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IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

KIRSCH RESEARCH AND 

DEVELOPMENT, LLC, 

Plaintiff, 

v. 

IKO INDUSTRIES, INC.; 

IKO INDUSTRIES LTD., 

Defendants. 

Civil No. 6:20-cv-00317-ADA 

JURY TRIAL DEMANDED 

PATENT CASE 

DEFENDANTS’ NOTICE OF SUPPLEMENTAL AUTHORITY RE CLAIM 

CONSTRUCTION AND IN SUPPORT OF ITS PENDING MOTIONS 

Pursuant to the Court’s Order Governing Proceedings in Patent Cases, Defendants IKO 

Industries, Inc. and IKO Industries LTD (“Defendants”) respectfully submit this Notice of 

Supplemental Authority relevant to the construction of disputed terms of U.S. Patent No. 

6,308,482 (the “’482 Patent”) and regarding two of Defendants’ motions pending before the Court. 

An EDTX Court Has Issued a Markman Order Regarding the ’482 Patent 

On July 19, 2021, Judge Schroeder in the Eastern District of Texas, Texarkana Division, 

issued an Order construing disputed terms of the ’482 Patent. Kirsch Research and Development, 

LLC v. DuPont de Nemours, Inc. et al., No. 5:20-CV-00057-RWS (E.D. Tex.), Dkt. 276. The 

authority is attached as Exhibit A to this Notice.1

 The Order construes the disputed terms as 

 

1

 A Notice of Supplemental Authority is procedurally proper because the Court held a Markman

hearing on April 29, 2021, but no claim construction order has been issued in this case or any case 

involving the ’482 Patent. Moreover, the Court’s July 19, 2021, order in the related BlueLinx 

matter suggests that it is still in the pre-Markman phase. See Exhibit B at 8 (denying BlueLinx’s 

direct infringement challenge as “untimely” because “BlueLinx asks the Court to engage in preMarkman claim construction and resolve that construction in its favor, this is premature.”). To the 

extent the Court determines that claim construction in IKO’s case is post-Markman, Defendants 

reserve the right to file a Motion for Reconsideration. 

Case 6:20-cv-00317-ADA Document 66 Filed 07/22/21 Page 1 of 4
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follows: 

’482 Patent Claim Term Construction 

Preamble: “A roofing underlayment 

positioned between a roof support 

structure and an overlayment” 

The entire preamble of claim 1 of the ’482 patent is 

limiting. 

(Dkt. 276, at 44) 

“waterproofing” / “waterproof” “preventing liquid water from passing through” / 

“prevents liquid water from passing through” 

(Dkt. 276, at 48) 

“weather-resistant barrier” “barrier for preventing liquid water and other external 

weather elements from passing through” 

(Dkt. 276, at 54) 

“cross-laminated strands” “strands bonded together where some of the strands 

are oriented at right angles to other strands” 

(Dkt. 276, at 58) 

“slip-resistant material” “polypropylene or similar material that provides slipresistance in wet or dry conditions” 

(Dkt. 276, at 62) 

“by extrusion lamination” “by being melted in an extruder, and forced onto the 

reinforcing scrim through a die of the extruder” 

(Dkt. 276, at 67) 

“the thermoplastic layer may include 

polyethylene or polypropylene” / “the 

thermoplastic layers may include 

polyethylene or polypropylene” 

“the thermoplastic layer includes at least polyethylene 

or polypropylene” / “the thermoplastic layers includes 

at least polyethylene or polypropylene” 

(Dkt. 276, at 70) 

The Court Granted Defendant BlueLinx’s Motion to Dismiss Kirsch’s Induced and Willful 

infringement Claims 

 This Court recently granted Defendant BlueLinx Corporation’s motion to dismiss Kirsch’s 

claims of induced and willful infringement under Rule 12(b)(6). Kirsch Research and 

Development, LLC v. BlueLinx Corporation, No. 6:20-cv-00316-ADA (W.D. Tex.), Dkt. No. 68 

at 8. The authority is attached as Exhibit B to this Notice. 

Case 6:20-cv-00317-ADA Document 66 Filed 07/22/21 Page 2 of 4
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Defendants in this case filed a substantively identical motion to dismiss pursuant to Rule 

12(b)(6) on September 17, 2020, which they renewed on October 15, 2020. See Dkt. Nos. 19, 30, 

35, 37. Defendants’ motion remains unresolved. 

Four Petitions for IPR Have Been Filed Against the Patent-in-Suit 

Two additional petitions for Inter Partes Review (“IPR”) have been filed against the 

expired asserted patent in this case—U.S. Patent No. 6,308,482 (the “’482 Patent”)—both of which 

Kirsch failed to bring the attention of the Court as required by this Court’s Order Governing Patent 

Proceedings. See OGP, Version 3.4, General Issues, ¶ 5. On June 24, 2021, Petitioner Atlas 

Roofing Corporation filed a petition in IPR2021-01181. Also on June 24, 2021, Petitioner Epilay, 

Inc. filed a petition in IPR2021-01183. 

There are now two instituted IPRs and two petitions for IPR pending against the ’482 

Patent. One of the instituted IPRs is statutorily required to result in a Final Written Decision before 

the scheduled trial date of March 14, 2022. The table below summarizes the four pending 

proceedings: 

IPR No. Petitioner Filing 

Date 

Institution 

Date 

Final Written 

Decision 

IPR2020-01389 Owens Corning Roofing 

& Asphalt, LLC 

Jul. 29, 2020 Feb. 18, 2021 Feb. 18, 2022 

IPR2021-00192 GAF Materials LLC Nov. 10, 2020 May 25, 2021 May 25, 2022 

IPR2021-01181 Atlas Roofing 

Corporation 

Jun. 24, 2021 Pending Pending 

IPR2021-01183 Epilay, Inc. Jun. 24, 2021 Pending Pending 

More than ten months ago, Defendants filed a Motion to Stay Pending Resolution of the 

Related ITC Proceeding and/or Inter Partes Review of the Patent-In-Suit. See Dkt. No. 22 

(September 17, 2020 “Motion to Stay”). Multiple district courts have elected to stay the cases 

Case 6:20-cv-00317-ADA Document 66 Filed 07/22/21 Page 3 of 4
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involving the ’482 Patent in view of one or more of these pending IPRs. See Dkt. Nos. 49, 63. 

Defendant’s motion remains unresolved. 

Dated: July 22, 2021 FISH & RICHARDSON P.C. 

By: /s/ Michael R. Ellis 

Neil J. McNabnay 

njm@fr.com 

Texas Bar No. 24002583 

Ricardo J. Bonilla 

Texas Bar No. 24082704 

rbonilla@fr.com 

Michael R. Ellis 

Texas Bar No. 24039623 

ellis@fr.com 

FISH & RICHARDSON P.C. 

1717 Main Street 

Suite 5000 

Dallas, TX 39007 

(214) 747-5070 (Telephone) 

(214) 747-2091 (Facsimile) 

Attorneys for Defendants 

IKO Industries, Inc. and IKO Industries Ltd. 

CERTIFICATE OF SERVICE 

I hereby certify that a true and correct copy of this document has been served on July 22, 

2021, to all counsel of record who are deemed to have consented to electronic service via the 

Court’s CM/ECF system. 

/s/ Michael R. Ellis 

Michael R. Ellis 

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