`
`Trials@uspto.gov
`571-272-7822
`
`
` Paper 33
` Entered: October 10, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERAL ELECTRIC COMPANY,
`Petitioner,
`
`v.
`
`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-01442
`Patent 9,695,751 B2
`____________
`
`Before HYUN J. JUNG, SCOTT A. DANIELS, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`ORDER
`Granting Patent Owner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(b)
`
`
`
`IPR2018-01442
`Patent 9,695,751 B2
`
`
`In an Order dated September 23, 2019, we authorized Patent Owner to
`file a motion to submit supplemental evidence and Petitioner to file an
`opposition. Paper 30.
`Patent Owner timely filed their Motion (Paper 31, “Mot.”), and
`Petitioner timely filed their Opposition. (Paper 32, “Opp.”).
`Patent Owner’s Argument
`Patent Owner desires to enter in this proceeding, along with its
`forthcoming Sur-Reply to Petitioner’s Reply (Paper 28), four patents,
`apparently assigned to Petitioner, GE, which Patent Owner wishes to offer in
`response to Petitioner’s arguments that one of ordinary skill in the art
`understands the meaning of the term “stage,” as including both a row of
`stationary vanes as well as a row of rotating blades, to be indisputable. Mot.
`1. Patent Owner argues that these patents are relevant evidence that “stage,”
`as recited in the claims of the ’751 patent, does not necessarily mean both a
`row of rotating blades and a row of non-rotating vanes to a person of
`ordinary skill in the art. Id. at 1–2. It is Patent Owner’s specific contention
`that the four patents “contradict GE’s contention that its definition of the
`term ‘stage’ is indisputable, thus showing that a POSITA would not
`necessarily have understood Knip to ‘specifically disclose[] that its HPT
`consists of two complete stages.’” Id. at 5.
`Patent Owner argues that the four patents it “now seeks to submit
`could not reasonably have been obtained earlier,” because the Petition did
`not specifically show where or how Knip’s volumetric diagrams or
`disclosure revealed the claimed aspect of “an inlet of a first turbine vane,” as
`recited in claim 1. Id. at 2. Also, Patent Owner argues that these four
`patents are timely submitted as rebuttal to Petitioner’s interpretation that a
`
`
`
`
`2
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`IPR2018-01442
`Patent 9,695,751 B2
`
`turbine “stage” includes both a row of stationary vanes and a row of rotating
`fan blades, which Patent Owner contends was raised for the first time in
`Petitioner’s Reply. Id. at 3. Patent Owner argues that this information is
`submitted to rebut Petitioner’s argument in its Reply and thus is in the
`interests of justice and further that these patents are not prejudicial to
`Petitioner as they are part of a standard sur-reply and offered simply in
`response to the Reply. Id.
`Petitioner’s Argument
`Petitioner opposes submission of the four additional patents because
`its “position in the Reply concerning the term ‘stage’ was not new,” and that
`Patent Owner “was on notice since the Petition of GE’s position on the
`common and ordinary meaning of ‘stage,’ and how that meaning relates to a
`POSITA’s interpretation of Knip’s disclosure.” Opp. 1. Petitioner also
`points out that in his deposition prior to submission of Patent Owner’s
`Response, Petitioner’s declarant Dr. Attia, explained that a person of
`ordinary skill in the art “would understand that the inlet of the HPT would
`coincide with the leading edge of the first stator in the first stage of the . . .
`HPT.” Id. at 2 (citing Ex. 2016, 184–185). Further, Petitioner argues that
`this supplemental information is untimely because Patent Owner should
`have known to submit these additional references along with previously
`submitted references in its Patent Owner Response rebutting Petitioner’s,
`and Dr. Attia’s, position that a “stage” is understood by those of ordinary
`skill in the art to typically include a row of vanes and a row of rotating
`blades. Id. (citing Ex. 2021, Abst.).
`
`
`
`3
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`
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`IPR2018-01442
`Patent 9,695,751 B2
`
`
`Analysis
`To submit evidence more than one month after the institution of an
`inter partes review, 37 C.F.R. § 42.123(b) requires the motion show why the
`information reasonably could not have been obtained earlier and that
`consideration of the supplemental information would be in the interests of
`justice. As the moving party, Patent Owner bears the burden of proving that
`it is entitled to the requested relief. 37 C.F.R. § 42.20(c).
`On this record and in the particular circumstances of this proceeding,
`we determine that Patent Owner has met its burden to show why the
`supplemental information reasonably could not have been obtained earlier
`and that consideration of the supplemental information would be in the
`interests of justice. See 37 C.F.R. § 42.123(b).
`We appreciate Petitioner’s argument that Dr. Attia has been consistent
`in stating that a person of ordinary skill in the art would understand a “stage”
`to include both a row of stationary vanes (or stators), and a row of rotating
`airfoils.1 Compare, e.g., Ex. 1003 ¶ 69, with Ex. 2016, 184–185. Patent
`Owner has, however, made a persuasive argument that the Petition itself did
`not expressly articulate that such an understanding would have led a person
`of ordinary skill in the art to understand that Knip’s volumetric diagram
`would have included a typical “stage” with both a row of stationary vanes
`defining an inlet, followed by a row of rotating airfoils, and therefore
`disclosed to a person of ordinary skill in the art, “an inlet of a first turbine
`vane,” as recited in claim 1. See Mot. 1–2 (Patent Owner argues that “the
`Petition’s mapping of Knip to limitation [1.5] does not once mention the
`
`
`1 Dr. Attia explains that the terms “vanes” and “stators” are understood by
`those of ordinary skill in the art to be synonymous. Ex. 2016, 185:8–20.
`4
`
`
`
`
`
`IPR2018-01442
`Patent 9,695,751 B2
`
`word ‘vane,’ much less that Knip’s use of the term ‘stage’ indisputably
`means that Knip’s HPT includes an ‘inlet of a first turbine vane.’”). The
`Board has consistently maintained that it is Petitioner’s responsibility to
`explain in the Petition the specific evidence that supports its arguments. See
`37 C.F.R. § 42.22(a)(2).
`Patent Owner should have been aware, and probably was to some
`extent aware, by at least the completion of Dr. Attia’s deposition testimony,
`that Petitioner’s position was that one of ordinary skill in the art would have
`understood the beginning, or inlet, of the diagrammatic HPT turbine
`depiction to include and be defined by a row of stator blades. However, we
`are persuaded that this issue was developing. See Ex. 2016, 184–185. We
`find Petitioner’s complete argument as to what a person of ordinary skill in
`the art would have understood from Knip, was not yet entirely manifest prior
`to Petitioner’s Reply.
`It is true that Patent Owner, in developing its own argument that Knip
`does not disclose a HPT with “an inlet of a first turbine vane,” as recited in
`claim 1, presupposes Petitioner’s not-yet-manifest argument. See PO Resp.
`20–22 (Patent Owner argues that “[t]he Petition merely parrots the claim
`language . . . [i]t neither identifies a ‘first turbine vane’ in Knip nor alleges
`inherency.”). Patent Owner argues in its Response that “not all high
`pressure turbine designs necessarily include an inlet vane.” PO Resp. 22
`(citing Ex. 2015 ¶ 70; Ex. 2017, Abst., ¶¶ 2; Ex. 2018 ¶¶ 1–2, 49–50;
`Ex. 2019 ¶¶ 19–20, 32, 45; Ex. 2021, Abst., 1:38–47, 4:38–63). For
`example, Patent Owner points to U.S. Patent Appl’n. No. 12/190,174
`disclosing a turbine design that “eliminates the need for row one turbine
`vanes and thus eliminates the leading and trailing edges, and the associated
`
`
`
`5
`
`
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`IPR2018-01442
`Patent 9,695,751 B2
`
`problems, including the difficulties of cooling the leading and trailing edges,
`and the gas blockage caused by the existence of the row one turbine vanes.”
`Ex. 2019 ¶ 32.
`Petitioner’s complete argument, asserting the meaning of the “stage,”
`finally crystallizes, in our view, in Petitioner’s Reply. Reply 5–11. In its
`Reply, and relying on a supplemental declaration (Exhibit 1046) from Dr.
`Attia, Petitioner more directly states “Knip’s schematic allows a POSITA to
`determine the ‘leading edge of a first turbine vane and a trailing edge of the
`last rotating airfoil’ without separately illustrating each vane or rotating
`airfoil within the engine’s turbine section.” Id. at 4 (citing Ex. 1046 ¶¶ 5–
`10). According to Petitioner, this is so because Knip expressly discloses a
`“two-stage” HPT, and “[a] ‘stage’ consists of a row of stationary stator
`vanes, and a rotor with rotating airfoil blades.” Id. at 7. Also in its Reply,
`Petitioner advances the further argument that “If Knip was missing a first
`row of stator vanes, a POSITA would have expected Knip to state that its
`HPT has 1.5 stages.” Id. at 8 (citing Ex. 1051, 44:19–45:2).
`It is reasonable that Patent Owner should not have to deduce
`Petitioner’s challenges and all of its supporting arguments before they
`develop during the course of a proceeding, without a chance to respond in
`some fashion. Given the facts, arguments, and evidence with respect to what
`a person of ordinary skill in the art understands with respect to a “stage,” as
`presented by Petitioner in its Reply in this proceeding, we determine that it
`is also in the interests of justice that Patent Owner should be afforded the
`opportunity to submit supplemental information, consisting of four patents
`with its Sur-Reply. Accordingly, we grant Patent Owner’s Motion to
`Submit Supplemental Information. We also grant Petitioner a three-page
`
`
`
`6
`
`
`
`IPR2018-01442
`Patent 9,695,751 B2
`
`Supplemental Reply addressing only Patent Owner’s assertions relative to
`the supplemental information in the Sur-Reply.
`Based on the October 30, 2019 oral hearing currently scheduled for
`this proceeding, and assuming the parties are requesting oral argument, the
`due dates are as follows. Requests for Oral Argument are due no later than
`October 16, 2019. Patent Owner’s Sur-Reply and supplemental information
`are due no later than October 18, 2019, and Petitioner’s Supplemental Reply
`is due no later than October 25, 2019. The parties are authorized to stipulate
`to due dates earlier than those listed above.
`After considering Patent Owner’s request, it is:
`ORDERED that Patent Owner’s Motion to Submit Supplemental
`Information is granted;
`FURTHER ORDERED that the parties’ Request for Oral Argument
`are due no later than October 16, 2019;
`FURTHER ORDERED that Patent Owner’s Sur-Reply including the
`supplemental information is due no later than October 18, 2019; and
`FURTHER ORDERED that Petitioner is authorized to file a three-
`page Supplemental Reply addressing only Patent Owner’s assertions relative
`to the supplemental information in the Sur-Reply, no later than October 25,
`2019.
`
`
`
`7
`
`
`
`IPR2018-01442
`Patent 9,695,751 B2
`
`PETITIONER:
`
`Anish R. Desai
`Brian E. Ferguson
`Christopher Pepe
`Daniel Musher
`WEIL, GOTSHAL & MANGES LLP
`anish.desai@weil.com
`brian.ferguson@weil.com
`christopher.pepe@weil.com
`daniel.musher@weil.com
`
`PATENT OWNER:
`
`W. Karl Renner
`David L. Holt
`Kenneth W. Darby, Jr.
`FISH & RICHARDSON P.C.
`Axf-ptab@fr.com
`holt2@fr.com
`kdarby@fr.com
`
`
`
`8
`
`
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