throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`Case IPR2016-00862
`Patent 8,689,568
`
`
`
`
`
`
`
`
`
`DECLARATION OF DR. AMIR FAGHRI
`
`
`
`GENERAL ELECTRIC COMPANY,
`Petitioner,
`
`v.
`
`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner
`
`
`
`
`
`
`
`GE v. UTC
`Trial IPR2016-00862
`
`UTC-2002.001
`
`

`
`Case No. IPR2016-00862
`Declaration of Dr. Amir Faghri
`
`
`
`
`I.
`
`I, Dr. Amir Faghri, declare as follows:
`
`Introduction
`
`1.
`
`I have been retained by United Technologies Corporation (“Patent
`
`Owner”) as an independent expert consultant in this proceeding before the United
`
`States Patent and Trademark Office. I understand that this Inter Partes Review
`
`proceeding involves U.S. Patent No. 8,689,568 B2 (“the ’568 patent”), which
`
`issued on April 8, 2014, from U.S. Patent Application No. 13/544,097 (“the ’097
`
`application”), filed on July 9, 2012. The ’097 application claims priority to
`
`Provisional Application Nos. 61/599,388, 61/599,372, and 61/599,379, all filed
`
`February 15, 2012. My opinions on the patent and other issues relevant to the
`
`proceeding are set forth below.
`
`II. Qualifications
`
`2.
`
`I am presently a professor of Mechanical Engineering at the
`
`University of Connecticut (“UConn”) and I have served in this position since 1994.
`
`I was the Dean of the UConn’s School of Engineering from 1998-2006. Prior to
`
`that, I was the head of the Mechanical Engineering Department at UConn from
`
`1994-1998. Prior to working at UConn, I was a Brage Golding Distinguished
`
`Professor at Wright State University in Dayton Ohio from 1982-1993.
`
`3.
`
`I received a Ph.D. in Mechanical Engineering from the University of
`
`California, Berkeley, a M.S. in Mechanical Engineering from the University of
`
`
`
`1
`
`UTC-2002.002
`
`

`
`Case No. IPR2016-00862
`Declaration of Dr. Amir Faghri
`
`California, Berkeley, and a B.S. in Mechanical Engineering from Oregon State
`
`University (with highest honors).
`
`4.
`
`I have published 8 books and editorial volumes, 210 peer-reviewed
`
`journal publications, and 110 conference articles. I have also authored several
`
`book chapters and review articles relating to heat transfer. I am also a named
`
`inventor on 11 U.S. patents.
`
`5.
`
`I am a leading authority on heat pipes and heat transfer. I authored
`
`the treatise, Heat Pipe Science and Technology, 1995, Taylor & Francis
`
`Incorporated, ISBN: 1-56032-383-3 (2d ed. 2016, Global Digital Press), and two
`
`other related graduate heat transfer textbooks (Advanced Heat and Mass Transfer
`
`and Transport Phenomena in Multiphase Systems). I also authored several book
`
`chapters relating to heat pipes and heat transfer: (1) “Advances and Challenges in
`
`Micro/Miniature Heat Pipes,” Annual Review of Heat Transfer, Volume 12, 2001,
`
`pp. 1-26; (2) “Introduction to Heat Pipe Design & Theory,” Handbook of Heat
`
`Transfer & Fluid Flow, Genium Publishing Corp., 2000; (3) “Recent Advances in
`
`Heat Pipe Analysis and Simulation,” Annual Review of Heat Transfer, Volume 8
`
`(ARHT-VIII), 1997; and (4) “Performance Characteristics of an Annular Heat
`
`Pipe,” Experiments in Heat Transfer and Thermodynamics, Edited by Robert A.
`
`Granger, Cambridge University Press, 1994.
`
`
`
`2
`
`UTC-2002.003
`
`

`
`Case No. IPR2016-00862
`Declaration of Dr. Amir Faghri
`
`I have served in countless organizations and technical leadership roles
`
`6.
`
`due to my work on thermal fluid and heat transfer. For example, I was the
`
`Chairman of the Scientific Committee for the 11th International Heat Pipe
`
`Symposium. I have been an Executive Editor of Heat Transfer Engineering
`
`Journal (Thermal Storage and Heat Pipes) since 1993, the Editor-in-Chief of
`
`Frontiers in Heat Pipes since 2010, and the Editor-in-Chief of Frontiers in Heat
`
`and Mass Transfer since 2010. I have also been an honorary editorial board
`
`member of the International Journal of Heat and Mass Transfer since 1997. I
`
`have given numerous lectures and keynote speeches on heat pipes, and I serve on
`
`the editorial boards of a number of additional publications.
`
`7. My work in heat transfer has resulted in many awards, including the
`
`ASME/AIChE Max Jakob Memorial Award (2010), which is the highest award in
`
`heat transfer for those organizations. I was also awarded the 75th Anniversary
`
`Medal of the ASME Heat Transfer Division (2013), the ASME James Harry Potter
`
`Gold Medal (2005), and the ASME Heat Transfer Memorial Award (1998).
`
`8.
`
`On my 60th birthday I was recognized by my peers as “arguably the
`
`world’s leading expert in the area of heat pipes and a significant contributor to
`
`thermal-fluids engineering in energy systems.” In Celebration, Professor Amir
`
`Faghri on His 60th Birthday, International Journal of Heat and Mass Transfer, Vol.
`
`54, 2011, pp. 4459-4461 (UTC-2005).
`
`
`
`3
`
`UTC-2002.004
`
`

`
`Case No. IPR2016-00862
`Declaration of Dr. Amir Faghri
`
`9. More details regarding my background and experience are provided in
`
`my curriculum vitae, attached as Exhibit UTC-2006.
`
`III. Legal Standards
`
`A. Patentability
`
`10.
`
`I understand that Dr. John Eaton and Petitioner argue that the claims
`
`of the ’568 patent are either (1) anticipated or (2) obvious. (See generally Petition;
`
`GE-1003.) Regarding anticipation, I understand that the subject matter of the
`
`patent claim is anticipated only if a single item of prior art teaches each and every
`
`element recited in the claim. I also understand that the prior art needs to disclose
`
`the elements arranged the same way that they are arranged in the claim—merely
`
`disclosing the elements is not enough. And I understand that the disclosure of the
`
`prior art must be substantial enough that it would have enabled a person of
`
`ordinary skill in the art to make and use the invention recited in the claim without
`
`undue experimentation.
`
`11.
`
`I understand that, in some cases, a prior art reference can be
`
`considered to inherently disclose an element of the claim even if the reference does
`
`not expressly teach it. But I understand that a person of ordinary skill in the art
`
`would have had to recognize that the missing element was necessarily present
`
`despite the reference’s failing to expressly disclose it.
`
`
`
`4
`
`UTC-2002.005
`
`

`
`Case No. IPR2016-00862
`Declaration of Dr. Amir Faghri
`
`I am informed that a patent claim that is not anticipated might still be
`
`12.
`
`unpatentable if the differences between the claimed invention and the prior art are
`
`such that the claimed invention as a whole would have been obvious before the
`
`effective filing date of the claimed invention to a person having ordinary skill in
`
`the art. In this proceeding, I have used the filing date of Provisional Application
`
`Nos. 61/599,388, 61/599,372, and 61/599,379, all filed February 15, 2012, as the
`
`time of the invention for my analysis.
`
`13.
`
`I understand that the claimed subject matter as a whole must be
`
`considered when determining obviousness. Additionally, I understand that this
`
`obviousness analysis takes into account the scope and content of the prior art, the
`
`differences between the claimed subject matter and the prior art, and the level of
`
`ordinary skill in the art at the time of the invention. I understand that the
`
`proponent of an obviousness challenge must provide reasoning showing why the
`
`claimed subject matter would have been obvious to a person of ordinary skill in the
`
`art at the time of the invention.
`
`14.
`
`I understand that multiple prior art references or teachings can be
`
`combined to show that a patent claim would have been obvious. When taking this
`
`approach, I understand that the proponent of obviousness must show that a person
`
`of ordinary skill in the art would have had reason or motivation to combine the
`
`
`
`5
`
`UTC-2002.006
`
`

`
`Case No. IPR2016-00862
`Declaration of Dr. Amir Faghri
`
`references in the way the elements are recited in the claim, as well as a reasonable
`
`expectation of success.
`
`IV. Level of Ordinary Skill in the Art
`
`15.
`
`It is my understanding that, when analyzing the claims of the ’568
`
`patent, I must do so based on the perspective of one of ordinary skill in the art as of
`
`the relevant 2012 priority date.
`
`16.
`
`In my opinion, a person of ordinary skill in the art of the ’568 patent
`
`would typically have a M.S. degree in Mechanical Engineering or Aerospace
`
`Engineering, as well as at least 3 to 5 years of experience in heat transfer.
`
`V. Cooling Hole Technology
`
`A. Cooling Holes Must Achieve a Delicate Balance that
`Extends Component Life and Maintains Engine Efficiency
`
`17. Gas turbine engines generate significant amounts of heat, and it is
`
`important to cool engine components exposed to high temperatures to ensure
`
`component longevity and high engine efficiency. Higher pressures and higher gas
`
`temperatures tend to increase engine efficiency, but both lead to shorter service life
`
`and lower reliability because of the thermal stress on the engine components.
`
`Engine designers strive for a balanced solution that ensures acceptable service life
`
`and reliability while maintaining high efficiency.
`
`18. Active cooling is one method of preventing engine component
`
`damage. One active cooling technique is to send cooler fluids (e.g., steam or air)
`
`
`
`6
`
`UTC-2002.007
`
`

`
`Case No. IPR2016-00862
`Declaration of Dr. Amir Faghri
`
`to the hot side of engine components via cooling holes in the components. Cooling
`
`holes carry the cooler fluid from other sections of the engine and provide it to the
`
`hotter components. The resulting thermal fluid flow configuration must be
`
`carefully designed and directed.
`
`19. One of ordinary skill in the art would understand that the fluid flow
`
`through a cooling hole is complex, and minor changes in the cooling holes may
`
`have significant consequences. (See, e.g., UTC-2007.004 (Michael Benson et al.,
`
`Experimental-Based Redesigns for Trailing Edge Film Cooling of Gas Turbine
`
`Blades, 135 Journal of Turbomachinery 041018-1, 041018-4 (July 2013)
`
`(comparing relatively minor design changes to trailing edge cooling holes and
`
`finding that the changes have “an important impact on the spanwise motion and
`
`penetration of the mainstream flow”)); see also UTC-2003 at 54:6-17 (explaining
`
`the differences between trailing edge cooling hole design and film cooling hole
`
`design).) Slight changes in the geometry of a cooling hole can alter the delicate
`
`balance that achieves the proper cooling, without overcooling, and does not
`
`unnecessarily disrupt the flow through the engine core. (See, e.g., GE-1010.005-
`
`.006 (discussing the trade-offs associated with shaped film hole injection); GE-
`
`1008.025 (“The goal is to minimize the coolant consumption, maximize the
`
`cooling effect, and produce an acceptable temperature level and distribution on the
`
`vane surface . . . .”).)
`
`
`
`7
`
`UTC-2002.008
`
`

`
`Case No. IPR2016-00862
`Declaration of Dr. Amir Faghri
`
`20. For example, while undercooling is undesirable because components
`
`can wear out or be damaged more quickly, overcooling can also adversely affect
`
`the components by subjecting them to issues like thermo-mechanical fatigue.
`
`Thermo-mechanical fatigue causes cracks that weaken the component and alter its
`
`cooling properties through the cyclical expanding and contracting of the
`
`component during the heating and cooling process. (See, e.g., UTC-2003 at 78:22-
`
`81:16 (discussing thermo-mechanical fatigue).) This introduces component stress
`
`rather than extending component life.
`
`21. Cooling hole design is further complicated because the cooled fluid
`
`must be ejected onto the hot surface with the necessary direction, velocity, and
`
`contact, including attachment characteristics. Small changes to the design of a
`
`cooling hole can result in shear mixing, whereby the difference in velocity between
`
`the cooling air and gas stream causes turbulence. This turbulence leads to mixing
`
`between the cooling air and the hot gas stream, which can result in uneven or
`
`diminished cooling and a decrease in overall engine efficiency. Similarly, small
`
`changes to the design of cooling holes can cause the flow of cooling air to
`
`separate—or not attach itself to the engine component—as it exits the cooling hole.
`
`This separation can also lead to mixing between the cooling air and the hot gas
`
`stream, rendering the cooling hole inoperable for its intended purpose.
`
`
`
`8
`
`UTC-2002.009
`
`

`
`Case No. IPR2016-00862
`Declaration of Dr. Amir Faghri
`
`22. Understanding and predicting the behavior of air in a cooling hole is
`
`inherently difficult because of the nonlinear behavior of air moving through and
`
`exiting the cooling hole. Fluid mechanics problems are in general nonlinear in
`
`nature and extreme care must be taken when combining different flow
`
`configurations to achieve a given goal. Therefore, full numerical simulation and/or
`
`experimentation of the combined embodiment is required to predict the
`
`performance thermal fluid performance properties. As a result, none of these
`
`consequences of altering a cooling hole design can be appreciated by one of
`
`ordinary skill in the art without detailed computational or experimental analysis of
`
`the cooling hole.
`
`B. One of Ordinary Skill in the Art Would Not Have Combined
`Different Cooling Hole Designs Without Numerical Simulation
`and Optimization or Experimentation
`
`23. Designers of cooling holes understand that even minor alterations to
`
`the design of a cool hole require detailed numerical simulation and optimization or
`
`experimentation of both the thermal flow and thermal stress characteristics of the
`
`revised system to properly understand how a change will impact the operation of a
`
`cooling hole. Computational fluid dynamics software can allow one of ordinary
`
`skill in the art to understand the temperature distributions, airflow, and thermal
`
`stress resulting from a particular cooling hole. For example, commercial
`
`computational fluid dynamics software such as ANSYS Fluent allows one of
`
`
`
`9
`
`UTC-2002.010
`
`

`
`Case No. IPR2016-00862
`Declaration of Dr. Amir Faghri
`
`ordinary skill in the art to simulate the thermal stress and thermal fluid
`
`characteristics that result from design changes to cooling hole.
`
`24.
`
`In addition, one of ordinary skill in the art would also use
`
`experimental techniques, including prototype testing, to measure the temperature
`
`distributions resulting from a particular cooling hole. Combined with numerical
`
`simulations, experimental analysis can provide a proper understanding of a cooling
`
`hole design. Without these analyses, one of ordinary skill in the art would be
`
`unable to determine whether a particular cooling hole design would operate
`
`effectively.
`
`VI. Petitioner’s Mixing and Matching From Different Embodiments in
`Bunker Cannot Demonstrate Anticipation
`
`25. Petitioner and Dr. Eaton have stated that the claims of the ’568 patent
`
`are anticipated by Bunker. I have been asked to consider whether one of ordinary
`
`skill in the art would have combined the various embodiments in Bunker to create
`
`a modified cooling hole design, and I have found that neither Petitioner nor Dr.
`
`Eaton have demonstrated that one of ordinary skill in the art would have combined
`
`the different embodiments in Bunker without further numerical simulation and
`
`optimization or experimentation.
`
`26. Petitioner and Dr. Eaton primarily rely on Figure 5 to argue similarity
`
`between Bunker and the ’568 patent. (See Petition at 17, 28, 30, 32, 34-39, 41, 42,
`
`
`
`10
`
`UTC-2002.011
`
`

`
`Case No. IPR2016-00862
`Declaration of Dr. Amir Faghri
`
`47, and 48 (each depicting Bunker’s Figure 5); GE-1003 ¶¶ 40, 50, 51, 53, 55, 58,
`
`60, 62, 64, 66, 69, 71, 75, 78, each depicting Bunker’s Figure 5.) To fill in the
`
`gaps of Figure 5, Petitioner and Dr. Eaton cites features from other embodiments in
`
`Bunker to support its arguments. Neither Petitioner nor Dr. Eaton, however,
`
`provided any support with respect to numerical simulation and optimization or
`
`experimentation to support its arguments, and this analysis would be crucial for
`
`one of ordinary skill in the art to be able to find that features from various cooling
`
`hole designs could be combined.
`
`27.
`
`I understand
`
`that
`
`the Board found
`
`that “Bunker appears
`
`to
`
`contemplate combining the elements disclosed in the various embodiments.”
`
`(Institution Decision at 14.) In my opinion, one of ordinary skill in the art would
`
`not recognize the particular combination of embodiments from Bunker alleged by
`
`Petitioner and Dr. Eaton. As stated by the Board, “Bunker states generally that
`
`‘the described inventive features may be combined in any suitable manner in the
`
`various embodiments.’” (Institution Decision at 14 (citing GE-1005 ¶ 32)
`
`(emphases added).)
`
` However,
`
`this statement acknowledges
`
`that some
`
`combinations would be unsuitable, and without more information, one cannot
`
`assume that any combination is suitable. One of ordinary skill would recognize
`
`that design features used in particular cooling holes cannot be arbitrarily inserted
`
`into other cooling holes, and to find otherwise would fail to account for the
`
`
`
`11
`
`UTC-2002.012
`
`

`
`Case No. IPR2016-00862
`Declaration of Dr. Amir Faghri
`
`complexities of altering cooling hole systems due to the nonlinear nature of flow
`
`configuration.
`
`28. For example, Dr. Eaton explained that certain of Bunker’s plateau
`
`features would not be suitable for other cooling holes: “[N]o one would make a
`
`thing that looked like that [because] a face to me would imply a blockage that went
`
`all the way across there. And no one would do that.” (UTC-2003 at 94:3-19.) I
`
`agree with Dr. Eaton that not all features of a cooling hole design are necessarily
`
`suitable for use in every context.
`
`29. Suitability would need to be determined through further numerical or
`
`experimental analysis, and neither have been provided in this case. Changes to the
`
`configurations of cooling holes, no matter how minor, can have significant and
`
`potentially unpredictable and undesirable changes on the effectiveness of the
`
`cooling hole. As discussed above, cooling holes must not only produce the
`
`required cooling, but the holes must not cause failure in the cooled component or
`
`detrimentally disrupt the flow of hot gases used to generate thrust. Thermal stress
`
`in the form of thermo-mechanical fatigue may weaken engine components and
`
`negatively alter the cooling properties of the component. Relatedly, such
`
`combinations could also result in unpredictable flow paths and could harm overall
`
`engine efficiency. Accordingly, Bunker never states that any of its embodiments
`
`may be combined. Instead, it states that “the described inventive features may be
`
`
`
`12
`
`UTC-2002.013
`
`

`
`Case No. IPR2016-00862
`Declaration of Dr. Amir Faghri
`
`combined in any suitable manner in the various embodiments,” (GE-1005.013
`
`¶ 32), but without further numerical or experimental analysis, this is insufficient to
`
`determine which embodiments could be successfully combined.
`
`30. The components of a cooling hole are not plug-and-play tools, yet
`
`Petitioner and Dr. Eaton pick and choose elements from different embodiments of
`
`Bunker, without explanation of how these elements result in an arrangement of
`
`elements as in the claims or whether the combination would result in an operable
`
`cooling hole. Such a determination is not possible without further numerical or
`
`experimental analysis. I understand that such picking-and-choosing features
`
`amongst separate embodiments in this particular art is inappropriate in an
`
`anticipation analysis.
`
`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
`
`31. Petitioner and Dr. Eaton state that claims 8 and 19 of the ’568 patent
`
`are obvious in light of Bunker in view of Liang. I have been asked to consider
`
`whether one of ordinary skill in the art would have had a reasonable expectation of
`
`success in combining features from the cooling hole designs in Bunker and Liang.
`
`Again, I disagree with Petitioner and Dr. Eaton because their analysis of Bunker
`
`and Liang suffers from many of the same flaws as his analysis of Bunker alone.
`
`
`
`13
`
`UTC-2002.014
`
`

`
`Case No. IPR2016-00862
`Declaration of Dr. Amir Faghri
`
`32. Bunker teaches that valley-plateau structure is important to the
`
`operation of its cooling hole designs: “the shape and size of the plateau and the
`
`valley from which it rises are important factors in maximizing the diffusion of
`
`cooling air that is channeled through the passage holes.” (GE-1005.014 ¶ 49.)
`
`Petitioner and Dr. Eaton, however, seek to remove the valley-plateau feature from
`
`Bunker and replace it with an extra trough. (See Petition at 50-52.) This
`
`modification is contrary to Bunker’s teaching and would change the operation of
`
`Bunker’s cooling hole by altering the diffusion of cooling air that is channeled
`
`through the passage holes.
`
`33. One of ordinary skill in the art would not have a reasonable
`
`expectation of success in replacing Bunker’s central plateau region with a channel,
`
`in the manner articulated by Dr. Eaton and Petitioner. Petitioner and Dr. Eaton
`
`argue that “dividing the cooling flow into more than two channel-like passages”
`
`would have been a “known design choice” and “obvious to try” (Petition at 51-52;
`
`GE-1003 ¶¶ 83-85), but, as discussed above, Petitioner and Dr. Eaton do not
`
`explain why one of ordinary skill in the art would modify a cooling hole design
`
`without numerical simulation, optimization, or experimentation to confirm that the
`
`modified cooling hole would operate for its intended purpose. Petitioner proposes
`
`a major change to the design of Bunker’s cooling hole, yet it is not possible to say
`
`whether the modified Bunker cooling hole would operate as a cooling hole for its
`
`
`
`14
`
`UTC-2002.015
`
`

`
`Case No. IPR2016-00862
`Declaration of Dr. Amir Faghri
`
`intended purpose without this additional simulation or experimental testing. As a
`
`result, Petitioner and Dr. Eaton have not established that one of ordinary skill in
`
`the art would have had a reasonable expectation of success in altering Bunker’s
`
`cooling hole
`
`34. Moreover, Bunker is already established to be an effective cooling
`
`hole design, and the modification proposed by Petitioner and Dr. Eaton would be a
`
`major modification to Bunker’s design. Not only have Petitioner and Dr. Eaton
`
`failed to provide a reasonable expectation of success, but one of ordinary skill in
`
`the art would not be motivated to modify a cooling hole design that Bunker
`
`contends to be effective without numerical or experimental analysis to confirm that
`
`the modified cooling hole design would be effective for its intended purpose.
`
`35. Cooling hole design is complex, and altering one cooling hole design
`
`with a supposedly desirable feature from another design is not a matter of simple
`
`substitution. As a result, Petitioner and Dr. Eaton do not establish that the
`
`combination of Bunker and Liang would have a reasonable expectation of success,
`
`and Petitioner and Dr. Eaton have not established that claims 8 and 19 would have
`
`been obvious to one of ordinary skill in the art.
`
`
`
`
`
`15
`
`UTC-2002.016
`
`

`
`Case No. IPRZO l 6—00862
`Declaration of Dr. Amir Faghri
`
`VIII. Conclusion
`
`36.
`
`In summary, it is my opinion that Bunker does not anticipate claims 1-
`
`7, 9-11, 13-18, and 20-21 and the combination of Bunker and Liang do not render
`
`obvious claims 8 and 19 of the ‘S68 patent. For these reasons, I disagree with
`
`Petitioner and Dr. Eaton’s analysis of the anticipation and obviousness of the
`
`challenged claims.
`
`37.
`
`I declare that all statements made herein of my knowledge are true,
`
`and that all statements made on infonnation and belief are believed to be true, and
`
`that these statements were made with the knowledge that willful false statements
`
`and the like so made are punishable by fine or imprisonment, or both, under
`
`Section 1001 of Title 18 of the United States Code.
`
`Dated:jm 11/ go (7
`
`By: /A-hm}
`
`f"_1—‘:;¢3lr\n-.‘
`
`
`
`Amir Faghri, Ph.D.
`
`16
`
`UTC-2002.017
`
`UTC-2002.017

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