Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper8
`Entered: September 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GENERAL ELECTRIC CO.,
`Petitioner,
`
`V.
`
`UNITED TECHNOLOGIES CORP.,
`Patent Owner.
`
`Case IPR2016-00862
`Patent 8,689,568 B2
`
`Before BENJAMIN D. M. WOOD, HYUN J. JUNG, and
`RICHARD E.RICE, Administrative Patent Judges.
`
`RICE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Tel: 571-272-7822
`
`Paper8
`Entered: September 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GENERAL ELECTRIC CO.,
`Petitioner,
`
`V.
`
`UNITED TECHNOLOGIES CORP.,
`Patent Owner.
`
`Case IPR2016-00862
`Patent 8,689,568 B2
`
`Before BENJAMIN D. M. WOOD, HYUN J. JUNG, and
`RICHARD E.RICE, Administrative Patent Judges.
`
`RICE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2016-00862
`Patent 8,689,568 B2
`
`I.
`
`-
`
`INTRODUCTION
`
`Background
`A.
`General Electric Co. (“Petitioner”) filed a Petition requesting inter
`partes review ofclaims 1-21 ofU.S. Patent No. 8,689,568 B2 (Ex. 1001;
`- “the 568 Patent”). Paper | (“Pet.”). United Technologies Corp.(“Patent
`Owner”) filed a Preliminary Response. Paper 6(“Prelim. Resp.),
`
`Wehavejurisdiction under 35 U.S.C. § 3 14, which provides that an
`
`. there is a reasonable
`.
`inter partes review may notbeinstituted “unless .
`likelihoodthat the petitioner would prevail with respect to-at least 1 of the
`claims challengedin the petition.” 35 U.S.C. § 314(a). Upon considering
`the Petition and the Preliminary Response, we determinethat Petitioner has
`shown a reasonable likelihood that it would prevail in showing the
`unpatentability of at least one ofthe challenged claims. Accordingly, we
`institute an inter partes review.
`
`RelatedProceedings
`B.
`Petitioner states that, to the best ofits knowledge, the ’568 Patentiis
`.
`not involvedin litigation. Pet. 1; see also Paper 5, 1 (indicating that Patent
`Owneris not aware of any related matters).
`
`C.
`The ’568 Patent
`The 7568 Patent issued April 8, 2014 from an applicationfiled July 9,
`2012, and claims the benefit of three provisional applications each filed
`February 15, 2012. Ex. 1001, at (60). The 7568 Patentis titled“Cooling
`| Hole with Thermo-Mechanical Fatigue Resistance.” Jd. at (54). Figure 4 of
`the 568 Patent is reproduced below:
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`_
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`IPR2016-00862
`Patent 8,689,568 B2
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` /
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`110
`
`ce “An8
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`Fig. 4
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`Figure 4 is a sectional view of cooling hole 106 in wall 100 of a gas
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`turbine engine, including first wall surface 102 and second wall surface 104.
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`Id. at 3:52—53, 6:16-16, 53-54. As depicted in Figure 4, cooling hole 106
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`includesinlet 110, metering section 112, diffusing section 114, and
`outlet 116. Id. at 6:57~-59. Cooling air C enters cooling hole 106 through
`
`inlet 110 on the first wall surface and passes through metering section 112
`and diffusing section 114 before exiting cooling hole 106 at outlet 116 along
`the second wall surface (shown in Figure 4 diffusing away from longitudinal
`axis 118 in diffusing section 114 as it flows toward outlet 116). Jd. at 6:60-
`
`63, 7:34-37,Fig.4.
`
`Figure 5 of the ?568 Patent is reproduced below:
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`IPR2016-00862
`Patent 8,689,568 B2
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`
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`Fig. 5
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`Figure 5 is a view of cooling hole 106 taken along line 5—5 as
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`depicted in Figure 4 (reproduced above). Jd. at 3:54-55. As shown in
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`Figure 5, diffusing section 114 includes two channel-like lobes 124 and 126.
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`Each of lobes 124, 126 diverges longitudinally and laterally from metering
`
`section 112, and each has, respectively, bottom surface 128, 130, side wall
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`132, 134, and trailing edge 136, 138. Jd. at 7:45-50. Outlet 116 includes
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`upstream end 158, downstream end(trailing edge) 160, first lateral edge
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`162, and secondlateral edge 164. Id. at 9:56, 8-9.
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`According to the ’568 Patent, cooling hole 106 is less susceptible to
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`the adverse effects of thermo-mechanical fatigue due to its geometry at
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`outlet 116. Jd. at 9:33-34.
`
`D.
`
`The Challenged Claims
`
`Independent claim 1 is representative and is reproduced below:
`
`A gas turbine engine component comprising:
`1.
`a wall having first and second opposing surfaces and
`defining a cooling hole, the cooling hole extending through the
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`
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`IPR2016-00862
`Patent 8,689,568 B2
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`wall from an inlet located at the first wall surface to an outlet
`located at the second wall surface and having:
`a metering section extending downstream from the
`inlet; and
`a diffusing section extending from the metering
`section to the outlet and comprising:
`a first
`lobe diverging longitudinally and
`laterally from the metering section and having a
`trailing edge;
`a second lobe diverging longitudinally and
`laterally from the metering section and having a
`trailing edge;
`an upstream endlocated at the outlet;
`a downstream end generally opposite the
`upstream end andlocated at the outlet, wherein the
`downstream end extends in a straight and lateral
`direction from an end ofthe first lobe to an end of
`the second lobe, and wherein the downstream endis
`at least axially coextensive with the trailing edges
`of the first and second lobes;
`a first sidewall having a first edge extending
`along the outlet between the upstream end and the
`downstream end trailing edge,
`the first edge
`diverging laterally from the upstream end and
`converging
`laterally
`before
`reaching
`the
`downstream end; and
`a second sidewall having a second edge
`extending along the outlet between the upstream
`end and the downstream end generally opposite the
`first sidewall, the second edge diverging laterally
`from the upstream end and converging laterally
`before reaching the downstream end.
`
`E.
`
` Asserted Grounds of Unpatentability
`
`Petitioner contends that the challenged claims are unpatentable based
`
`on the following specific grounds (Pet. 3, 12):
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`IPR2016-00862
`Patent 8,689,568 B2
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`
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`In support of its proposed grounds, Petitioner relies on the Declaration
`
`of John Eaton, Ph.D. (Ex. 1003).
`
`Yl.
`
`ANALYSIS
`
`A.
`
`Claim Construction
`
`Wedetermine that no claim terms require express construction for
`
`purposesofthis Decision.
`
`B.
`
`Claims 1-7, 9-11, 13-18, 20, and 21—Anticipation by Bunker
`
`Petitioner asserts that Bunker anticipates claims 1—7, 9-11, 13-18, 20,
`
`and 21. Pet. 15-49. Patent Owner disagrees. Prelim. Resp. 18-49.
`
`1.
`
`Bunker
`
`Bunker,titled “Articles which Include Chevron Film Cooling Holes,
`
`and Related Processes,” describes film cooling holes or“passage holes”that
`
`are incorporated into the walls of gas-turbine-engine components. Ex. 1005
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`q{ 38-42. Figure 2 of Bunkeris reproduced below:
`
`1 U.S. 2011/0293423 Al (Dec. 1, 2011) (Ex. 1005).
`2 US 7,997,868 B1 (Aug. 16, 2011) (Ex. 1006).
`3 US 7,328,580 B2 (Feb. 12, 2008) (Ex. 1007).
`
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`IPR2016-00862
`Patent 8,689,568 B2
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`
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`Fig. 2
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`Figure 2 illustrates an exemplary wall incorporating passage hole 28,
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`which extends from inlet 30 at inner surface 24 to chevron outlet 32
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`disposed flush at outer surface 26. Id. § 42. Passage hole 28 includesinlet
`
`bore 34 (extending from point X to point Y). Id. 444. Figure 3 of Bunkeris
`
`reproduced below:
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`
`
`Figure 3 is a plan view of passage hole 28 taken alongline 3-3 as
`
`depicted in Figure 2 (reproduced above). Jd. Bore outlet 38 terminates at a
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`chevron outlet 40, which for most of its length “Z” comprises a pair of wing
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`troughs 42, 44. Id. § 45. Wing troughs 42, 44 have a commonsurface
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`region 46 between them. Jd. { 47.
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`“In some embodiments, the commonsurface region 46 comprises a
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`valley or ‘floor’ 48, and a plateau 50, adjacent the valley 48.” Jd. J 48.
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`“Plateau 50 rises above the valley, and extends along axis 36, in a direction
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`opposite hole inlet 30, terminating at a site 52, which is generally flush with
`
`outer wall surface 26.” Id.
`
`Figure 5 of Bunker depicts another embodiment, and is reproduced
`
`below:
`
`Figure 5 illustrates a top view of passage hole 80 and outer surface 82 of a
`substrate. Id. 952. As shown in Figure 5, plateau 92 is situated between
`
`troughs 86 and 88. Jd. Bunkerstates:
`
`(The plateau can generally lie in the same plane as outer surface
`region 93, although the figure seemsto show plateau 92 as being
`angled upwardly from region 93).
`A valley 90 slopes
`downwardly from the plateau,
`toward an inlet bore (not
`specifically shown) extendinginto the substrate. The plateau can
`vary in height, relative to surface 82.
`
`Id. 4 52.
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`IPR2016-00862
`Patent 8,689,568 B2
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`Analysis
`2. |
`To anticipate a patentclaim under 35 U.S.C. § 102, “a single prior art
`reference must expressly or inherently disclose each claim limitation.”
`
`Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).
`
`Moreover,“[a]nticipation requires the presencein a single priorart
`disclosure ofall elements of a claimed invention arranged as in the claim.”
`Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp., 635
`F.3d 1373, 1383 (Fed. Cir. 2011) (citations omitted). In support ofits
`contention that Bunker anticipates claims 1-7, 9-11, 13-18, 20, and 21,
`
`Petitioner provides an analysis of Bunker’s disclosure and identifies where
`Bunkerdiscloses each limitation ofthe challenged claims. Pet. 15—49.
`For example, Petitioner provides an annotated version of Bunker’s _
`Figure 5 (reproduced below) showing how Bunkerdiscloses the requirement
`
`of claim 1 for ‘a downstream end.. . [that] extends in a straight andlateral
`direction from an endofthe firstlobe to an end of the second lobe, and the
`downstream endis at least axially coextensive with the trailing edges ofthe
`
`first and second lobes.” Jd. at 27—28 (citing Ex. 1003 { 50).
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`IPR2016-00862
`Patent 8,689,568 B2
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`
`
`Trailing Edge
`
`4
`
`\
`L erat\
`at
`
`
`
`
`‘
`
`Straightond Lateral
`\.
`),\, DennatresmFd
`
`
`
`Trailing Edge
`
`2S
`
`. According to Petitioner, the annotated figure aboveillustrates that the
`
`downstream end of passage hole 80 “extendsin a straight andlateral
`
`direction between the end of troughs [lobes] 86 and 88 (shaded purple), and
`
`is axially coextensive with the trailing edge of each trough [lobe].” Jd. at 27.
`
`Petitioner provides another annotated version of Bunker’s Figure 5
`
`(reproduced below) showing how Bunkerdiscloses the requirement of
`
`claim 1 for“a first sidewall having a first edge extending along the outlet
`
`between the upstream end and the downstream endtrailing edge,thefirst
`
`edge diverging laterally from the upstream end and converginglaterally
`
`before reaching the downstream end.” Jd. at 30—32 (citing Ex. 1003 Ff 51-
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`53).
`
`10
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`Patent 8,689,568 B2
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`OuterSurface
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`&
`
`@
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`According to Petitioner, the annotated figure aboveillustrates first and
`
`second sidewalls (green shaded areas) as surfaces along the lateral edge of
`
`the diffusing section between each trough (purple shaded areas) and outer
`
`surface 82. Id. at 30 (citing Ex. 1003 51). Petitioner provides another
`
`annotated version of Figure 5 (reproduced below) to show that each edge
`
`diverges laterally and, further downstream, convergeslaterally, as required
`
`by claim 1. /d. at 32 (citing Ex. 1003 ¥ 53).
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`11
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`Patent 8,689,568 B2
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`Accordingto Petitioner, the annotated figure aboveillustrates that each edge |
`diverges laterally (red dashed portion of edges) from the upstream end
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`relative to the centerline axis (purple dashed line), and convergeslaterally
`
`(blue dashed portion) before reaching the downstream end. /d. (citing
`Ex. 1003 453).
`?
`,
`Wehave reviewedthe Petition and the Preliminary Response, and, on
`
`the current record, we are persuaded that Petitioner has demonstrated a
`
`reasonable likelihood of prevailing at trial on its challenge to claims 1-7, 9—
`| 11, 13-18, 20, and 21 as anticipated by Bunker.
`Patent Ownerraises several arguments against institution on this
`
`ground. First, Patent Owner argues that Bunker’s Figure 5 “discloses a
`
`‘chevron’ shaped structure with wing troughs(the alleged lobes) that extend
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`beyond the downstream end.” Prelim. Resp. 2; see id. at 24-25. The
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`predicate for this argumentis that “Bunker teachesthat its plateau 92 and
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`12
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`IPR2016-00862
`Patent 8,689,568 B2
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`outer surface 93 lie generally in the same plane.” Jd. at 2 (citing Ex. 1005
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`{| 52); see id. at 22, 34. Patent Ownerprovides the following annotated
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`version of Bunker’s Figure 5 to illustrate its analysis. Id. at 2-3, 34-35.
`
`
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`According to Patent Owner, the figure above showsthat Bunker’s wing
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`troughs 86 and 88 extend axially past the commonplane ofplateau 92 and
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`surtace 93 (shadedin red), and “[a]s a result, Bunker’s cooling hole lacks a
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`downstream endthatis ‘at least axially coextensive with the trailing edges of
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`the first and second lobes” as required by claim 1. Jd. at 3-4; see id. at 34—
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`36.
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`Onthe current record, we are not persuaded by Patent Owner’s
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`argument. Bunkerdiscloses that plateau 92 “can generally lie in the same
`
`planeas outer surface region 93,”but also disclosesthat “[t]he plateaucan
`
`vary in height, relative to surface 82.” Ex. 1005 952. Patent Owner’s
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`13
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`IPR2016-00862
`Patent 8,689,568 B2
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`,
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`argument does not explain Bunker’s full disclosure. Accordingly, the record
`at this stage of the proceeding does not support sufficiently Patent Owner’s
`assertion that plateau 92 and outer surface 93 generally lie in the same plane.
`Rather, the current record appears to indicate, contrary to Patent Owner’s
`argument, that plateau 92 can vary in height relative to surface 82 of outer
`surface region 93, and that the downstream end ofplateau 92 is axially
`coextensive with the trailing edge of each of troughs [lobes] 86 and 88.
`Second, Patent Ownerarguesthat Petitioner’s anticipation arguments
`depend on combining elements from different Bunker embodiments.
`Prelim. Resp. 25-28. Specifically, Patent Owner arguesthat Petitioner does
`|
`notrely exclusively on the embodiment depicted in Bunker’s Figure 5, but
`rather also relies, inappropriately,“on the elevation view of the embodiment
`of Figures 2 and 3 for its arguments relating to the claimed ‘metering
`section’ and the divergence ofthe wings.” Jd. at 25. On the Current record,
`|
`weare not persuaded by Patent Owner’s argument.
`In contrast to Net MoneyIN,‘ cited by Patent Owner (Prelim Resp. 27—
`28), Bunker appears to contemplate combining the elements disclosed in the
`various embodiments. See Blue Calypso, LLC y. Groupon, Inc., 815 F.3d
`1331, 1343-44 (Fed. Cir. 2016). For example, Bunkerstates generally that
`“the described inventive features may be combined in any suitable mannerin
`the various embodiments.” Ex. 1005 § 32. Bunkeralso discloses that, “[i]n
`
`“
`4 Net MoneyIN v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
`(holding that “it is not enough [for anticipation] that the prior art reference
`discloses part of the claimed invention, which an ordinary artisan might
`supplement to make the whole,orthat it includes multiple, distinct teachings
`that the artisan might somehow combineto achieve the claimed invention.”*)
`(citing In re Arkley, 455 F.2d 586, 587 (CCPA 1972)).
`
`14
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`IPR2016-00862
`Patent 8,689,568 B2
`preferred embodiments, each passage hole 28... diverges both
`longitudinally along the hole, and laterally across the width ofthe hole,” and
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`/
`
`“It]hus, each hole extends from an inlet 30 disposed flush at the inner ,
`
`surface 24 (see FIG. 2) to a chevron outlet 32 disposed flush at the outer
`
`surface 26.” Id. ] 42. Additionally, Bunkerdisclosesthat, “[i]n preferred
`embodiments, each ofthe passage holes 28 includes an inlet bore 34” and
`
`“(t]he bore usually has a substantially constant flow area from its inlet end to
`
`its outlet end.” Id. at §43. On the current record, therefore, we determine
`that Petitioner’s reliance on the metering and divergence elements of the
`embodimentdepicted in Figures 2 and 3 of Bunkeris appropriate.
`
`Patent Ownerfurther argues that Bunker doesnotdisclosethefirst
`and second sidewalls or the first and second edges, required by claim 1.
`Prelim. Resp. 36-42. Patent Owner’s argumenthinges on the premisethat
`“claims 1—7, 9-11, and 13 of the ’568 patent require the lobe sidewallto
`
`define the edge of the hole outlet.” Jd. at 39. Petitioner asserts that “claim 1 /
`
`ties its sidewall and edge geometry to the shape ofits lobes.” Id. at 36.
`Patent Owner advances a similar argument with respectto the first and
`secondlateral edges required by claim 14. Jd. at 41-42. Atthis stage ofthe
`. ‘proceeding, we agreewith Petitioner that:
`The specification describes the side walls as being part of the
`lobes. GE-1001 at 7:38-50. Claim 1, however, identifies the
`lobes and sidewalls as separate limitations, and have been
`analyzed in this Petition as such.
`Pet. 29 n.13. On the currentrecord, weare not persuaded by Patent Owner’s
`arguments with respect to the side walls/edges/lateral edges requirements of
`
`the claims.
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`15
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`* TPR2016-00862
`Patent 8,689,568 B2
`t
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`Dependent claim 2 depends directly from claim 1, and additionally
`requires, inter alia, “an angle formed betweena line tangentto thefirst edge
`at its greatest lateral divergence and the downstream endis greatér than
`about 75°.” Dependent claim 3 depends from claim 2 and requires an ever
`larger angle, i.e., a “greater than about 85°” angle. Dependent claim 16
`dependsdirectly from independent claim 14, and recites a “greater than _
`about 75°” angle. Patent Owner argues that Petitioner’s reliance on
`measurements of Bunker’s figures for the required angles is misplaced
`because patent drawings areinsufficient to show a specific dimensionifthe
`specification is completely silent on the issue. Prelim. Resp. 44-45.
`Patent Owner, however, does not address or refute Dr. Eaton’s
`- testimony that “a cooling hole having rounded edgesanda straight and
`lateral downstream end necessarily forms 90° angles.” Pet. 34 n.16 (citing
`Ex. 1003 ¢ 56). Therefore, at this stage ofthe proceeding, weare not
`persuaded by Patent Owner’s argumentthat Petitioner relies exclusively on
`measurements of Bunker’s figures for the required angles.
`|
`Patent Owneralso challenges Petitioner’s arguments and evidence
`with respect to the requirement of dependent claim 11 for first and second
`inclined portions adjacent the first and secondlobes, respectively. Prelim.
`Resp. 45-49. We have considered Patent Owner’s arguments, but determine
`on the currentrecordthat Petitioner has shown that Bunkerdiscloses the
`inclined portions required by claim 11. See Pet. 41-43.
`C.
`Claims 8 and I9—Obviousness—Bunker and Liang
`Claim 8 depends from claim 1, and additionally recites that “the
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`diffusing section further comprises: a third lobe positioned betweenthefirst
`and second lobes.” Claim 19 depends from claim 14, and recites a similar
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`limitation. Petitioner relies on Liang to teach the third lobe requirement, and
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`asserts that claims 8 and 19 would have been obvious over Bunker and
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`Liang. Pet. 49-52. Patent Ownerdisagrees. Prelim. Resp. 53-57.
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`1.
`
`Liang
`
`Liang discloses a film cooling hole for a gas-turbine-engine
`
`componentthat has a diffusing section with four or five separate diffusion
`
`passages to minimize shear mixingbetweenthe cooling layers and the hot
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`gas stream. Ex. 1006, 2:11—30. Petitioner’s annotated version of Figure 12
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`of Liang is reproduced below:
`
`Fig 12
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`Pet. 50 (citing Ex. 1003 4 80). The figure aboveillustrates cooling hole 10
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`with inlet metering section 11 and diffusion section 12; the diffusion section
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`includes four separate passages, two outer passages 13, 14 (shaded purple)
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`and two inner passages 15, 16 (shaded green). Ex. 1006, 3:4—-10.
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`2.
`
`Analysis
`
`A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if
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`the differences between the subject matter sought to be patented and the
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`17
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`prior art are such that the subject matter as a whole would have been obvious
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`at the time the invention was madeto a person having ordinary skill in the
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`art to which the subject matter pertains. See KSR Int’l Co. v. Teleflex Inc.,
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`550 U.S. 398, 406 (2007). In analyzing the obviousness of a combination of
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`prior art elements,it can be important to identify a reason that would have
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`prompted oneofskill in the art to combine the elements in the way the
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`claimed invention does. Jd. The question of obviousnessis resolved on the
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`basis of underlying factual determinations, including: (1) the scope and
`
`content ofthe prior art; (2) any differences between the claimed subject
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`matterandthe priorart; (3) the level of skill in the art; and (4) objective
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`evidence of nonobviousness,i.e., secondary considerations,if in evidence.
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`See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
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`Petitioner argues that a person of ordinary skill in the art would have
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`modified Bunker’s film-cooling-hole design to include more than two
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`troughsor lobes, as taught by Liang, in order to minimize shear mixing
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`between the cooling layers and the hot gas stream and, thus, to improve film
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`cooling effectiveness for the film cooling hole. Pet. 51-52 (citing Ex. 1006,
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`1:54-58, 2:13-14; Ex. 1003 7 85). In opposition, Patent Ownerargues,inter
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`alia, that Petitioner has failed to explain “how modifying the Bunkeroutlet
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`would minimize shear mixing.” Prelim. Resp. 55.
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`Atthis stage of the proceeding, we are persuadedthat the proposed
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`modification of Bunker’s two-passage design would have been obvious to
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`one ofordinary skill in the art in view of Liang’s teaching that using more
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`than two passages can minimize shear mixing and increase cooling
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`effectiveness. Accordingly, on the current record, we determine that
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`18
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`Patent 8,689,568 B2
`Petitioner has demonstrated a reasonable likelihood ofprevailing attrial on
`its challenge to claims 8 and 19 as obvious over Bunkerand Liang.
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`A.
`
`Claim 12—Obviousness—Bunker and Lee
`
`Independentclaim 12 recites, inter alia, “a first inclined portion
`adjacent the first lobe and extending towards the second lobe” and “a second
`inclined portion adjacent the second lobe and extending towardsthe first
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`lobe, wherein thefirst inclinedportion and the second inclinedportion meet —
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`to form a ridge betweenthefirst and second lobes” (emphasis added).
`Petitioner relies on Leefor the “ridge” feature emphasized in the above
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`quotation, and asserts that claim 12 would have been obvious over the
`combination of Bunker and Lee. Pet. 31-44. Patent Owner disagrees.
`
`Prelim. Resp. 57-63.
`7
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`1.
`Lee _
`Lee discloses a film cooling hole for a gas-turbine-engine component
`that has a “compound chevron” configuration. Ex. 1007,4:1-5. Figure 3 of
`Lee is reproduced below:
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`-.
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` FIG. 3
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`.
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`Patent 8,689,568 B2
`Figure 3 is a plan view of inclined chevron hole 38, which includes chevron
`outlet 42 disposed flush at outer surface 36 and“a pair of chevronorwing |
`troughs orrecesses 48.” Id. at 2:48-49, 4:6—-12. The two troughs 48have a
`commonapexor ridge 50. Id. at 4:26—27.
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`2.
`Analysis
`.
`Petitioner advances a numberof reasons for modifying Bunker’s film-_
`
`cooling-hole design in view of Leeto include the “ridge” feature required by
`
`claim 12. Pet. 55-56. Petitioner argues that “the use of a ridge was a known
`
`design choice for the region between the troughs,” and “one of ordinary skill
`in the art would have knownthat the portion ofthe diffusing section between
`the troughs could have a variety of shapes, including a ridge.” Jd. (citing
`
`Ex. 1003 4 90; Ex. 1005 4 53; Ex. 1007, 7:57-59). Petitioner also argues
`that the combination of Bunker and Lee would have been obvious because
`Bunkermakes an explicit reference to Lee, incorporates Lee byreference,
`and shares a commoninventor with Lee. Id. at 56 (citing Ex. 1003 JJ 91—
`92; Ex. 1005 99 34, 46).
`In response, Patent Ownerarguesthat “Petitioner asserts all elements
`
`of claim12 were knownandthat they could [have been] combined,butthis
`
`bare assertion lacks the requisite ‘articulated reasoning with somerational
`
`underpinning’ that the law demands.” Prelim. Resp. 61; see also id. at 60
`
`(arguing that obviousness cannotbe based onthe mere fact that references
`are related or are in the samefield), 61 (arguing that a patent cannot be
`proved obvious merely by demonstrating that each of its elements was,
`
`independently, knownin the priorart).
`.
`Petitioner’s conclusory arguments do not persuade us that a
`person of ordinary skill in the art would have modified Bunker’s
`
`20
`
`
`
`IPR2016-00862
`Patent 8,689,568 B2
`film-cooling-hole designto include the “ridge” feature required by claim 12.
`Merely stating that the “ridge” feature is a design choice does not make
`it obvious. See Cutsforth, Inc. v. MotivePower, Inc., 636 Fed. Appx.
`575, 578 (Fed. Cir. 2016) (unpublished) (“Merely stating that a
`
`particular placementof an element is a design choice does not makeit
`
`obvious.”). Upon consideration of the Petition and the Preliminary
`
`Response, we determine that Petitioner has not demonstrated a reasonable
`
`likelihood of prevailing on its challenge to claim 12 as obvious over Bunker
`and Lee.
`.
`
`I.
`CONCLUSION
`For the foregoing reasons, we determinethat Petitioner has shown that
`there is a reasonable likelihoodthat it would prevailwith regard to at least
`.
`one ofthe claims challenged in the Petition. At this stage of the proceeding,
`the Board has not made a final determination as to the patentability ofany
`challenged claim or as to any underlying factual or legal issue.
`
`-ORDER
`
`IV.
`For the reasons given,it is
`ORDEREDthatpursuant to 35 U.S.C. § 314,inter partes review is
`
`instituted as to claims 1-11 and 13-21 of the ’568 Patent based on the
`
`following grounds: Claims 1—7,.9-11, 13-18, 20, and 21,.unpatentable under
`35 USC. § 102(e) as anticipated by Bunker; and claims 8 and 19,
`unpatentable under 35 U.S.C.§ 103(a) as obvious over Bunkerand Liang;
`FURTHER ORDEREDthatinter partes review is commencedon the
`
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`
`§ 42.4, notice is hereby givenofthe institution ofa trial; and
`
`21
`
`
`
`IPR2016-00862
`Patent 8,689,568 B2
`
`FURTHER ORDEREDthatthetrial is limited to the grounds of
`
`unpatentability listed above, and no other grounds of unpatentability are
`
`authorized for inter partes review.
`
`22
`
`
`
`IPR2016-00862
`Patent 8,689,568 B2
`
`PETITIONER:
`
`Anish Desai
`Brian Ferguson
`Christopher Pepe
`WEIL, GOTSHAL & MANGES LLP
`anish.desai@weil.com
`brian.ferguson@weil.com
`christopher.pepe@weil.com
`
`PATENT OWNER:
`
`M. Andrew Holtman, Ph.D.
`Jason E. Stach
`FINNEGAN, HENDERSON, FARRABOW, GARRETT & DUNNER, LLP
`UTC-IPR@finnegan.com
`andy.holtman@finnegan.com
`jason.stach@finnegan.com
`
`23
`
`
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