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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Case IPR2016-00862
`Patent 8,689,568
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`DECLARATION OF DR. AMIR FAGHRI
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`GENERAL ELECTRIC COMPANY,
`Petitioner,
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`v.
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`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner
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`
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`
`
`GE v. UTC
`Trial IPR2016-00862
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`UTC-2002.001
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`Case No. IPR2016-00862
`Declaration of Dr. Amir Faghri
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`I.
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`I, Dr. Amir Faghri, declare as follows:
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`Introduction
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`1.
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`I have been retained by United Technologies Corporation (“Patent
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`Owner”) as an independent expert consultant in this proceeding before the United
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`States Patent and Trademark Office. I understand that this Inter Partes Review
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`proceeding involves U.S. Patent No. 8,689,568 B2 (“the ’568 patent”), which
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`issued on April 8, 2014, from U.S. Patent Application No. 13/544,097 (“the ’097
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`application”), filed on July 9, 2012. The ’097 application claims priority to
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`Provisional Application Nos. 61/599,388, 61/599,372, and 61/599,379, all filed
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`February 15, 2012. My opinions on the patent and other issues relevant to the
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`proceeding are set forth below.
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`II. Qualifications
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`2.
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`I am presently a professor of Mechanical Engineering at the
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`University of Connecticut (“UConn”) and I have served in this position since 1994.
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`I was the Dean of the UConn’s School of Engineering from 1998-2006. Prior to
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`that, I was the head of the Mechanical Engineering Department at UConn from
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`1994-1998. Prior to working at UConn, I was a Brage Golding Distinguished
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`Professor at Wright State University in Dayton Ohio from 1982-1993.
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`3.
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`I received a Ph.D. in Mechanical Engineering from the University of
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`California, Berkeley, a M.S. in Mechanical Engineering from the University of
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`California, Berkeley, and a B.S. in Mechanical Engineering from Oregon State
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`University (with highest honors).
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`4.
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`I have published 8 books and editorial volumes, 210 peer-reviewed
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`journal publications, and 110 conference articles. I have also authored several
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`book chapters and review articles relating to heat transfer. I am also a named
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`inventor on 11 U.S. patents.
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`5.
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`I am a leading authority on heat pipes and heat transfer. I authored
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`the treatise, Heat Pipe Science and Technology, 1995, Taylor & Francis
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`Incorporated, ISBN: 1-56032-383-3 (2d ed. 2016, Global Digital Press), and two
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`other related graduate heat transfer textbooks (Advanced Heat and Mass Transfer
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`and Transport Phenomena in Multiphase Systems). I also authored several book
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`chapters relating to heat pipes and heat transfer: (1) “Advances and Challenges in
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`Micro/Miniature Heat Pipes,” Annual Review of Heat Transfer, Volume 12, 2001,
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`pp. 1-26; (2) “Introduction to Heat Pipe Design & Theory,” Handbook of Heat
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`Transfer & Fluid Flow, Genium Publishing Corp., 2000; (3) “Recent Advances in
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`Heat Pipe Analysis and Simulation,” Annual Review of Heat Transfer, Volume 8
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`(ARHT-VIII), 1997; and (4) “Performance Characteristics of an Annular Heat
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`Pipe,” Experiments in Heat Transfer and Thermodynamics, Edited by Robert A.
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`Granger, Cambridge University Press, 1994.
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`UTC-2002.003
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`I have served in countless organizations and technical leadership roles
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`6.
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`due to my work on thermal fluid and heat transfer. For example, I was the
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`Chairman of the Scientific Committee for the 11th International Heat Pipe
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`Symposium. I have been an Executive Editor of Heat Transfer Engineering
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`Journal (Thermal Storage and Heat Pipes) since 1993, the Editor-in-Chief of
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`Frontiers in Heat Pipes since 2010, and the Editor-in-Chief of Frontiers in Heat
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`and Mass Transfer since 2010. I have also been an honorary editorial board
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`member of the International Journal of Heat and Mass Transfer since 1997. I
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`have given numerous lectures and keynote speeches on heat pipes, and I serve on
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`the editorial boards of a number of additional publications.
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`7. My work in heat transfer has resulted in many awards, including the
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`ASME/AIChE Max Jakob Memorial Award (2010), which is the highest award in
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`heat transfer for those organizations. I was also awarded the 75th Anniversary
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`Medal of the ASME Heat Transfer Division (2013), the ASME James Harry Potter
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`Gold Medal (2005), and the ASME Heat Transfer Memorial Award (1998).
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`8.
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`On my 60th birthday I was recognized by my peers as “arguably the
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`world’s leading expert in the area of heat pipes and a significant contributor to
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`thermal-fluids engineering in energy systems.” In Celebration, Professor Amir
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`Faghri on His 60th Birthday, International Journal of Heat and Mass Transfer, Vol.
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`54, 2011, pp. 4459-4461 (UTC-2005).
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`Declaration of Dr. Amir Faghri
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`9. More details regarding my background and experience are provided in
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`my curriculum vitae, attached as Exhibit UTC-2006.
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`III. Legal Standards
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`A. Patentability
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`10.
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`I understand that Dr. John Eaton and Petitioner argue that the claims
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`of the ’568 patent are either (1) anticipated or (2) obvious. (See generally Petition;
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`GE-1003.) Regarding anticipation, I understand that the subject matter of the
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`patent claim is anticipated only if a single item of prior art teaches each and every
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`element recited in the claim. I also understand that the prior art needs to disclose
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`the elements arranged the same way that they are arranged in the claim—merely
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`disclosing the elements is not enough. And I understand that the disclosure of the
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`prior art must be substantial enough that it would have enabled a person of
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`ordinary skill in the art to make and use the invention recited in the claim without
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`undue experimentation.
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`11.
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`I understand that, in some cases, a prior art reference can be
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`considered to inherently disclose an element of the claim even if the reference does
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`not expressly teach it. But I understand that a person of ordinary skill in the art
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`would have had to recognize that the missing element was necessarily present
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`despite the reference’s failing to expressly disclose it.
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`I am informed that a patent claim that is not anticipated might still be
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`12.
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`unpatentable if the differences between the claimed invention and the prior art are
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`such that the claimed invention as a whole would have been obvious before the
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`effective filing date of the claimed invention to a person having ordinary skill in
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`the art. In this proceeding, I have used the filing date of Provisional Application
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`Nos. 61/599,388, 61/599,372, and 61/599,379, all filed February 15, 2012, as the
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`time of the invention for my analysis.
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`13.
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`I understand that the claimed subject matter as a whole must be
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`considered when determining obviousness. Additionally, I understand that this
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`obviousness analysis takes into account the scope and content of the prior art, the
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`differences between the claimed subject matter and the prior art, and the level of
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`ordinary skill in the art at the time of the invention. I understand that the
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`proponent of an obviousness challenge must provide reasoning showing why the
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`claimed subject matter would have been obvious to a person of ordinary skill in the
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`art at the time of the invention.
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`14.
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`I understand that multiple prior art references or teachings can be
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`combined to show that a patent claim would have been obvious. When taking this
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`approach, I understand that the proponent of obviousness must show that a person
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`of ordinary skill in the art would have had reason or motivation to combine the
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`references in the way the elements are recited in the claim, as well as a reasonable
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`expectation of success.
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`IV. Level of Ordinary Skill in the Art
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`15.
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`It is my understanding that, when analyzing the claims of the ’568
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`patent, I must do so based on the perspective of one of ordinary skill in the art as of
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`the relevant 2012 priority date.
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`16.
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`In my opinion, a person of ordinary skill in the art of the ’568 patent
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`would typically have a M.S. degree in Mechanical Engineering or Aerospace
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`Engineering, as well as at least 3 to 5 years of experience in heat transfer.
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`V. Cooling Hole Technology
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`A. Cooling Holes Must Achieve a Delicate Balance that
`Extends Component Life and Maintains Engine Efficiency
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`17. Gas turbine engines generate significant amounts of heat, and it is
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`important to cool engine components exposed to high temperatures to ensure
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`component longevity and high engine efficiency. Higher pressures and higher gas
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`temperatures tend to increase engine efficiency, but both lead to shorter service life
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`and lower reliability because of the thermal stress on the engine components.
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`Engine designers strive for a balanced solution that ensures acceptable service life
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`and reliability while maintaining high efficiency.
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`18. Active cooling is one method of preventing engine component
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`damage. One active cooling technique is to send cooler fluids (e.g., steam or air)
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`to the hot side of engine components via cooling holes in the components. Cooling
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`holes carry the cooler fluid from other sections of the engine and provide it to the
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`hotter components. The resulting thermal fluid flow configuration must be
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`carefully designed and directed.
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`19. One of ordinary skill in the art would understand that the fluid flow
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`through a cooling hole is complex, and minor changes in the cooling holes may
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`have significant consequences. (See, e.g., UTC-2007.004 (Michael Benson et al.,
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`Experimental-Based Redesigns for Trailing Edge Film Cooling of Gas Turbine
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`Blades, 135 Journal of Turbomachinery 041018-1, 041018-4 (July 2013)
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`(comparing relatively minor design changes to trailing edge cooling holes and
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`finding that the changes have “an important impact on the spanwise motion and
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`penetration of the mainstream flow”)); see also UTC-2003 at 54:6-17 (explaining
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`the differences between trailing edge cooling hole design and film cooling hole
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`design).) Slight changes in the geometry of a cooling hole can alter the delicate
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`balance that achieves the proper cooling, without overcooling, and does not
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`unnecessarily disrupt the flow through the engine core. (See, e.g., GE-1010.005-
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`.006 (discussing the trade-offs associated with shaped film hole injection); GE-
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`1008.025 (“The goal is to minimize the coolant consumption, maximize the
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`cooling effect, and produce an acceptable temperature level and distribution on the
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`vane surface . . . .”).)
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`20. For example, while undercooling is undesirable because components
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`can wear out or be damaged more quickly, overcooling can also adversely affect
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`the components by subjecting them to issues like thermo-mechanical fatigue.
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`Thermo-mechanical fatigue causes cracks that weaken the component and alter its
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`cooling properties through the cyclical expanding and contracting of the
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`component during the heating and cooling process. (See, e.g., UTC-2003 at 78:22-
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`81:16 (discussing thermo-mechanical fatigue).) This introduces component stress
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`rather than extending component life.
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`21. Cooling hole design is further complicated because the cooled fluid
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`must be ejected onto the hot surface with the necessary direction, velocity, and
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`contact, including attachment characteristics. Small changes to the design of a
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`cooling hole can result in shear mixing, whereby the difference in velocity between
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`the cooling air and gas stream causes turbulence. This turbulence leads to mixing
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`between the cooling air and the hot gas stream, which can result in uneven or
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`diminished cooling and a decrease in overall engine efficiency. Similarly, small
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`changes to the design of cooling holes can cause the flow of cooling air to
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`separate—or not attach itself to the engine component—as it exits the cooling hole.
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`This separation can also lead to mixing between the cooling air and the hot gas
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`stream, rendering the cooling hole inoperable for its intended purpose.
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`22. Understanding and predicting the behavior of air in a cooling hole is
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`inherently difficult because of the nonlinear behavior of air moving through and
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`exiting the cooling hole. Fluid mechanics problems are in general nonlinear in
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`nature and extreme care must be taken when combining different flow
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`configurations to achieve a given goal. Therefore, full numerical simulation and/or
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`experimentation of the combined embodiment is required to predict the
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`performance thermal fluid performance properties. As a result, none of these
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`consequences of altering a cooling hole design can be appreciated by one of
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`ordinary skill in the art without detailed computational or experimental analysis of
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`the cooling hole.
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`B. One of Ordinary Skill in the Art Would Not Have Combined
`Different Cooling Hole Designs Without Numerical Simulation
`and Optimization or Experimentation
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`23. Designers of cooling holes understand that even minor alterations to
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`the design of a cool hole require detailed numerical simulation and optimization or
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`experimentation of both the thermal flow and thermal stress characteristics of the
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`revised system to properly understand how a change will impact the operation of a
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`cooling hole. Computational fluid dynamics software can allow one of ordinary
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`skill in the art to understand the temperature distributions, airflow, and thermal
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`stress resulting from a particular cooling hole. For example, commercial
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`computational fluid dynamics software such as ANSYS Fluent allows one of
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`ordinary skill in the art to simulate the thermal stress and thermal fluid
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`characteristics that result from design changes to cooling hole.
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`24.
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`In addition, one of ordinary skill in the art would also use
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`experimental techniques, including prototype testing, to measure the temperature
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`distributions resulting from a particular cooling hole. Combined with numerical
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`simulations, experimental analysis can provide a proper understanding of a cooling
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`hole design. Without these analyses, one of ordinary skill in the art would be
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`unable to determine whether a particular cooling hole design would operate
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`effectively.
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`VI. Petitioner’s Mixing and Matching From Different Embodiments in
`Bunker Cannot Demonstrate Anticipation
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`25. Petitioner and Dr. Eaton have stated that the claims of the ’568 patent
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`are anticipated by Bunker. I have been asked to consider whether one of ordinary
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`skill in the art would have combined the various embodiments in Bunker to create
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`a modified cooling hole design, and I have found that neither Petitioner nor Dr.
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`Eaton have demonstrated that one of ordinary skill in the art would have combined
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`the different embodiments in Bunker without further numerical simulation and
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`optimization or experimentation.
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`26. Petitioner and Dr. Eaton primarily rely on Figure 5 to argue similarity
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`between Bunker and the ’568 patent. (See Petition at 17, 28, 30, 32, 34-39, 41, 42,
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`47, and 48 (each depicting Bunker’s Figure 5); GE-1003 ¶¶ 40, 50, 51, 53, 55, 58,
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`60, 62, 64, 66, 69, 71, 75, 78, each depicting Bunker’s Figure 5.) To fill in the
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`gaps of Figure 5, Petitioner and Dr. Eaton cites features from other embodiments in
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`Bunker to support its arguments. Neither Petitioner nor Dr. Eaton, however,
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`provided any support with respect to numerical simulation and optimization or
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`experimentation to support its arguments, and this analysis would be crucial for
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`one of ordinary skill in the art to be able to find that features from various cooling
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`hole designs could be combined.
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`27.
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`I understand
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`that
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`the Board found
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`that “Bunker appears
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`to
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`contemplate combining the elements disclosed in the various embodiments.”
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`(Institution Decision at 14.) In my opinion, one of ordinary skill in the art would
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`not recognize the particular combination of embodiments from Bunker alleged by
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`Petitioner and Dr. Eaton. As stated by the Board, “Bunker states generally that
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`‘the described inventive features may be combined in any suitable manner in the
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`various embodiments.’” (Institution Decision at 14 (citing GE-1005 ¶ 32)
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`(emphases added).)
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` However,
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`this statement acknowledges
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`that some
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`combinations would be unsuitable, and without more information, one cannot
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`assume that any combination is suitable. One of ordinary skill would recognize
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`that design features used in particular cooling holes cannot be arbitrarily inserted
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`into other cooling holes, and to find otherwise would fail to account for the
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`complexities of altering cooling hole systems due to the nonlinear nature of flow
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`configuration.
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`28. For example, Dr. Eaton explained that certain of Bunker’s plateau
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`features would not be suitable for other cooling holes: “[N]o one would make a
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`thing that looked like that [because] a face to me would imply a blockage that went
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`all the way across there. And no one would do that.” (UTC-2003 at 94:3-19.) I
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`agree with Dr. Eaton that not all features of a cooling hole design are necessarily
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`suitable for use in every context.
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`29. Suitability would need to be determined through further numerical or
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`experimental analysis, and neither have been provided in this case. Changes to the
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`configurations of cooling holes, no matter how minor, can have significant and
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`potentially unpredictable and undesirable changes on the effectiveness of the
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`cooling hole. As discussed above, cooling holes must not only produce the
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`required cooling, but the holes must not cause failure in the cooled component or
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`detrimentally disrupt the flow of hot gases used to generate thrust. Thermal stress
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`in the form of thermo-mechanical fatigue may weaken engine components and
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`negatively alter the cooling properties of the component. Relatedly, such
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`combinations could also result in unpredictable flow paths and could harm overall
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`engine efficiency. Accordingly, Bunker never states that any of its embodiments
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`may be combined. Instead, it states that “the described inventive features may be
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`combined in any suitable manner in the various embodiments,” (GE-1005.013
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`¶ 32), but without further numerical or experimental analysis, this is insufficient to
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`determine which embodiments could be successfully combined.
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`30. The components of a cooling hole are not plug-and-play tools, yet
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`Petitioner and Dr. Eaton pick and choose elements from different embodiments of
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`Bunker, without explanation of how these elements result in an arrangement of
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`elements as in the claims or whether the combination would result in an operable
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`cooling hole. Such a determination is not possible without further numerical or
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`experimental analysis. I understand that such picking-and-choosing features
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`amongst separate embodiments in this particular art is inappropriate in an
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`anticipation analysis.
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`VII. Petitioner and Dr. Eaton Have Not Demonstrated that One of Ordinary
`Skill in the Art Would Have a Reasonable Expectation of Success in
`Combining Bunker and Liang
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`31. Petitioner and Dr. Eaton state that claims 8 and 19 of the ’568 patent
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`are obvious in light of Bunker in view of Liang. I have been asked to consider
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`whether one of ordinary skill in the art would have had a reasonable expectation of
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`success in combining features from the cooling hole designs in Bunker and Liang.
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`Again, I disagree with Petitioner and Dr. Eaton because their analysis of Bunker
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`and Liang suffers from many of the same flaws as his analysis of Bunker alone.
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`32. Bunker teaches that valley-plateau structure is important to the
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`operation of its cooling hole designs: “the shape and size of the plateau and the
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`valley from which it rises are important factors in maximizing the diffusion of
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`cooling air that is channeled through the passage holes.” (GE-1005.014 ¶ 49.)
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`Petitioner and Dr. Eaton, however, seek to remove the valley-plateau feature from
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`Bunker and replace it with an extra trough. (See Petition at 50-52.) This
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`modification is contrary to Bunker’s teaching and would change the operation of
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`Bunker’s cooling hole by altering the diffusion of cooling air that is channeled
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`through the passage holes.
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`33. One of ordinary skill in the art would not have a reasonable
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`expectation of success in replacing Bunker’s central plateau region with a channel,
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`in the manner articulated by Dr. Eaton and Petitioner. Petitioner and Dr. Eaton
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`argue that “dividing the cooling flow into more than two channel-like passages”
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`would have been a “known design choice” and “obvious to try” (Petition at 51-52;
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`GE-1003 ¶¶ 83-85), but, as discussed above, Petitioner and Dr. Eaton do not
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`explain why one of ordinary skill in the art would modify a cooling hole design
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`without numerical simulation, optimization, or experimentation to confirm that the
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`modified cooling hole would operate for its intended purpose. Petitioner proposes
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`a major change to the design of Bunker’s cooling hole, yet it is not possible to say
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`whether the modified Bunker cooling hole would operate as a cooling hole for its
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`UTC-2002.015
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`intended purpose without this additional simulation or experimental testing. As a
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`result, Petitioner and Dr. Eaton have not established that one of ordinary skill in
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`the art would have had a reasonable expectation of success in altering Bunker’s
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`cooling hole
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`34. Moreover, Bunker is already established to be an effective cooling
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`hole design, and the modification proposed by Petitioner and Dr. Eaton would be a
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`major modification to Bunker’s design. Not only have Petitioner and Dr. Eaton
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`failed to provide a reasonable expectation of success, but one of ordinary skill in
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`the art would not be motivated to modify a cooling hole design that Bunker
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`contends to be effective without numerical or experimental analysis to confirm that
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`the modified cooling hole design would be effective for its intended purpose.
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`35. Cooling hole design is complex, and altering one cooling hole design
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`with a supposedly desirable feature from another design is not a matter of simple
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`substitution. As a result, Petitioner and Dr. Eaton do not establish that the
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`combination of Bunker and Liang would have a reasonable expectation of success,
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`and Petitioner and Dr. Eaton have not established that claims 8 and 19 would have
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`been obvious to one of ordinary skill in the art.
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`UTC-2002.016
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`Case No. IPRZO l 6—00862
`Declaration of Dr. Amir Faghri
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`VIII. Conclusion
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`36.
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`In summary, it is my opinion that Bunker does not anticipate claims 1-
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`7, 9-11, 13-18, and 20-21 and the combination of Bunker and Liang do not render
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`obvious claims 8 and 19 of the ‘S68 patent. For these reasons, I disagree with
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`Petitioner and Dr. Eaton’s analysis of the anticipation and obviousness of the
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`challenged claims.
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`37.
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`I declare that all statements made herein of my knowledge are true,
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`and that all statements made on infonnation and belief are believed to be true, and
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`that these statements were made with the knowledge that willful false statements
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`and the like so made are punishable by fine or imprisonment, or both, under
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`Section 1001 of Title 18 of the United States Code.
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`Dated:jm 11/ go (7
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`By: /A-hm}
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`f"_1—‘:;¢3lr\n-.‘
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`
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`Amir Faghri, Ph.D.
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`16
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`UTC-2002.017
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`UTC-2002.017