Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 44
`Entered: June 26, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERAL ELECTRIC COMPANY,
`Petitioner,
`
`v.
`
`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00533
`Patent 8,511,605 B2
`____________
`
`Before HYUN J. JUNG, SCOTT A. DANIELS, and
`GEORGE R. HOSKINS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 44
`Entered: June 26, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERAL ELECTRIC COMPANY,
`Petitioner,
`
`v.
`
`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00533
`Patent 8,511,605 B2
`____________
`
`Before HYUN J. JUNG, SCOTT A. DANIELS, and
`GEORGE R. HOSKINS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2016-00533
`Patent 8,511,605 B2
`
`I.
`
`INTRODUCTION
`
`A. Background
`General Electric Company (“Petitioner” or “GE”) filed a Petition
`requesting inter partes review of claims 1–6 and 12–16 of U.S. Patent No.
`8,511,605 B2 (Ex. 1001, “the ’605 patent”). Paper 1 (“Pet.”). GE’s Petition
`is supported by declarations from Dr. Reza Abhari (Ex. 1003, “Abhari
`Declaration,” and Ex. 1036, “Abhari Reply Declaration”). Pet. 4, Pet. Reply
`10. United Technologies Corp. (“Patent Owner” or “UTC”) filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). On June 30, 2016, the
`Board instituted a trial, determining that GE had shown a reasonable
`likelihood of prevailing on at least one of the challenged claims of the ’605
`patent. Inst. Dec. 2.
`After institution of trial, UTC filed a Patent Owner Response. Paper
`15 (“PO Resp.”). GE entered subsequently a Reply. Paper 26 (“Pet.
`Reply”). In a motion authorized by the Board, UTC moves to strike certain
`portions of the Abhari Reply Declaration and GE’s Reply. Paper 32. GE
`provided a rebuttal to UTC’s motion. Paper 36.
`Notably, UTC disclaimed claims 1–6 and 12–14 of the ’605 patent
`leaving only claims 15 and 16 at issue in this proceeding. PO Resp. 1.1
`A hearing for IPR2016-00533 and other proceedings was held on May
`4, 2017. The transcript of the hearing has been entered into the record.
`Paper 43 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This final written
`decision is issued pursuant to 35 U.S.C. § 318(a).
`
`
`1 UTC filed a Disclaimer under 37 C.F.R. § 1.321(a) of claims 1–6 and 12–
`14 in the ’605 patent with the USPTO on October 14, 2016.
`
`2
`
`
`
`
`IPR2016-00533
`Patent 8,511,605 B2
`
`
`GE has shown by a preponderance of the evidence that claims 15 and
`16 of the ’605 patent are unpatentable, and UTC’s motion to strike is denied
`as moot.
`B. Additional Proceedings
`In addition to this petition, GE has filed a petition challenging the
`patentability of claims 1, 2, and 7–11 of the ’605 patent. See IPR2016-
`00531. GE and UTC have not identified any litigation involving the ’605
`patent. Pet. 1, Paper 5, 2.
`C. The ’605 Patent
`The ’605 patent issued August 20, 2013 from an application filed May
`31, 2012, and claims priority as a continuation-in-part from application No.
`12/131,876, filed June 2, 2008, now U.S. Pat. No. 8,128,021. Ex. 1001,
`cover page. The ’605 patent is titled “Gas Turbine Engine With Low Stage
`Count Low Pressure Turbine.” Id. at 1:1–2. Figure 1A, reproduced below,
`illustrates the invention:
`
`Figure 1A depicts a partial fragmentary schematic view of gas
`turbofan engine 10 suspended from engine pylon 12. Id. at 3:32–34.
`Turbofan 10 includes a fan within fan nacelle F and a core engine within
`
`
`
`3
`
`
`
`IPR2016-00533
`Patent 8,511,605 B2
`
`core nacelle C. Id. at 3:36–39, Fig. 1A. In operation, fan blades 34 suck air
`into fan nacelle F, which at least partially surrounds core nacelle C. Id. at
`3:66–67, Fig. 1A. Air passes both into the core engine (core air flow) and
`around the core engine (bypass air flow). Id. at 4:31–34. The core air flow
`is compressed, mixed with fuel and combusted, expanding first through high
`pressure turbine 28, then low pressure turbine 18, and expelled via core
`nozzle 43 to provide thrust for the aircraft. Id. at 3:66–4:14. An aspect of
`such turbofan engines to keep in mind is that low pressure turbine 18 in the
`core drives the fan either directly or via a gear system. Id. at 3:35–41, 51–
`53. The bypass air flow around core nacelle C also provides engine thrust
`and certain efficiencies, particularly at cruise operation of the aircraft. See
`id. at 4:42–45.
`In described embodiments relevant to the claims remaining in this
`proceeding, the specification states that “the low pressure turbine 18 has a
`pressure ratio that is greater than [about] 5.” See id. at 3:53–55, 58–59.
`D. Challenged Claims
`The remaining challenged claims, 15 and 16, each depend directly
`from claim 1, now disclaimed. Claims 1, 15 and 16 are reproduced below:
`1. A gas turbine engine comprising:
`a gear train defined along an engine centerline axis;
`a spool along said engine centerline axis which drives said gear
`train, said spool includes a low stage count low pressure
`turbine
`a fan rotatable at a fan speed about the centerline axis and driven
`by the low pressure turbine through the gear train, wherein
`the fan speed is less than a speed of the low pressure turbine;
`a core surrounded by a core nacelle defined about the engine
`centerline axis;
`
`4
`
`
`
`IPR2016-00533
`Patent 8,511,605 B2
`
`
`a fan nacelle mounted at least partially around said core nacelle
`to define a fan bypass airflow path for a fan bypass airflow,
`wherein a bypass ratio defined by the fan bypass passage
`airflow divided by airflow through the core is greater than
`about ten (10).
`15. The engine as recited in claim 1, wherein said low pressure
`turbine defines a low pressure turbine pressure ratio that is
`greater than about five (5).
`16. The engine as recited in claim 1, wherein said low pressure
`turbine defines a low pressure turbine pressure ratio that is
`greater than five (5).
`Ex. 1001, 7:43–8:7, 8:43–50 (emphases added).
`E. The Alleged Ground of Unpatentability
`GE contends that the challenged claims are unpatentable on the
`following specific ground.2
`References
`Basis
`Wendus3
`§ 102
`
`
`Claims Challenged
`15 and 16
`
`CLAIM CONSTRUCTION
`
`II.
`A. Legal Standard
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`
`
`2 GE supports its challenge with the Abhari Declarations (Exs. 1003, 1036).
`See infra.
`3 Bruce E. Wendus et al., Follow-On Technology Requirement Study for
`Advanced Subsonic Transport (Aug. 2003) (Ex. 1005).
`
`5
`
`
`
`IPR2016-00533
`Patent 8,511,605 B2
`
`
`Under the broadest reasonable construction standard, claims are to be
`given their broadest reasonable interpretation consistent with the
`specification, and the claim language should be read in light of the
`specification as it would be interpreted by one of ordinary skill in the art. In
`re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Also,
`we must be careful not to read a particular embodiment appearing in the
`written description into the claim, if the claim language is broader than the
`embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
`(“[L]imitations are not to be read into the claims from the specification.”).
`B. Low Pressure Turbine Ratio
`Although GE proposed various claim constructions in their Petition
`(Pet. 12–22), the only claim term dispute relevant to claims 15 and 16 is “a
`low pressure turbine ratio.” GE argues that a person of ordinary skill in the
`art would understand “low pressure turbine ratio” means “the ratio of the
`pressure at the inlet of the low pressure turbine section to the pressure at the
`outlet of the low pressure turbine section.” Pet. 17–18 (emphasis added)
`(citing Ex. 1003 ¶ 52). GE contends, specifically, that the broadest
`reasonable interpretation of measurement of “low pressure turbine ratio”
`includes the pressure drop measured across not only the low pressure
`turbine, but also across the turbine exhaust case (the “TEC”). Pet. Reply 4–
`8.
`
`UTC on the other hand, asserts that the term should be interpreted
`consistent with the specification so that the low pressure turbine 18 pressure
`ratio “is pressure measured prior to inlet of low pressure turbine 18 as
`related to the pressure at the outlet of the low pressure turbine 18 prior to
`exhaust nozzle.” PO Resp. 10 (citing Ex. 1001, 4:24–27).
`
`6
`
`
`
`IPR2016-00533
`Patent 8,511,605 B2
`
`
`The main difference between the parties’ constructions is that GE
`includes the word “section” in its interpretation, as in “outlet of the low
`pressure turbine section,” so as to include the TEC. Pet. 17–18. (emphasis
`added) On the other hand, UTC contends that the word “section” is found
`nowhere in the specification of the ’605 patent, it is improperly broadening,
`and not an appropriate construction. Compare id., with PO Resp. 2. As
`discussed below, GE’s position that the broadest reasonable claim
`construction includes the TEC, as part of the structure across which the low
`pressure turbine ratio is measured, is not persuasive.
`Figure 1B of the ’605 patent reproduced below, illustrates in partial
`section-view, a gas turbine aircraft engine.
`
`
`Figure 1B, above, on the right-hand side of the figure, depicts the
`structural arrangement of components at the aft end of the engine including
`low pressure turbine 18, low pressure turbine case 54, and TEC 56.
`Ex. 1001, 5:3–9.
`Claim construction analysis begins with, and is centered on, the claim
`language itself. See Interactive Gift Express, Inc. v. Compuserve, Inc., 256
`
`7
`
`
`
`IPR2016-00533
`Patent 8,511,605 B2
`
`F.3d 1323, 1331 (Fed. Cir. 2001). Nevertheless, claims must be read in view
`of the specification of which they are a part. In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007); Phillips v. AWH Corp., 415 F.3d
`1315 (Fed. Cir. 2005) (en banc). The specification is the single best guide to
`the meaning of a disputed term. Id.
`Looking first at the plain language of the claims, both claims 15 and
`16 recite a pressure ratio defined by the “low pressure turbine.” Ex. 1001,
`8:43–50. Consistent with the claim language, the specification of the ’605
`patent describes the pressure ratio being measured between the inlet and
`outlet of the low pressure turbine. Id. at 4:24–27. The specification states
`[l]ow pressure turbine 18 pressure ratio is pressure measured
`prior to inlet of low pressure turbine 18 as related to the pressure
`at the outlet of the low pressure turbine 18 prior to exhaust
`nozzle.
`Id. It is clear in the specification, textually speaking, that the pressure ratio
`is measured between an “inlet of low pressure turbine 18” and “the outlet of
`the low pressure turbine 18.” This is mostly consistent, with additional
`detail relating to the inlet and outlet, with the claim language. There is no
`language in the first independent clause of the sentence that informs us
`expressly, or inherently, that the pressure ratio is defined, or measured,
`across both turbine 18 and the TEC. Indeed, the specification distinguishes
`between turbine 18 and the TEC as different components of the engine, for
`instance, “[t]he engine static structure 44 generally has sub-structures
`including . . . a low pressure turbine case 54, and a turbine exhaust case 56
`(FIG. 1B).” Ex. 1001, 5:3–4, 8–9.
`We are unpersuaded that by not expressly excluding the TEC, there is
`a meaning implied by the claims or in the written description that the
`
`8
`
`
`
`IPR2016-00533
`Patent 8,511,605 B2
`
`broadest reasonable interpretation of the claims, therefore, includes the TEC
`as part of a “turbine section.” Cf. Irdeto Access, Inc. v. Echostar Satellite
`Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (“Even when guidance is not
`provided in explicit definitional format, the specification may define claim
`terms by implication such that the meaning may be found in or ascertained
`by a reading of the patent documents.”) (citations omitted).
`Alleging that the specification best supports their position, GE argues
`that the dependent clause, “prior to exhaust nozzle” in the specification
`means that the sentence should be understood to include the TEC because it
`is not expressly excluded. Pet. Reply 6. We agree with GE that the plain
`meaning of the claim language is that the pressure ratio is determined “prior
`to exhaust nozzle.” Id. at 7. The sentence as a whole, however, most clearly
`recites precisely the relationship of the pressure ratio to the inlet and outlet
`of the “low pressure turbine 18.” For example, if the sentence were to read
`differently, such as––
`[l]ow pressure turbine 18 pressure ratio is pressure measured
`prior to inlet of low pressure turbine 18 as related to the pressure
`at the outlet of the low pressure turbine 18 prior to exhaust
`nozzle.
`then it would be more likely that GE’s interpretation could hold sway. In
`this example, the sentence does not make clear that the measured pressure
`ratio is between the inlet and outlet of the low pressure turbine.
`The fact that the TEC is pictured in Figure 1A of the ’605 patent, and
`as noted by Dr. Abhari, arranged structurally prior to the exhaust nozzle of
`the core nacelle, does not illustrate that the low pressure turbine pressure
`ratio is measured across the TEC and does not persuade us that “it is
`reasonable and consistent with the specification to incorporate the pressure
`
`9
`
`
`
`IPR2016-00533
`Patent 8,511,605 B2
`
`drop associated with the turbine exit case when determining the LPT
`pressure ratio.” Pet. Reply 7–8 (citing Ex. 1036 ¶ 10).
`We have reviewed UTC’s claim construction arguments in their
`Response and are persuaded that UTC has provided the most reasonable
`interpretation of the term “low pressure turbine pressure ratio” that is
`consistent with the plain meaning of the claim language and the
`specification’s use of this term. See PO Resp. 9–17. We determine based on
`the plain meaning of the claims and a reasonable reading of the
`specification, and with the record now fully developed before us, that the
`meaning of “low pressure turbine pressure ratio” is most reasonably “the
`ratio of the pressure at the inlet of the low pressure turbine to the pressure at
`the outlet of the low pressure turbine.”
`III. ANALYSIS
`A. Claims 15 and 16 — Alleged Anticipation by Wendus
`At the outset, although UTC has disclaimed claim 1, the elements of
`claim 1 are subsumed within claims 15 and 16 by virtue of their dependency.
`See PO Resp. 1, and see Ex. 2020. We have reviewed GE’s evidence of
`anticipation and are persuaded that Wendus meets the elements of claim 1
`with respect to anticipation. See Pet. 19–27. In light of UTC’s disclaimer,
`and our own review and comparison of Wendus to the elements of claim 1,
`for purposes of this Decision, we adopt as our own GE’s anticipation
`analysis with respect to claim 1 as set forth in the Petition. See Pet. 19–27
`(citing Exs. 1001, 1:14–16, 3:59–61; 1003 ¶¶ 56–63; 1005, 9, 11, 13, 16–19,
`28, 29, 44; 1014, 28). We note, further, that Patent Owner’s Response to the
`Petition does not oppose GE’s anticipation analysis with respect to claim 1.
`
`10
`
`
`
`IPR2016-00533
`Patent 8,511,605 B2
`
`
`GE asserts that claims 15 and 16 are anticipated by Wendus because a
`person of ordinary skill in the art understands that Wendus discloses a low
`pressure turbine pressure ratio “which is greater than [about] 5.”4 Pet. 28–
`29, Pet. Reply 9–11. UTC disputes that Wendus’s disclosed pressure ratio is
`between the inlet and outlet of the low pressure turbine as the proper claim
`construction requires. See PO Resp. 2–3 (“[Wendus] indicates the pressure
`is downstream of, rather than ‘at the outlet’ of, the turbine exhaust case”).
`To anticipate a patent claim under 35 U.S.C. § 102, “a single prior art
`reference must expressly or inherently disclose each claim limitation.”
`Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).
`Under the principles of inherency, if the prior art necessarily functions in
`accordance with, or includes, the claimed limitations, it anticipates.
`MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
`1999) (citation omitted); In re Cruciferous Sprout Litig., 301 F.3d 1343,
`1349–50 (Fed. Cir. 2002).
`GE’s anticipation argument relies specifically on the knowledge and
`understanding of a person of ordinary skill in the art, and the disclosure in
`Wendus’s Figure 4, reproduced below with annotations from the Petition.
`See Pet. 29; Pet. Reply 11.
`
`
`4 With respect to its asserted claim construction, GE contends further that
`“Wendus discloses an LPT pressure ratio greater than five irrespective of
`whether the term is construed to include or exclude the pressure drop
`associated with the turbine exhaust case.” Pet. Reply. 9.
`
`11
`
`
`
`IPR2016-00533
`Patent 8,511,605 B2
`
`
`
`
`
`Figure 4 of Wendus depicts, above, in diagrammatic form, a portion
`of a turbo fan engine with GE’s annotations in red indicating the alleged low
`pressure turbine inlet, outlet, and TEC. The annotations also emphasize the
`disclosed low pressure turbine pressures at the alleged inlet and outlets. See
`Pet. 29, and see PO Resp. 22. Because we are not persuaded by the
`evidence in this proceeding that the low pressure turbine includes the TEC,
`we are also not persuaded that the low pressure turbine outlet is aft of the
`TEC, as GE alleges in the above annotated Figure 4 from Wendus.
`GE argues, on the other hand, that even if the TEC is not considered
`as part and parcel of the low pressure turbine, Wendus still anticipates
`because a person of ordinary skill in the art understands that there is very
`little, i.e. “minimal,” pressure drop across the TEC. Pet. Reply. 9–10. We
`note Dr. Abhari’s testimony in this proceeding that “a person of ordinary
`skill in the art (‘POSITA’) would include someone who has a M.S. degree in
`in Mechanical Engineering or Aerospace Engineering as well as at least 3–5
`years of experience in the field of gas turbine engine design and analysis.”
`Ex. 1003 ¶ 4. UTC does not provide a level of ordinary skill in the art. Our
`
`12
`
`
`
`IPR2016-00533
`Patent 8,511,605 B2
`
`review of the prior art in conjunction with Dr. Abhari’s testimony in this
`proceeding informs us of the complexity of the structural and functional
`aspects of aircraft engine design and indicates that the level of ordinary skill
`in the art of aircraft turbofan engine design is fairly high, requiring
`significant time, for example at least 5 years, working in the field. Thus,
`we reconcile Dr. Abhari’s testimony in this proceeding with our finding in
`IPR2016-00531, and determine that a person of ordinary skill in the art of
`gas turbine engines for aircraft would have a professional background that
`includes at least an M.S. degree in mechanical or aeronautical engineering
`and, along with whatever additional engineering background knowledge and
`skill set they possess, at least 5 years of work and study experience in design
`and analysis of aircraft gas turbine engines. See IPR2016-00531, Paper 42,
`see also Ex. 1003 ¶¶ 4, 17, 21, 53.
`GE relies upon Dr. Abhari’s testimony in asserting that a person of
`ordinary skill in the art “would understand that the pressure drop across the
`turbine exhaust case is minimal (<5%).” Pet. Reply 10 (citing Ex. 1036 ¶
`13). Dr. Abhari testifies “that regardless of how ‘low pressure turbine
`pressure ratio’ is defined (i.e., whether it excludes or includes the turbine
`exhaust case), Wendus discloses a low pressure turbine pressure ratio greater
`than 5.” Ex. 1036 ¶ 11. Dr. Abhari performs a basic math operation,
`dividing 77.8 psia by 5.4 psia, demonstrating that the pressure ratio as shown
`in Wendus across the low pressure turbine and the TEC is 14.4. Id. ¶ 12
`(citing Ex. 1005, Fig. 4). Where 14.4 is greater than the required pressure
`ratio of 5 recited in the claims of the ’605 patent, Dr. Abhari points out that
`by corollary,
`[i]n order for Wendus to disclose a low pressure turbine pressure
`ratio excluding the turbine exhaust case of less than 5 at the
`
`13
`
`
`
`IPR2016-00533
`Patent 8,511,605 B2
`
`
`maximum climb operating condition, the pressure at the location
`prior to the turbine exhaust case would have to be greater than
`15.5 psia. (emphasis added)
`Id. Dr. Abhari testifies that given the disclosed pressure of 5.4 psia shown in
`Wendus following the TEC,
`the pressure drop across the turbine exhaust case would have to
`be greater than 65% for the pressure to be 15.5 psia at the location
`prior to the turbine exhaust case. There is no design for a
`turbofan engine that I am aware of that would have such a
`significant pressure drop across the turbine exhaust case.
`Id. Dr. Abhari then testifies that a person of ordinary skill in the art
`understands that the guide vanes in a TEC are designed to have “minimal
`total pressure drop” and “the total pressure drop across the turbine exhaust
`case would be on the order of a few percent (i.e., less than 5%) under normal
`operating conditions.” Id. ¶ 13. Dr. Abhari buttresses his testimony by
`pointing to U.S. Patent No. 4,478,551 (Ex. 1038), assigned to UTC,
`describing a TEC wherein “there is virtually no pressure drop across the
`vanes.” Id. (citing Ex. 103[8], 3:35–36).
`We are persuaded by Dr. Abhari’s testimony that a person of ordinary
`skill in the art would understand the pressure drop across the TEC to be
`minimal. See MEHL/Biophile Int’l Corp., 192 F.3d at 1365 (citing In re
`Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981)) (“Inherency,
`however, may not be established by probabilities or possibilities.”). Dr.
`Abhari’s testimony regarding the pressure drop across the TEC and outlet
`pressure of the low pressure turbine is unrebutted in the record. See Paper
`32, Paper 40, see also PO Resp. 9, fn. 3 (UTC asserts mainly that Dr.
`Abhari’s “testimony is so conclusory that his opinions are entitled to little
`weight.”). The record is persuasive that Wendus can be understood by one
`
`14
`
`
`
`IPR2016-00533
`Patent 8,511,605 B2
`
`of skill in the art, performing basic technical analysis and simple math
`calculations, as having a pressure ratio between the inlet and outlet of the
`low pressure turbine of [about] 5 or greater. See Pet. Reply 9–11; Ex. 1005,
`17; Ex. 1036 ¶¶ 11–13. Even assuming, for example, that the TEC in
`Wendus provided an additional 5% reduction in pressure ratio, the upper end
`of Dr. Abhari’s supposition, this would only minimally effect the pressure
`ratio of 14.4, and still exceed the requirement of “a low pressure turbine
`pressure ratio that is greater than [about] 5” as recited in claims 15 and 16.
`See Ex. 1036 ¶¶ 12–13.
`UTC responds, arguing that “[w]ithout a disclosure of pressure ‘at the
`outlet of the low pressure turbine,’ there is no way to calculate the low
`pressure turbine pressure ratio based on Wendus.” PO Resp. 19. This
`attorney argument, however, is not supported by citation to evidence. See In
`re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney arguments do not
`take the place of evidence) (citation omitted). Also, this argument is
`contradicted by Dr. Abhari’s fairly simple and straightforward calculations
`that are easily understood, reproducible, and well within the abilities of a
`person of ordinary skill in the art. UTC argues further that “Wendus fails to
`provide any details concerning its size, contents, materials, or other key
`characteristics to enable an evaluation of its pressure drop contribution.” PO
`Resp. 23. We are not persuaded by this argument because, as discussed
`above, Dr. Abhari opines persuasively with certain technical detail and
`reference support, and without credible rebuttal, that a person of ordinary
`skill in the art understands that there is “minimal” pressure drop in the range
`of “less than 5%” across a TEC. See Ex. 1036 ¶ 13.
`
`15
`
`
`
`IPR2016-00533
`Patent 8,511,605 B2
`
`
`Observing Wendus Figure 4, we agree to an extent with UTC’s
`position that “Wendus does not disclose a pressure ‘at the outlet’ of the low
`pressure turbine as required by claims 15 and 16.” PO Resp. 23. But GE
`has provided persuasive evidence in the form of Wendus and Dr. Abhari’s
`testimony that is consistent with established precedent that a natural
`outcome which flows from disclosure in the prior art may also establish
`anticipation. Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed.
`Cir. 2005) (“[A] prior art reference without express reference to a claim
`limitation may nonetheless anticipate by inherency.”). We are also not
`persuaded by UTC’s argument that Wendus’s arrow emanating from the 5.4
`psia “locates the pressure value points to an unknown section of the
`schematic structure, downstream of and spaced apart from the end of the
`turbine exhaust case,” as UTC contends. PO Resp. 24. Dr. Abhari
`explained that “Wendus discloses a pressure of 5.4 psia at the exit of the
`turbine exhaust case at maximum climb.” Ex. 1036 ¶ 12. Further, UTC
`does not explain, despite the comparison of Figure 4 of Wendus to Figures
`1A and 1B of the ’605 patent, why the pressure of 5.4 psia identified in
`Wendus would be important or notable for any reason apart from its specific
`association with the LPT inlet pressure of 77.8, the LPT itself and the TEC.
`PO Resp. 24–27. Although the 5.4 psia arrow in Wendus does not point
`directly to the TEC, we are persuaded that a person of ordinary skill in the
`art observing the diagrammatic nature of Figure 4 of Wendus would
`understand that the pressure ratio across the low pressure turbine and TEC,
`i.e. the initial 77.8 psia indicated just prior to the “six stage LPT” and the
`final 5.4 psia indicated just after the TEC (see Wendus Figure 5), is
`
`16
`
`
`
`IPR2016-00533
`Patent 8,511,605 B2
`
`reasonably understood as the pressure drop between the inlet to the low
`pressure turbine and the outlet of the TEC. See Ex. 1036 ¶ 12.
`We have considered the arguments and evidence presented by both
`parties and, as discussed above, we determine GE has shown by a
`preponderance of the evidence that claims 15 and 16 are unpatentable as
`anticipated by Wendus.
`B. UTC’s Motion to Strike
`In an Order entered February 10, 2017, we authorized UTC to file a
`paper in the form of a list providing the location and a concise description of
`any portion of GE’s Reply and Dr. Abhari’s supplemental declaration (Ex.
`1036) that UTC wished to draw to the Board’s attention. See Paper 29. In
`its Motion to Strike (Paper 32), UTC noted pages 9–12 in GE’s Reply Brief,
`and ¶¶ 14–15 of Dr. Abhari’s supplemental declaration. Paper 32.
`UTC’s Motion is moot with respect to Dr. Abhari’s supplemental
`declaration because we do not rely on Dr. Abhari’s testimony from ¶¶ 14–15
`in the present Decision. UTC’s Motion is also moot as to GE’s arguments in
`its Reply at pages 9–12 as relating to the issue of new argument and
`Wendus’s disclosure of an expansion ratio of 12.72 because we do not rely
`in our Decision on such argument or evidence in Wendus. Accordingly,
`UTC’s Motion to Strike is DENIED as moot.
`IV. ORDER
` For the reasons given, it is ORDERED that
`Claims 15 and 16 of U.S. Patent No. 8,511,605 B2 have been shown
`to be unpatentable as anticipated by Wendus, and
`Patent Owner’s motion to strike is denied as moot.
`
`17
`
`
`
`IPR2016-00533
`Patent 8,511,605 B2
`
`
`This is a final decision. Parties to the proceeding seeking judicial
`review of the decision must comply with the notice and service requirements
`of 37 C.F.R. § 90.2.
`
`18
`
`
`
`IPR2016-00533
`Patent 8,511,605 B2
`
`For PETITIONER:
`
`Brian Ferguson
`Anish Desai
`WEIL, GOTSHAL & MANGES LLP
`brian.ferguson@weil.com
`anish.desai@weil.com
`
`For PATENT OWNER:
`
`M. Andrew Holtman
`Jeffrey C. Totten
`James Stein
`Patrick J. Coyne
`FINNEGAN, HENDERSON, FARRABOW, GARRETT & DUNNER, LLP
`andy.holtman@finnegan.com
`Jeffrey.totten@finnegan.com
`james.stein@finnegan.com
`Patrick.coyne@finnegan.com
`
`Michael J. Valaik
`BARTLIT BECK HERMAN PALENCHAR & SCOTT LLP
`michael.valaik@bartlit-beck.com
`
`19
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
