13. PageID #: 11 property rights of others Fast Felt provided notices to Owens Corning of the Fast Felt 757 Patent in June 2012; each of the notices included a copy of the Fast Felt 757 Patent. After receiving no response, a follow-up letter seeking a response was sent three (3) months later, in September Despite having knowledge of the Fast Felt 757 Patent, Owens Corning continued its unlicensed and unauthorized infringement with no regard for the Fast Felt 757 Patent. This infringement continued despite an objectively high likelihood that Owens Corning s actions would constitute infringement of the Fast Felt 757 Patent. This objectively high likelihood of infringement was either known to Owens Corning, or so obvious that it should have been known to Owens Corning. To date, Owens Corning has not presented any competent advice of counsel upon which it has relied; nor has it presented any reasonable defense of non-infringement, invalidity, or unenforceability. Owens Corning s infringement of the Fast Felt 757 Patent under 35 U.S.C. 271(a) is therefore willful, deliberate, and objectively reckless. 57. Owens Corning s infringement of the Fast Felt 757 Patent has injured and will continue to injure Fast Felt unless and until this Court enters an injunction prohibiting further infringement and, specifically, enjoining Owens Corning s further manufacture, sale and use of the products, services and technologies that infringe the claimed methods and systems of the Fast Felt 757 Patent. PRAYER FOR RELIEF WHEREFORE, Fast Felt respectfully requests that this Court enter judgment in its favor and against Owens Corning and their respective subsidiaries, affiliates, assumed business 11

12 Case: 3:14-cv DAK Doc #: 1 Filed: 04/14/14 12 of 13. PageID #: 12 entities, agents, servants, employees and all persons in active concert or participation with Owens Corning and grant the following relief: A. Adjudge and decree that Defendants have been and are currently infringing the Fast Felt 757 Patent; B. Award damages to Fast Felt to compensate Fast Felt for each of Defendants unlawful actions set forth in Fast Felt s complaint pursuant to 35 U.S.C. 284; C. Award prejudgment interest on all damages awarded to Fast Felt from the date Defendants infringement of the Fast Felt 757 Patent began; D. Adjudge a decree that Defendants infringement of the Fast Felt 757 Patent has been willful; E. Increase the damages award up to three times the amount found or assessed pursuant to 35 U.S.C. 284; F. Determine that this patent infringement case is exceptional and award Fast Felt its costs and attorneys fees incurred in this action pursuant to 35 U.S.C. 285; G. Enter a permanent injunction prohibiting Defendants further infringement of the Fast Felt 757 Patent pursuant to 35 U.S.C. 283; and H. Award Fast Felt such other relief as the Court deems just and proper. 12

13 Case: 3:14-cv DAK Doc #: 1 Filed: 04/14/14 13 of 13. PageID #: 13 DEMAND FOR JURY TRIAL Fast Felt respectfully requests a trial by jury on all the issues triable thereby pursuant to Rule 38, Fed.R.Civ.P. Dated: April 14, 2014 Respectfully submitted, /s/ Jay A. Yurkiw Jay A. Yurkiw ( ) Porter Wright Morris & Arthur LLP 41 South High Street Columbus, OH Tel: (614) / Fax: (614) jyurkiw@poterwright.com Attorneys for Plaintiff Fast Felt Corporation Of Counsel: Raymond P. Niro (pro hac vice motion forthcoming) rniro@nshn.com Dean D. Niro (pro hac vice motion forthcoming) dniro@nshn.com Richard B. Megley, Jr. (pro hac vice motion forthcoming) megleyjr@nshn.com NIRO, HALLER & NIRO 181 West Madison, Suite 4600 Chicago, IL Tel: (312) / Fax: (312)