Trials@uspto.gov
`571-272-7822
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`Paper No. 7
`Entered: October 2, 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 IPR2017-01096
`Patent 8,572,943 B1
`____________
`
`Before HYUN J. JUNG, SCOTT A. DANIELS, and
`GEORGE R. HOSKINS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`
`
`Paper No. 7
`Entered: October 2, 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 IPR2017-01096
`Patent 8,572,943 B1
`____________
`
`Before HYUN J. JUNG, SCOTT A. DANIELS, and
`GEORGE R. HOSKINS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2017-01096
`Patent 8,572,943 B1
`
`I.
`
`INTRODUCTION
`
`A. Background
`General Electric Company (“Petitioner”) filed a Petition to institute an
`inter partes review of claims 1–7, 10–14, and 16–20 of U.S. Patent No.
`8,572,943 B1 (“the ’943 patent”). Paper 1 (“Pet.”). United Technologies
`Company (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Upon consideration
`of the Petition and the Preliminary Response, we determine that Petitioner
`has established a reasonable likelihood of prevailing on the claims
`challenged in the Petition. For the reasons expressed below, we institute an
`inter partes review of claims 1–7, 10–14, and 16–20 of the ’943 patent.
`B. Additional Proceedings
`Petitioner states that to its knowledge, the ’943 patent is not asserted
`in any lawsuit. Pet. 1. Petitioner has also challenged certain claims of the
`’943 patent in separate proceeding IPR2017-01097. Id.
`C. The ’943 Patent
`The ’943 patent (Ex. 1001), titled “Fundamental Gear System
`Architecture,” describes a gear system for driving the fan of a gas turbine
`engine. Ex. 1001, 1:1–18. Figure 2 of the ’943 patent is reproduced below.
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`Figure 2 of the ’943 patent, above, depicts gear assembly 65 with input shaft
`40 and sun gear 62 driving intermediate gears 64, which in turn intermesh
`with ring gear 66 to drive fan 42. Id. at 5:61–6:2. Lubrication system 98,
`through main oil system 80, supplies lubrication to gears 62, 64, and 66 and
`in doing so, also cools the gears by removing heat generated in gear
`assembly 65 via line 88.1 Id. at 6:28–40.
`Also illustrated in Figure 2 is a flexible mount system designed to
`isolate gear assembly 65 and its components from misalignment due to
`externally applied forces. Id. at 6:3–5. Power is input to gear assembly 65
`from shaft 40 through flexible coupling 72 to sun gear 62, and flexible
`
`
`1 The ’943 patent refers to element 65 as both “gear box” and “gear
`assembly.” Compare Ex. 1001, 6:3 with id. at 6:45. We understand no
`substantive difference between the terminologies, so for purposes of
`consistency, we use “gear assembly 65” in this Decision.
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`mounts 76 support gear assembly 65 relative to external frame 36 so that
`forces applied by the external frame are not transferred to gears 62, 64, and
`66. Id. at 6:5–17.
`D. Illustrative Claim
`Of the challenged claims, claims 1 and 10 are independent. Each of
`the challenged dependent claims 2–7, 11–14, and 16–20 depend from
`respective independent claims 1 and 10. Claim 1 illustrates the claimed
`subject matter and is reproduced below:
`1. A fan drive gear system for a gas turbine engine comprising:
`a gear system configured to provide a speed reduction between a
`fan drive turbine and a fan;
`a mount flexibly supporting portions of the gear system radially
`extending from a static structure of the gas turbine engine with
`respect to a central axis to accommodate radial movement
`between the gear system and the static structure; and
`a lubrication system configured to provide lubricant to the gear
`system and remove thermal energy produced by the gear
`system, wherein the lubrication system includes a maximum
`capacity for removing thermal energy from the gear system
`greater than zero and less than about 2% of power input into
`the gear system during operation of the engine.
`Ex. 1001, 8:25–40.
`E. The Alleged Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable on the
`following specific grounds.2
`
`
`2 Petitioner supports its challenge with Declarations of Dr. Magdy Attia,
`Ph.D (Ex. 1003) and Raymond Drago, PE (Ex. 1005). See infra.
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`References
`Daly3 and Sheridan ’5164
`
`Daly, Sheridan ’516, and Sheridan
`’0095
`Daly, Sheridan ’516, and Wilfert6 § 103 19
`
`
`Basis Claim(s) Challenged
`§ 103 1–3, 5–7, 10–12, 14, 16–18,
`and 20
`
`§ 103 4 and 13
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`CLAIM CONSTRUCTION
`
`II.
`A. Legal Standards
`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).
`Claim terms are given their ordinary and customary meaning as would
`be understood by a person of ordinary skill in the art at the time of the
`invention and in the context of the entire patent disclosure. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). If the specification
`“reveal[s] a special definition given to a claim term by the patentee that
`
`
`3 Ex. 1031, Mark Daly, Bill Gunston, JANE’S AERO-ENGINES, (2010), Iss. 27,
`Pratt & Whitney PW1000G (formerly GTF Geared Turbofan) (“Daly”).
`4 Ex. 1032, U.S. Patent Appl’n Publication No. 2010/0105516 A1 (Apr. 29,
`2010) (“Sheridan ’516”).
`5 Ex. 1009, U.S. Patent Appl’n Publication No. 2008/0116009 A1 (May 22,
`2008) (“Sheridan ’009”).
`6 Ex. 1033, Dr. Günter Wilfert, AERO-ENGINE DESIGN: FROM STATE OF THE
`ART TURBOFANS TOWARDS INNOVATIVE ARCHITECTURES, Lecture Series,
`von Karman Institute for Fluid Dynamics (2008), MTU Aero Engines,
`Geared Fan (“Wilfert”).
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`differs from the meaning it would otherwise possess[,] . . . the inventor’s
`lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed.
`Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
`1359, 1366 (Fed. Cir. 2002)). We apply this standard to the claims of the
`’943 patent.
`B. Thermal energy
`Petitioner contends that the claim term “thermal energy” is used in the
`specification synonymously with “heat.” Pet. 24 (citing Ex. 1001, 7:26–29,
`8:3–5). Petitioner contends further that the specification explains that the
`heat or thermal energy is due to power loss in the gear assembly, and “comes
`from input power that is not transmitted to output power (i.e., power loss).”
`Id. (citing Ex. 1001, 6:56–58). Patent Owner does not specifically dispute
`Petitioner’s interpretation and asserts that construction of this term is not
`necessary for our decision. See Prelim. Resp. 29.
`Our review of the specification as a whole and the claim language is
`consistent with Petitioner’s contention that “thermal energy” is synonymous
`with “heat,” and that heat and thermal energy in the gear assembly occurs
`due to power loss between input power and output power. Compare Ex.
`1001, 7:26–29 with id. at 8:1–3. To the extent it is necessary for purposes of
`our Decision, we adopt Petitioner’s interpretation.
`C. Lubrication system
`Patent Owner objects that Petitioner’s interpretation of the term
`“lubrication system” as lubricating simply the gear assembly, is overly
`narrow, and the term instead “should be construed consistent with the
`intrinsic record to mean ‘a system that provides lubricant flow to one or
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`more rotating components of the gas turbine engine.’” Prelim. Resp. 25
`(citing Pet. 39–43).
`Whether or not Petitioner’s interpretation is overly narrow, we are not
`persuaded, at this point in the proceeding that “lubrication system,” needs to
`be explicitly construed. Claim 1 recites in part:
`a lubrication system configured to provide lubricant to the gear
`system and remove thermal energy produced by the gear system,
`Ex. 1001, 8:34–36. The specification of the ’943 patent is entirely consistent
`with this claim language, describing for example, “a lubrication system
`providing lubricant to the gear system and removing thermal energy from
`the gear system produced by the gear system.” Id. at 2:38–41. The
`specification also describes the lubrication system providing lubrication “to
`the rotating components of the gas turbine engine including the bearing
`assemblies 38.” Id. at 5:42–44.
`We agree with Patent Owner on one hand, that under the broadest
`reasonable interpretation, that the term, “lubrication system” recited apart
`from its claimed functionality, is not expressly limited solely to providing
`lubrication to, and heat removal from, the “gear assembly.” See Prelim.
`Resp. 26 (Patent Owner’s specific contention is that “[w]hile the claims
`require the ‘lubrication system’ to serve ‘the gear system,’ the claims do not
`limit the recited ‘lubrication system’ to serving the gear system alone.”).
`The proposed claim construction on the other hand, adds further
`functionality and unclaimed structure, e.g. “one or more rotating
`components” not expressed in the claim. The explanations in the
`specification may aid our understanding of the claim language, but it is
`important not to read in claim limitations from the specification. See
`Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
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`2004) (“The written description, however, is not a substitute for, nor can it
`be used to rewrite, the chosen claim language.”). As discussed above, we
`apply the broadest reasonable interpretation in our analysis, and it is unclear
`at this early point in the proceeding how a construction including additional
`functionality and structure clarifies the original claim language. Thus, we
`are not persuaded currently, to read specific components and additional
`functionality described in the specification into this limitation.
`D. Maximum capacity
`Patent Owner argues that the proper understanding of “maximum
`capacity,” as recited for example in claims 1 and 11, should not ignore the
`word “maximum.” See Prelim. Resp. 27 (Patent Owner argues that “[i]n
`effect, [Petitioner] asks the Board to simply ignore the term ‘maximum.’”).
`Patent Owner asserts, further, that the claimed quantifications, e.g. in claims
`1 and 11 of thermal energy removal in the gear system at a range, “greater
`than zero and less than about 2% of power input,” associated with the term
`“maximum capacity,” give weight to Patent Owner’s argument that the term
`“maximum” not be ignored. See id. at 28 (“This express quantification of
`the term ‘maximum capacity’ is consistent with the quantity recited in
`claims 1, 3, 11, and 12.”).
`We note that dependent claims 3 and 12 recite merely the word
`“capacity” without the word “maximum,” in association with a specific
`range of thermal energy removal from the gear system, i.e. a range “equal to
`less than about 1% of power input.” See Ex. 1001, 8:45–48, 9:35–38. In
`this respect, “maximum capacity” and “capacity” are juxtaposed with
`different ranges of power input in the context of the claims. Based on a
`reasonable reading of the claims, and in accordance with the plain and
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`ordinary meaning of these terms as understood by one of skill in the art
`reading the claims in context, we interpret “maximum capacity” to fall
`within a range of thermal energy removal “from the gear system greater than
`zero and less than about 2% of power input into the gear system,” and
`“capacity” as recited in claims 3 and 12, to fall within a range of thermal
`energy removal from the gear system equal to less than about 1% of power
`input into the gear system.
`E. Other Constructions
`Petitioner offers constructions for several additional terms, namely
`“radially extending” (claims 1 and 10), “bypass ratio” (claim 18), and “fan
`pressure ratio (claim 19). Pet. 23–30. We do not provide explicit
`constructions for these claim terms because doing so is not necessary for our
`determination of whether to institute inter partes review of the asserted
`claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999) (only those terms which are in controversy need to be
`construed, and only to the extent necessary to resolve the controversy).
`III. ANALYSIS
`We turn now to Petitioner’s asserted grounds of unpatentability and
`Patent Owner’s arguments in its Preliminary Response to determine whether
`Petitioner has met the threshold standard of 35 U.S.C. § 314(a).
`A. Claims 1–3, 5–7, 10–12, 14, 16–18, and 20 — Alleged obviousness
`over Daly and Sheridan ’516
`Petitioner asserts that claims 1–3, 5–7, 10–12, 14, 16–18, and 20
`would have been obvious over Daly and Sheridan ’516. Pet. 30–36. On the
`current record, Petitioner has established a reasonable likelihood of
`prevailing on its assertion that claims 1–3, 5–7, 10–12, 14, 16–18, and 20 are
`obvious for the reasons explained below.
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`1. Daly
`Daly describes a demonstrator engine designed by Pratt & Whitney
`(“PW”), designated PW1000G, that is specifically a geared turbofan aircraft
`engine. Ex. 1031, 6. The stated aim of the PW1000G engine is towards
`“achieving reduced fuel consumption, reduced maintenance costs, reduced
`noise and reduced emissions, in that order of priorities.” Id. A photograph
`in Daly, of PW’s gearbox having an epicyclic gear assembly including a
`central input gear (i.e. a sun gear), five star gears, and an outer ring gear, is
`shown below.
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`Id. at 9. Daly’s photograph, reproduced above, discloses a gearbox for a
`geared turbofan aircraft engine, ostensibly the PW1000G engine, with a
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`power input to the central sun gear, intermediate star gears, and power
`output from the outer ring gear to the engine fan.7 Id.
`Daly explains that a geared turbofan engine raises engine efficiency
`by permitting the fan to operate at a lower rotational speed than the turbine
`driving the fan. Id. at 7. On the other hand, such a reduction gear system, as
`Daly notes, can “spoil[] the underlying mechanical simplicity of the gas
`turbine engine. It adds a safety-critical complication, expense and possibly
`extra weight as well.” Id.
`In conjunction with the gearbox, Daly teaches a “single oil supply for
`the engine/gearbox” where “gears are lubricated by precisely-metered oil
`jets providing full-film lubrication of the gear faces.” Id. at 9. Daly explains
`further that “[t]he gear case is held on a flexible bellows mounting between
`the ring gear bearing and input shaft.” Id.
`2. Sheridan ’516
`Sheridan ’516 discloses an aircraft turbofan engine, including a star
`gear train, intended to reduce the output speed of the turbine to drive a large
`diameter fan and “to match the gear reduction ratio with the appropriate fan
`bypass ratio.” Ex. 1032 ¶ 3. Sheridan ’516 teaches that certain aircraft
`maneuvers create dynamic bending and flexure moments that can be
`transmitted to the gear train, and thus it is advantageous to provide a flexible
`coupling between the gear box and a mechanical ground that “permit the
`gear train to be radially displaced a limited amount to absorb flexure of the
`shafts without damaging the gear teeth.” Id. ¶ 4.
`
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`7 Daly explains that the relevant gearbox description refers to “a star
`gearbox, where gears rotate on a fixed axis, not planetary, where the gears
`move position.” Ex. 1031, 8.
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`Figure 1 of Sheridan ’516 is reproduced below.
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`Figure 1 of Sheridan ’516, above, illustrates coupler 52 supporting gear train
`30 relative to a stationary frame component of engine 10. Shown below, in
`the following discussion relative to claim 1, Figure 3 of Sheridan ’516
`illustrates in greater detail coupler 52 including flexible coupling 74 and
`deflection limiter 76. Id. ¶ 21. Sheridan ’516 describes that as part of
`coupler 52 “[f]lex coupling 74 provides radial support from strut 64 during
`all operations of engine 10.” Id.
`3. Claim 1
`Petitioner argues that both Daly and Sheridan ’516 disclose a fan
`drive gear system, and at least Daly’s gear system provides speed reduction
`between the engine turbine and the fan. Pet. 34–35. Petitioner contends
`that Daly teaches a “flexible bellows mounting” supporting the gear system,
`but not the particular details of such a mounting. Id. at 35 (citing Ex. 1031,
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`9). Petitioner argues that Sheridan ’516 discloses a flexible gearbox mount
`and expressly describes “a carrier flexible coupling that radially supports the
`gear system and extends from a stationary engine component.” Id. at 36
`(citing Ex. 1005 ¶ 60; Ex. 1032 ¶ 3). Petitioner provides an annotated
`version of Sheridan ’516’s Figure 3, reproduced below, designating flexible
`carrier coupling 74 within dashed red boxes. Id. at 37.
`
`Sheridan ’516’s Figure 3, reproduced above with annotations by Petitioner,
`illustrates a cross-section view of a portion of gas turbine engine 10,
`including gear assembly 30, flexible coupler 52, flexible carrier coupling 74,
`and deflection limiter 76. Ex. 1032 ¶ 16.
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`Turning back to Daly, Petitioner asserts that Daly describes a
`lubrication system for lubricating and cooling the gear system. Pet. 38
`(citing Ex. 1005 ¶ 63; Ex. 1031, 9). With respect to the “maximum capacity
`for removing thermal energy from the gear system greater than zero and less
`than about 2% of power input into the gear system” limitation, Petitioner
`argues that “Daly discloses that the efficiency of the gear system is greater
`than 99%,” and based on this efficiency, Petitioner charges that one of
`ordinary skill in the art would understand the relative thermal energy
`removed from Daly’s gear system is less than 1%, and therefore falls within
`the range recited in claim 1. Id. at 39–42.
`In support of its analysis Petitioner relies on excerpts from a
`mechanical engineering textbook as well as its declarant, Raymond Drago,
`arguing that “efficiency of a gearbox is a function of the power input to the
`gear system (PInput) and the power loss of the gear system (PLoss).” Pet. 40
`(citing Ex. 1005 ¶ 64; Ex. 1018, 201). Mr. Drago testifies further that the
`power loss in the gear system is well understood by those of skill in the art
`as equivalent to the thermal energy of the gear system. Ex. 1005 ¶ 64 (citing
`Ex. 1001, 6:56–60). Thus, Petitioner argues that
`[f]or a gear system that produces thermal energy equal to less
`than 1% of power input, it would have been obvious to a person
`of ordinary skill in the art to design the lubrication system to have
`a maximum capacity for removing thermal energy from the gear
`system greater than zero and less than about 2% of power input
`into the gear system.
`Pet. 41 (citing Ex. 1005 ¶ 65). Petitioner explains that “[i]t is well
`established in the prior art that the lubrication system of a gear system is
`sized based on the heat or thermal energy produced by the gear system.” Id.
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`(citing Ex. 1005 ¶ 65; Ex. 1018, 119; Ex. 1013, 007; Ex. 1034, 003; Ex.
`1035, 003).
`Based on the present record, we determine Petitioner has
`demonstrated a reasonable likelihood of prevailing in its challenge of claim
`1 as unpatentable over Daly and Sheridan ’516.
`Patent Owner makes several distinct arguments with respect to
`Petitioner’s analysis and asserted prior art; we address these arguments in
`turn.
`
`(a) Whether Petitioner’s reliance on Daly to teach a
`“maximum capacity” of a gear system lubrication
`system is inconsistent with the teachings of Daly
`Patent Owner disagrees with Petitioner’s analysis and argues that
`“Daly says nothing about the ‘capacity’ of its lubrication system, much less
`the ‘maximum capacity’ of that system.” Prelim. Resp. 30. Patent Owner
`argues further that Petitioner’s analysis is inconsistent with Daly, because
`Daly’s lubrication system serves other components in Daly’s PW1000G
`engine, in addition to the gearbox. Id. at 32.
`First, we agree with Patent Owner that Daly does not expressly
`disclose any overall capacity for an engine lubrication system. Petitioner
`however, relies upon its declarant, Mr. Drago, and Mr. Drago’s citation to
`various prior art references, that a person of ordinary skill in the art would
`have known to size a lubrication system for a gear system relative to the
`thermal energy developed in the gear system. Pet. 41 (citing Ex. 1005 ¶ 65;
`Ex. 1013, 007; Ex. 1018, 119). This is so, Mr. Drago testifies, because
`“increasing the capacity of a lubrication system, such as by increasing the
`size of the heat exchanger, increases the volume and weight of the
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`lubrication system. This is known to be undesirable on an aircraft engine.”
`Ex. 1005 ¶ 66 (citing Ex. 1010, 1:54–59).
`Secondly, it is not clear why Petitioner’s analysis is inconsistent with
`Daly’s lubrication system. Petitioner and its declarant’s analyses rely on the
`statement from Daly, as alleged in context that, the gear system “[e]fficiency
`is put at greater than 99 percent.” Pet. 39–40 (citing Ex. 1031, 9). From
`this, as discussed above, Petitioner contends that one of skill in the art would
`have known to size a lubrication system to cover a range of zero to 2% of
`power input, so as “to have a maximum capacity for removing thermal
`energy from the gear system greater than zero and less than about 2% of
`power input into the gear system.” Pet. 41 (citing Ex. 1005 ¶ 65) (emphasis
`added). Daly’s disclosure as read by Petitioner, and Petitioner’s arguments
`based thereon, address the thermal energy in the gear system and appear
`generally consistent with the language of claim 1 which recites “wherein the
`lubrication system includes a maximum capacity for removing thermal
`energy from the gear system greater than zero and less than about 2% of
`power input.” See Ex. 1001, 8:36–39.
`We acknowledge that Petitioner’s analysis does not include analysis
`relating to lubrication of additional components of the PW1000G engine
`apart from the gear system. See Prelim. Resp. 33 (Patent Owner argues that
`“GE never accounts for Daly’s use of an integrated engine-gearbox
`lubrication system.”). Patent Owner has not, however, explained sufficiently
`how this renders erroneous Petitioner’s analysis with respect to sizing a
`lubrication system to account for the gear system. We appreciate that there
`may be other lubricated components in an aircraft engine besides the gear
`box, but the claim language, on its face, is directed to “a maximum capacity
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`for removing thermal energy from the gear system.” Ex. 1001, 7:37–39. In
`this clause, “maximum capacity” is associated with “for removing thermal
`energy from the gear system.” Whether or not Daly’s oil system supplies
`lubricant to other engine components, it is not clear at this point in the
`proceeding that Petitioner’s apparent failure to account for components
`described in Daly apart from “the gear system” is a flawed analysis.
`We determine, on this record, that based on Daly’s disclosure of a
`gearbox efficiency of greater than 99 percent, a person of ordinary skill in
`the art would have understood a power loss of about 1 percent exists in the
`gearbox, and would have known to size a lubricating system to provide a
`maximum capacity for thermal energy removal between 0 and 2% of power
`input into the gear system.
`(b) Whether or not Daly’s disclosure of “99 per cent”
`efficiency is directed to a gearbox
`Patent Owner argues further that GE’s analysis “simply assumes” that
`Daly’s disclosed efficiency “at greater than 99 per cent” relates to Daly’s
`gearbox. Prelim. Resp. 35–38. Patent Owner contends that this is mere
`speculation on Petitioner’s part. Id. at 37–38.
`A reasonable reading of Daly at pages 8–9, is that the relevant
`description leading up to the sentence at issue is directed mainly to a “gear
`case,” and more specifically a “star gearbox” as shown for example in the
`photograph of the gearbox on page 9 of Daly. Ex. 1031, 8–9. The last
`sentence of the gearbox description does not expressly state that the
`described “99 per cent” efficiency is solely the gearbox module, but where it
`appears as the last sentence in a long paragraph discussing, essentially
`exclusively the gearbox, a reader could reasonably understand in context that
`the “99 per cent” value is more than likely directed to gearbox efficiency.
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`Whether or not a person of ordinary skill in the art would recognize “99 per
`cent” as directed to the gearbox, as Patent Owner speculates they would not,
`is an issue to be developed during the trial.
`(c) Whether a person of ordinary skill in the art would
`have been motivated to replace Daly’s mounting
`structure with Sheridan ’516’s mounting structure
`Patent Owner argues also that Petitioner has failed to support
`adequately the combination of Daly and Sheridan ’516. Prelim. Resp. 39–
`52. Specifically, Patent Owner contends that Petitioner has failed to provide
`a motivation to replace the “bellows mounting” in Daly, with the mounting
`in Sheridan ’516, and failed to explain “why a POSITA would seek another
`flexible mount despite the bellows mounting disclosure of Daly.” Id. at 40–
`43.
`
`Petitioner contends that flexibly mounting gears in a geared turbo-fan
`aircraft engine has been well known for decades. Pet. 31–32 (citing Ex.
`1005 ¶ 54; Ex. 1011, 92). Petitioner argues that because these were known
`mounting structures to those of skill in the art, the motivation to substitute
`Sheridan ’516’s flexible mount for the “bellows mounting” in Daly is simply
`“the predictable use of prior art elements according to their established
`functions.” Pet. 32 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
`(2007)). Also, Petitioner argues that Daly acknowledges the importance of a
`durable and reliable gearbox and that Sheridan ’516 explicitly teaches “a
`flexible mount system that provides for reduced wear on the gear teeth.”
`Pet. 32 (citing Ex. 1032 ¶ 4). Therefore Petitioner asserts, “[o]ne of ordinary
`skill in the art would expect that the flexible support structure disclosed in
`Sheridan ’516 would help provide the reliability required of an aircraft
`engine disclosed in Daly.” Id. at 33 (citing Ex. 1005 ¶ 56).
`
`18
`
`
`
`IPR2017-01096
`Patent 8,572,943 B1
`
`
`Patent Owner takes the position that Petitioner has failed to explain
`why and how a person of ordinary skill in the art would replace Daly’s
`bellows mounting with Sheridan’s mounting system, and that Petitioner has
`omitted any technical reasoning as to what the technical impact of such
`replacement would be on the PW1000G engine. See Prelim. Reps. 44–52.
`This position has some merit. We are persuaded, however, for purposes of
`institution, that Petitioner has shown that Sheridan ’516’s mounting system
`would perform the same or similar function of balancing the gear load on the
`star gear system as the bellows mount described in Daly. See KSR, 550 U.S.
`at 401 (“A court must ask whether the improvement is more than the
`predictable use of prior art elements according to their established
`functions.”). And, we are persuaded that a person of ordinary skill in the art,
`having these two references before him or her, would have understood that
`Daly’s mounting bellows could be successfully replaced with a similar
`device, performing essentially the same function, leading to reduced wear
`and improved reliability of the gearbox. See Ex. 1005 ¶ 56 (In his
`declaration, Mr. Drago explains that “one of ordinary skill in the art would
`have been motivated to use the mount system described in Sheridan 516 to
`reduce gear system wear and achieve the objective of high reliability for the
`application described in Daly.”).
`To the extent that Patent Owner argues that it is not a trivial technical
`matter to simply integrate Sheridan ’516’s mounting system into Daly’s
`engine and that the engine development process “is painstaking and can take
`years,” these arguments alone, do not convince us, on the present record,
`that one of ordinary skill in the art would not have had the technical
`knowledge, time and industry resources to accomplish such a substitution.
`
`19
`
`
`
`IPR2017-01096
`Patent 8,572,943 B1
`
`Prelim. Resp. 51–52. We determine, on the record before us, that Petitioner
`has shown a reasonable likelihood of prevailing on its assertion that claim 1
`would have been obvious in view of Daly and Sheridan ’516.
`4. Claims 2, 3, and 5–7
`
`
`We have reviewed Petitioner’s arguments and evidence with respect
`to the challenged claims 2, 3, and 5–7, and find Petitioner’s arguments
`persuasive at this stage of the proceeding with respect to these dependent
`claims as well. See Pet. 45–51 (citing Ex. 1005, ¶¶ 64–70, 73–75, 77–78;
`Ex. 1007, 5:36–45; Ex. 1031, 8; Ex. 1032 ¶¶ 5, 11–12, 14–15, 18, 21–24,
`Fig. 3). For example, claim 3 recites the limitation “wherein the lubrication
`system includes a capacity for removing thermal energy equal to less than
`about 1% of power input into the gear system.” As discussed above, we are
`persuaded that Daly arguably discloses that the efficiency of the gear system
`is greater than 99%, and that one of ordinary skill in the art would have
`understood the relative thermal energy removed from Daly’s gear system
`based on greater than 99% efficiency, is less than 1% of power input, and
`within the range recited in claim 3. See Section III. 3. A.
`
`We determine on the record before us that Petitioner has shown a
`reasonable likelihood of prevailing on its assertion that claims 2, 3, and 5–7
`would have been obvious in view of Daly and Sheridan ’516.
`5. Claims 10–12, 14, 16–18, and 20
`Independent claim 10 is similar to claim 1 including “a gas turbine
`engine,” “a gear system,” “a mount flexibly supporting the gear system
`radially extending from a static structure,” and “a lubrication system
`
`20
`
`
`
`IPR2017-01096
`Patent 8,572,943 B1
`
`configured to provide lubricant to the gear system.” Ex. 1001, 9:11–30.
`However, instead of a “maximum capacity . . . greater than zero and less
`than about 2% of power input,” as in claim 1, claim 10 recites that the gear
`system has “an efficiency greater than about 98% to less [than] 100%.” Id.
`at 9:21.
`Petitioner asserts that Daly discloses an efficiency, arguably
`pertaining to the gear system, of “99 per cent.” Pet. 52 (citing Ex. 1031, 9).
`In light of our understanding of Daly, in context, as discussed above, we are
`persuaded at this stage of the proceeding that this efficiency falls within the
`range recited in claim 10. Thus, for similar reasons as discussed above with
`respect to independent claim 1, we determine also that Petitioner has shown
`a reasonable likelihood that claim 10 is obvious in view of Daly and
`Sheridan ’516.
`We have reviewed Petitioner’s arguments and evidence with respect
`to the challenged dependent claims 11–12, 14, 16–18, and 20, and find
`Petitioner’s arguments persuasive at this stage of the proceeding with respect
`to these dependent claims as well. See Pet. 51–56 (citing Ex. 1003 ¶¶ 50–
`58, 62–63, 65–68; Ex. 1005, ¶¶ 59, 68, 79–90; Ex. 1011, 34; Ex. 1013, 6;
`Ex. 1020, 18; Ex. 1033, 5, Figs. 3–4; Ex. 1032 ¶ 3).
`We determine on the record before us that Petitioner has shown a
`reasonable likelihood of prevailing on its assertion that claims 10–12, 14,
`16–18, and 20 would have been obvious in view of Daly and Sheridan ’516.
`B. Claims 4 and 13 — Alleged obviousness over Daly, Sheridan ’516,
`and Sheridan ’009
`Petitioner asserts, as called for in both dependent claims 4 and 13, that
`Sheridan ’009 discloses a lubrication system for a gear system in a gas
`t
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