Paper 7
`Filed: July 1, 2016
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`STELLAR ENERGY AMERICAS, INC.,
`Petitioner,
`
`v.
`
`TAS ENERGY, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00424
`Patent RE44,079 E
`____________
`
`
`Before JOSIAH C. COCKS, MICHAEL J. FITZPATRICK, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`

`
`IPR2016-00424
`Patent RE44,079 E
`
`
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`I. INTRODUCTION
`
`A. Background
`
`
`
`Petitioner, Stellar Energy Americas, Inc. (“Stellar” or “Petitioner”),
`
`filed a Petition to institute an inter partes review of claims 5–7 and 19–33 of
`
`U.S. Patent No. RE44,079 E (Ex. 1101, “the ’079 patent.”). Paper 2
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`(“Pet.”). Patent Owner, TAS Energy, Inc. (“TAS” or “Patent Owner”) filed
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`a Preliminary Response (Paper 6, “Prelim. Resp.”)
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`An inter partes review may not be instituted unless the information
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`presented in the Petition shows “there is a reasonable likelihood that the
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`petitioner would prevail with respect to at least 1 of the claims challenged in
`
`the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we
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`conclude that the information presented in the Petition establishes a
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`reasonable likelihood that Petitioner will prevail in showing the
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`unpatentability of claims 5–7 and 19–33. Pursuant to 35 U.S.C. § 314 and
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`37 C.F.R. § 42.4(a), we hereby authorize an inter partes review to be
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`instituted as to claims 5–7 and 19–33.
`
`B. Related Matters
`
`The ’079 patent is a reissue of U.S. Patent No. 7,343,746. It is the
`
`subject of two lawsuits styled TAS Energy, Inc. v. Stellar Energy Americas,
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`Inc., Case No. 8:14-CV-3145-T-30MAP (M.D. Fla.) and TAS Energy, Inc. v.
`
`Direct Energy, Inc. et al., Case No. 4:15-cv-00512 (S.D. Tex.). Paper 5; see
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`Pet. 63. The ’079 patent is also the subject of two other Petitions for inter
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`partes review involving the same parties: IPR2016-00425 and IPR2016-
`
`2
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`

`
`IPR2016-00424
`Patent RE44,079 E
`
`
`00426.1 We further understand that related patents are the subject of the
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`
`
`following inter partes reviews: IPR2014-00161; IPR2014-00162; IPR2015-
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`00882; IPR2015-00886; IPR2015-01212; IPR2015-01214; IPR2015-01665;
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`IPR2016-00294; and IPR2016-00335. See Pet. 13; see Paper 5.
`
`C. The ’079 Patent
`
`The ’079 patent is directed to a method for chilling inlet air to a gas
`
`turbine power plant. Ex. 1101, 2:9–10. Figure 1, illustrated below, shows
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`an embodiment of the invention.
`
`As shown in Figure 1 above, the system includes air chiller 14 that
`
`lowers the temperature of inlet air 15a to provide lower temperature
`
`
`1 Each of Stellar’s three Petitions (i.e., IPR2016-00424, 00425 and 00426)
`challenges different claims of the ’079 patent.
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`
`
`3
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`IPR2016-00424
`Patent RE44,079 E
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`compressor feed air 15b. Ex. 1101, 10:7–20. Chilled compressor feed air
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`
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`15b is introduced to gas turbine compressor 32. Id. at 10:35–39. Storage
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`tank 18 stores chilling water. Id. at 11:3–7. During a charge cycle, top
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`inlet/outlet 20 of tank 18 expels heated water 16e to water chilling system
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`13. Id. at 12:6–16. Bottom inlet/outlet 22 receives chilled water 16a from
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`water chilling system 13. Id. During a discharge cycle, top inlet/outlet 20
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`receives heated water 16d from air chiller 14 and bottom inlet/outlet 22
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`discharges chilled water 16b to air chiller 14. Id. Providing chilled water to
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`air chiller 14 lowers the temperature of air fed to the gas turbine (which
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`includes compressor 32, combustor 34, and power turbine 36). Id. at 12:16–
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`21; 10:35–40.
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`D. Illustrative Claims
`
`Claims 5, 19, and 20 are independent. Each of claims 6, 7, and 21–33
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`depends from one of those independent claims. Claims 5 and 20 are
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`illustrative and are reproduced below (italics omitted):
`
`5.
`comprising:
`
`A method of chilling inlet air to a gas turbine,
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`a. a gas turbine that includes a gas turbine inlet;
`b. providing a system of circulating liquid chilling water
`solution wherein the water solution contains water plus an
`additive which is capable of reducing the freezing point of water;
`c. passing at least a portion of the liquid chilling water
`solution through a first chiller and then a second chiller, the
`liquid chilling water solution passing through the first chiller
`being lowered to a first temperature; and the liquid chilling water
`solution passing through the second chiller being lowered to a
`second temperature which is lower than the first;
`d. providing an inlet air chiller, comprising a cooling coil
`through which the liquid chilling water solution passes, for
`lowering the temperature of inlet air being fed to the gas turbine
`
`4
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`

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`IPR2016-00424
`Patent RE44,079 E
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`
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`compressor through heat transfer between the liquid chilling
`water solution passing through the cooling coil and the inlet air,
`and
`
`
`
`e. chilling the inlet air by directing the liquid chilling water
`solution through the cooling coil of the inlet air chiller to make
`heat transfer contact between the liquid chilling water and the
`inlet air.
`
`20. A method for chilling inlet air to a gas turbine,
`
`comprising:
`
`providing a system of circulating water including a
`chilling system having a first chiller, wherein water can pass
`through the first chiller, the water passing through the first chiller
`being lowered to a first temperature;
`providing an inlet air chiller for lowering the temperature
`of air being fed to a gas turbine compressor through heat transfer
`between the circulating water and the air;
`providing a storage tank which is operably connected to
`the system of circulating water, the storage tank containing a
`column of water characterized by a top and a bottom;
`during a charge cycle, removing water from the storage
`tank, passing at least a portion of the removed water through the
`chilling system and then introducing at least a portion of the
`removed water into the storage tank at a point proximate the
`bottom of the water column, wherein the average temperature of
`the water in the storage tank is lowered;
`during a discharge cycle, chilling the air by removing
`water from the storage tank from a point proximate the bottom
`of the water column and then passing at least a portion of the
`removed water through the inlet air chiller to make heat transfer
`contact between that portion of the removed water and the air,
`such that the temperature of the air is lowered;
`selecting a desired air temperature setpoint based on load
`requirements of the gas turbine; and
`adjusting the temperature of the air to the desired air
`temperature setpoint.
`
`5
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`

`
`IPR2016-00424
`Patent RE44,079 E
`
`
`
`E. The Prior Art
`
`
`
`Reference
`
`Date
`
`Exhibit No.
`
`John S. Andrepont et al., SUMMER
`PEAKING CAPACITY VIA CHILLED
`WATER STORAGE COOLING OF
`COMBUSTION TURBINE INLET AIR, 56-II
`Proceedings of the Am. Power
`Conference, 1–9 (“Andrepont”)
`
`William E. Stewart, Jr., Design
`Guide: Combustion Turbine Inlet Air
`Cooling Systems, 1–93 (“Stewart
`Design Guide”)
`
`Trane, Applications Engineering
`Manual: Multiple-Chiller-System
`Design and Control, SYS-APM001-
`EN, 1–98 (“Trane Manual”)
`
`I. S. Ondryas et al., Options in Gas
`Turbine Power Augmentation Using
`Inlet Air Chilling, 113 J. of Eng’g for
`Gas Turbines and Power, 1–9
`(“Ondryas”)
`
`Mornhed et al., Innovations in
`District Heating and Cooling 1984–
`1994 and Their Economic Impact,
`ASHRAE Transactions Symposia
`(“Mornhed”)
`
`U.S. Patent No. 5,465,585 issued to
`Mornhed et al. (“Mornhed Patent”)
`
`U.S. Patent No. 5,104,562 issued to
`Kardos et al. (“Kardos”)
`
`1994
`
`1120
`
`1999
`
`1121
`
`Mar. 2001
`
`1122
`
`1991
`
`1123
`
`1995
`
`1124
`
`Nov. 14, 1995
`
`1127
`
`Apr. 14, 1992
`
`1128
`
`6
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`

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`IPR2016-00424
`Patent RE44,079 E
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`
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`Reference
`
`Date
`
`Exhibit No.
`
`U.S. Patent No. 4,941,460 issued to
`Prochaska et al. (“Prochaska”)
`
`U.S. Patent No. 6,085,532 issued to
`Sibik (“Sibik”)
`
`
`
`Jan. 28, 1992
`
`1129
`
`July 11, 2000
`
`1130
`
`F. The Alleged Grounds of Unpatentability
`
`Stellar contends that claims 5–7 and 19–33 of the ’079 patent are
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`unpatentable under 35 U.S.C. on the following grounds:
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`Reference(s)
`
`Basis
`
`Claims
`Challenged
`
`Andrepont
`
`§ 102
`
`20, 31
`
`Andrepont and Mornhed
`
`§ 103
`
`Andrepont, Mornhed, and Mornhed Patent
`
`§ 103
`
`Andrepont, Mornhed, and Kardos
`
`§ 103
`
`5
`
`6
`
`7
`
`Andrepont and Stewart Design Guide
`
`§ 103
`
`19, 24, 30, 32
`
`Andrepont, Stewart Design Guide, and
`
`Trane Manual
`
`§ 103
`
`21, 25
`
`Andrepont and Ondryas
`
`§ 103
`
`22, 23
`
`Andrepont and Prochaska
`
`§ 103
`
`26–28
`
`Andrepont and Sibik
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`§ 103
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`29, 33
`
`In support of those above-noted grounds of unpatentability, Stellar
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`relies on the Declaration testimony of Dr. Douglas Reindl (Ex. 1118).
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`7
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`IPR2016-00424
`Patent RE44,079 E
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`
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`II. ANALYSIS
`
`A. Claim Construction
`
`
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`In an inter partes review, a claim in an unexpired patent shall be given
`
`its broadest reasonable construction in light of the specification of the patent
`
`in which it appears. See 37 C.F.R. § 42.100(b) (2013); see Cuozzo Speed
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`Techs. LLC v. Lee, No. 15–446, 2016 WL 3369425, at *12 (U.S. June 20,
`
`2016). Under that construction, claim terms are given their ordinary and
`
`customary meaning, as would be understood by one of ordinary skill in the
`
`art in the context of the entire patent disclosure. In re Translogic Tech., Inc.,
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`504 F.3d 1249, 1257 (Fed. Cir. 2007). Nevertheless, a “claim term will not
`
`receive its ordinary meaning if the patentee acted as his own lexicographer
`
`and clearly set forth a definition of the disputed claim term in either the
`
`specification or prosecution history.” CCS Fitness, Inc. v. Brunswick Corp.,
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`288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`Here, Stellar contends that all claim terms of the ’079 patent should be
`
`given their “plain meaning,” but does not make explicit that meaning for any
`
`term. Pet. 15. In response to Stellar’s contention, TAS states the following:
`
`There are at least 13 terms found in the ‘079 patent specification
`that are specifically defined. To the extent that the definitions
`given in the specification differ from the plain meaning, the
`terms should be given the meaning set forth in the specification.
`See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005)
`(en banc).
`For example, some of the claims at issue include the term
`“setpoint.” The ‘079 patent defines “setpoint” as “any
`predetermined point or event that results in the flowrate through
`the chillers and the coil being changed, or a change in the
`temperature of the water leaving the chiller.” Ex. 1101, ‘079
`patent at 21:58-61.
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`8
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`IPR2016-00424
`Patent RE44,079 E
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`PO Resp. 7–8.
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`
`
`
`
`
`
`We agree with TAS that the Specification conveys the meaning that
`
`TAS advocates for “setpoint.” It is not apparent, however, that Stellar
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`disagrees with that meaning. Furthermore, TAS does not direct our attention
`
`to specific portions of the Specification laying out a particular meaning for
`
`any other claim term. To that end, it is not apparent on the record before us
`
`what, if any, dispute exists between the parties in connection with the
`
`meaning of any claim term.
`
`
`
`For purpose of this Decision, we give the term “setpoint” the meaning
`
`advocated by TAS, and reproduced above. At this time, we have given all
`
`other terms their ordinary and customary meaning as would be understood
`
`based on the ’079 patent. We do not discern that there is any controversy
`
`between the parties as to the meaning of any claim term, and do not make
`
`explicit the construction for any other term. Cf. Vivid Techs., Inc. v. Am. Sci.
`
`& Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need
`
`be construed that are in controversy, and only to the extent necessary to
`
`resolve the controversy.”).
`
`B. Anticipation
`
`Stellar contends that claims 20 and 31 are anticipated by Andrepont. 2
`
`1. Overview of Andrepont
`
`Andrepont discloses the use of chilled water storage for combustion
`
`turbine (“CT”) inlet air cooling, including potential applications for “utility
`
`and non-utility CTs, for new and existing CTs, and for combined cycle as
`
`
`2 Claim 31 depends from claim 20.
`
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`well as simple cycle CTs.” Ex. 1120, 4.3 Andrepont expresses that cooling
`
`
`
`of the inlet air is desirable as “it is a characteristic of CTs that their rated
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`power output decreases significantly with increasing ambient air
`
`temperatures.” Id. Andrepont also explains that cool storage, also known as
`
`thermal energy storage (“TES”) (id. at 4), is designed to operate with “daily
`
`cycles (which are fully charged and discharged in 24 hours) or as weekly
`
`cycles (which are fully charged during off-peak weekend periods and
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`partially discharged and recharged cyclically during Monday through
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`Friday).” Id. at 5. Andrepont’s Figure 2 is reproduced below:
`
`
`
`Figure 2 above depicts a flow schematic for a CT inlet air cooling
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`system. Id. at 6. When desired, e.g., during peak demand for electric load,
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`chilled water is directed from the bottom of a water storage tank to air
`
`
`
`
`3 The page numbering referenced for Andrepont (Ex. 1120) is that appearing
`in the lower left corner of each page of the document.
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`10
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`IPR2016-00424
`Patent RE44,079 E
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`coolers to effect heat transfer between the water and air and reduce the
`
`
`
`temperature of inlet air to a CT. Id. at 5. The water, now warm, is then
`
`directed to the top of the water storage tank. Id. “During off-peak periods,
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`warm water is removed from the top of the tank, pumped to and chilled by
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`the refrigeration system, and returned to the bottom of the tank for use
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`during the next on-peak period.” Id. Andrepont also conveys that the inlet
`
`air “is desirably cooled to the 40 to 50°F range, i.e. cool enough to achieve
`
`substantial CT capacity increases.” Id. Andrepont further recognizes that
`
`“chilled water storage temperatures are practical down to 39°F (with a
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`typical and constant discharge water temperature of 40°F being sustainably
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`achieved through the discharge cycle).” Id.
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`2. Discussion—Anticipation
`
`Claims 20 and 31 are each directed to a method for chilling inlet air to
`
`a gas turbine. Stellar explains in detail where it believes all of the features
`
`of claims 20 and 31 are found in Andrepont. Pet. 16–23. 4 TAS contends
`
`that Andrepont lacks the following feature required by claim 20: “selecting a
`
`desired air temperature setpoint based on load requirements of the gas
`
`turbine.” Prelim. Resp. 11–14. On the record before us, and for the reasons
`
`that follow, we do not agree with TAS that the noted feature is absent from
`
`Andrepont.
`
`
`
`Stellar contends that the required “setpoint” is met by Andrepont’s
`
`disclosure of a desired range of air temperatures between “40 and 50°F,”
`
`which, as explained by Andrepont, are temperatures satisfactorily cool “to
`
`
`4 We understand that Andrepont’s CT constitutes a gas turbine. There is no
`dispute in that regard on the record before us.
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`achieve substantial CT capacity increases.” Pet. 20–21; see Ex. 1120, 4. In
`
`
`
`that respect, Andrepont clearly conveys that any particular temperature value
`
`between 40 and 50°F may be selected to provide the requisite cooling. For
`
`instance, it is apparent from Andrepont’s Figure 1 that the capacity of a CT
`
`exceeds 100% when the inlet air temperature has been cooled to 40°F (Ex.
`
`1120, 4), and that 40°F is a “typical” water temperature (id. at 5). In that
`
`respect, Andrepont clearly conveys that when it is desired that the air inlet
`
`temperature be 40°F, i.e., when there is a “peak demand for electric load,”
`
`chilled water of appropriate temperature leaves the chiller package and is
`
`circulated through Andrepont’s system to effect cooling of the inlet air. See,
`
`e.g., id. at 4–5. TAS does not explain meaningfully why the selection of, for
`
`instance, 40°F in response to the peak demand does not satisfy the required
`
`“setpoint,” i.e., a predetermined point or event that results in a change in the
`
`temperature of the water leaving the chiller. It does not follow, as TAS
`
`evidently argues (see Prelim. Resp. 12), that Andrepont’s recognition of
`
`additional temperature values, e.g., 41 to 50°F, as being suitable somehow
`
`negates Andrepont’s disclosure of a predetermined point or event that effects
`
`a change in the temperature of water leaving the chiller. On this record,
`
`Andrepont accounts sufficiently for the required “setpoint.”
`
`
`
`TAS also posits that even if Andrepont does disclose the claimed
`
`setpoint, that setpoint allegedly is not “based on load requirements of the gas
`
`turbine.” Prelim. Resp. 12. Yet, as noted above, Andrepont unambiguously
`
`discloses that the reduction of a CT’s air inlet temperature is accomplished
`
`when there is “peak demand for electric load” and that the cooling of the air
`
`“achieve[s] substantial CT capacity increases.” Ex. 1120, 4. At this time,
`
`we are satisfied that cooling the air inlet temperature to effect CT capacity
`
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`increase based on peak demand for electric load constitutes the selection of
`
`
`
`an air temperature setpoint “based on load requirements of the gas turbine.”
`
`
`
`We have considered the record before us, including Stellar’s Petition
`
`and TAS’s Preliminary Response. We are persuaded that Stellar has
`
`demonstrated a reasonable likelihood of success in its challenge to claims 20
`
`and 31 as anticipated by Andrepont.
`
`C. Obviousness
`
`Stellar contends that claims 5–7, 19, 21–30, 32, and 33 are
`
`unpatentable over Andrepont taken with one or more of Mornhed, the
`
`Morhned Patent, Kardos, Stewart Design Guide, the Trane Manual,
`
`Ondryas, Prochaska, and Sibik. In support of its grounds of unpatentability
`
`premised on obviousness, Stellar relies on the Declaration of Dr. Reindl (Ex.
`
`1118). We consider first, TAS’s challenges to that Declaration in
`
`connection with Stellar’s obviousness contentions (Prelim. Resp. 15–19).
`
`1. The Reindl Declaration
`
`According to TAS, the Board should decline to consider Dr. Reindl’s
`
`Declaration on the theory that he “failed to explain the legal framework of
`
`obviousness.” Prelim. Resp. 15. To that end, TAS contends the following:
`
`Dr. Reindl’s Declaration and testimony fail to explain the legal
`framework he used in analyzing the obviousness issue. Simply
`put, there is no way for the Board to know at this stage whether or
`not Dr. Reindl used the correct legal framework. Therefore, Patent
`Owner respectfully requests the Board not consider Dr. Reindl’s
`obviousness
`testimony. Without Dr. Reindl’s obviousness
`testimony, Petitioner cannot meet its burden for institution on any
`ground based on 35 U.S.C. § 103.
`
`Id. at 19.
`
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`We observe that obviousness is a legal determination made on the
`
`
`
`basis of underlying factual inquiries including: (1) the scope and content of
`
`the prior art; (2) the differences between the claimed invention and the prior
`
`art; (3) the level of ordinary skill in the art; and (4) secondary
`
`considerations, i.e. objective evidence of unobviousness. See Graham v.
`
`John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966). Rule 702 of the
`
`Federal Rules of Evidence provides that “[a] witness who is qualified as an
`
`expert by knowledge, skill, experience, training or education may testify in
`
`the form of an opinion or otherwise if . . . the expert’s scientific, technical,
`
`or other specialized knowledge will help the trier of fact to understand the
`
`evidence or to determine a fact in issue.” In that respect, a witness qualified
`
`as an expert should be competent to offer testimony on underlying factual
`
`issues that would assist the trier of fact—here the panel—in making the legal
`
`determination of obviousness. To the extent that a declarant does or does
`
`not opine on the ultimate and legal question of obviousness, it is immaterial,
`
`as it is the role of the panel to decide obviousness, not the declarant.
`
`
`
`Here, Dr. Reindl testifies as to his qualifications and professional
`
`experience (Ex. 1118, 5–6), and TAS does not contend that Dr. Reindl is
`
`incompetent to testify in connection with such matters as the content of the
`
`prior art, the level of ordinary skill in the art, and reasons for combining the
`
`teachings of the prior art. Indeed, Dr. Reindl has done so. See Ex. 1118. To
`
`the extent Dr. Reindl’s testimony omits explanation of the “legal framework
`
`of obviousness,” it is of no moment in considering his testimony as to the
`
`factual record to be evaluated in an assessment of obviousness.
`
`Accordingly, we decline to discount or disregard Dr. Reindl’s testimony in
`
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`evaluating whether Stellar has shown a reasonable likelihood in its
`
`
`
`challenges to the pertinent claims of the ’079 based on obviousness.
`
`2. Obviousness Based on Andrepont and Mornhed
`
`Stellar contends that independent claim 5 is unpatentable over
`
`Andrepont and Morhned, and that claims 6 and 7 are unpatentable over those
`
`references taken with the Mornhed Patent and Kardos, respectively.5 With
`
`recourse to the content of the prior art, and the Declaration testimony of Dr.
`
`Reindl, Stellar explains where it believes all the features required by claims
`
`5–7 are disclosed, and the reasons a person of ordinary skill in the art would
`
`have combined the teachings of the references to arrive at the methods of
`
`those claims. TAS does not agree. Prelim. Resp. 19–23.
`
`Claim 5, like claim 20 is drawn to a method of chilling inlet air to a
`
`gas turbine. Stellar contends that every step required by claim 5 is set forth
`
`in Andrepont, with the exception of the following: “providing a system of
`
`circulating liquid chilling water solution wherein the water solution contains
`
`water plus an additive which is capable of reducing the freezing point of
`
`water.” Pet. 30–32. To account for that feature, Stellar relies on Mornhed.
`
`Id.
`
`a. Overview of Mornhed
`
`Mornhed describes innovations in “district heating and cooling” from
`
`1984–1994. Ex. 1124, 1. District cooling technology distributes cooling to
`
`multiple buildings in a defined district or geographic area rather than using
`
`individual building cooling systems. Id. In looking at technical innovations
`
`during the period studied, Mornhed noted “in many cases technology
`
`
`5 Claims 6 and 7 depend from claim 5.
`
`15
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`developed for other fields has been successfully applied” to district cooling.
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`Id. Mornhed expresses the following with respect to the development of
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`large-scale chilled-water storage in district cooling system:
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`In the mid-1980s, tanks were developed in which chilled
`water would stratify down to a temperature of 39°F (3.9°C)
`(highest density of water). In stratified storage tanks, cold water
`is stored in the bottom of the tank. As it is used for cooling, it is
`returned warm to the top of the tank. The water is charged and
`discharged as laminar flow at very low flow rates. Because of
`the higher density of the colder water and the low charging
`velocity, the water stratifies in the tank and only a 2- to 3-foot
`(p.61- to 0.91-meter) disturbed layer—a thermocline—separates
`the warm and cold water [citation omitted].
`The drawback with these tanks is that users with
`increasingly common 34°F (1.1°C) chilled-water systems cannot
`be served from the tank. A recent development (inexpensive
`freezing-point depressant) has solved the problem and produced
`tanks that stratify to 25°F (-3.9°C) or less . . . The low-
`temperature stratified storage offers many improvements over
`the traditional stratified tank:
` doubling of the thermal capacity through an increase in
`temperature differential—30°F/54°F instead of 42°F/54°F (-
`0.2°C/12.2°C instead of 5.6°C/12.2°C),
` no additional water treatment required that will increase cost,
` no corrosion inhibitor required to protect the tank,
` Can be used with conventional as well as low-temperature
`chillers, and
` less expensive per ton-hour than other thermal storage
`systems.
`
`Ex. 1124, 3–4.
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`b. Discussion—Andrepont and Mornhed
`
`As discussed above, Mornhed recognizes that thermal storage tanks
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`with chilled water that was stratified down to a temperature 39°F, e.g., such
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`that disclosed in Andrepont, were known to be ripe for improvement though
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`the use of “freezing-point depressant[s].” Id. at 3. Indeed, Mornhed clearly
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`relays that the use of those depressants provided “many improvements over
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`the traditional stratified tank.” Id. Stellar and Dr. Reindl urge that a person
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`of ordinary skill in the art would have had reason to modify Andrepont to
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`incorporate the system of Mornhed employing freezing-point depressants to
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`harness the very benefits touted by Mornhed. Pet. 31–32; Ex. 1118 ¶ 68.
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`For purposes of this Decision, Petitioner’s reasoning is sufficient.
`
`TAS generally disagrees that a skilled artisan would have combined
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`the teachings of Andrepont and Mornhed. Indeed, in that respect, TAS
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`contends that there is “no evidence” that a person of ordinary skill would
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`have combined the teachings of Andrepont and Mornhed. Prelim. Resp. 23.
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`That contention, however, simply does not address appropriately the distinct
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`and particular benefits over traditional stratified tanks, such as Andrepont,
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`that Mornhed unambiguously associates with the particular use of freezing-
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`point depressants.
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`TAS’s view that Andrepont “teaches away from using . . . chilled-
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`water at least than 40°F” lacks adequate support on this record. That
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`Andrepont recognizes lower water temperatures “may initiate potentially
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`damaging icing within the CT inlet from the resultant condensation” (Ex.
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`1120, 4) is not a teaching away from using such lower water temperatures.
`
`That Andrepont recognizes a potential known problem in the art, and
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`Mornhed address that very problem with a solution, does not suggest that the
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`teachings of the references are somehow not combinable. Indeed, it suggests
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`the opposite, that a skilled artisan would have combined their teachings.
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`Having considered the record before us, we determine that Stellar has
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`
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`shown a reasonable likelihood of success in its challenges to claims 5–7
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`based on the prior art, including Andrepont and Mornhed.
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`3. The Remaining Grounds
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`We have considered the record evidence offered in support of Stellar’s
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`proposed grounds of unpatentability applied to claims 19, 21–30, 32, and 33.
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`We have also considered TAS’s Preliminary Response opposing those
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`grounds. See Prelim. Resp. 24–32. TAS’s arguments generally mirror those
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`discussed above, and with which, on this record, we find unavailing.
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`For instance, in connection with claim 19, we are not persuaded that
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`Andrepont taken with Stewart Design Guide fails to disclose the “setpoint”
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`required by claim 19. See Prelim. Resp. 24. We also are not persuaded, for
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`the reasons given above, that Andrepont does not convey control of inlet air
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`temperature “based on load requirements,” as urged by TAS. See id. at 25.
`
`We also take note of TAS’s contention that “Stellar has utterly failed
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`to provide reasoned and supported analysis that would lead to institution of
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`claims 21–30 and 32–33.” Id. at 26. That contention does not reflect due
`
`consideration of the record at hand. For instance, Stellar reasons that a
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`skilled artisan would have combined the teachings of Andrepont and Stewart
`
`Design Guide “to adjust the temperature of the air to maintain the desired
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`gas turbine output” and “to obtain predictable results . . . e.g., to meet
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`peaking capacity requirement[s].” Pet 44–45. That reasoning is echoed in
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`Dr. Reindl’s testimony. See Ex. 1118 ¶¶ 78–80. In another instance, Stellar
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`take the view that the record sets forth that one of ordinary skill would have
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`combined Andrepont and Ondryas “to obtain predictable results . . . e.g.,
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`cooling ambient air to meet a predetermined psychrometric property.” Pet.
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`56–57 (citing Ex. 1118 at ¶¶ 89–94, Ex. 1120, 4; Ex. 1123, 2, 7 and KSR
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`
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`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).) TAS’s generalization
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`that Stellar has “utterly failed” to provide reasoning in support of its
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`grounds, does not persuade us that the reasoning that was provided, at this
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`time, should be dismissed or disregarded.
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`We conclude that Stellar has shown a reasonable likelihood of
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`prevailing in its challenge to claims 19, 21–30, 32, and 33 on the grounds of
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`unpatentability presented in the Petition.
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`III. CONCLUSION
`
`Having considered the Petition, its underlying supporting evidence,
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`and TAS’s Preliminary Response, we determine that Stellar has shown a
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`reasonable likelihood that claims 5–7 and 19–33 are unpatentable, and, thus,
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`has met its burden of showing a reasonable likelihood of prevailing with
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`respect to at least one claims of the ’079 patent.
`
`IV. ORDERS
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`
`
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`After due consideration of the record before us, it is:
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`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
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`review is hereby instituted on the grounds that:
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`(A) Claims 20 and 31 are unpatentable under 35 U.S.C. § 102
`
`as anticipated by Andrepont;
`
`(B) Claim 5 is unpatentable under 35 U.S.C. § 103 for
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`obviousness over Andrepont and Mornhed;
`
`(C) Claim 6 is unpatentable under 35 U.S.C. § 103 for
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`obviousness over Andrepont, Mornhed, and the Mornhed
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`Patent;
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`(D) Claim 7 is unpatentable under 35 U.S.C. § 103 for
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`obviousness over Andrepont, Mornhed, and Kardos;
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`(E) Claims 19, 24, 30, and 32 are unpatentable under 35 U.S.C.
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`§ 103 for obviousness over Andrepont and Stewart Design
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`Guide;
`
`(F) Claims 21 and 25 are unpatentable under 35 U.S.C. § 103
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`for obviousness over Andrepont, Stewart Design Guide, and
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`Trane Manual;
`
`(G) Claims 22 and 23 are unpatentable under 35 U.S.C. § 103
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`for obviousness over Andrepont and Ondrynas;
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`(H) Claims 26–28 are unpatentable under 35 U.S.C. § 103 for
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`obviousness over Andrepont and Prochaska; and
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`(I) Claims 29 and 33 are unpatentable 35 U.S.C. § 103 for
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`obviousness over Andrepont and Sibik;
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`
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`FURTHER ORDERED that no other grounds are authorized for inter
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`partes review; and
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`
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37
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`C.F.R. § 42.4, notice is hereby given of the institution of a trial. The trial
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`will commence on the entry date of this decision.
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`IPR2016-00424
`Patent RE44,079 E
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`For PETITIONER:
`
`Steven Schwarz
`sjschwarz@venable.com
`
`Tamatane Aga
`tjaga@venable.com
`
`
`
`For PATENT OWNER:
`
`Jonathan Pierce
`Jpierce@porterhedges.com
`
`
`
`Derek Forinash
`dforinash@porterhedges.com
`
`
`
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