Trials@uspto.gov
`571-272-7822
`
`Paper No. 23
`'
`Entered: September 15, 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 IPR2016-00862
`Patent 8,689,568 B2
`
`Before HYUN J. JUNG, SCOTT A. DANIELS, and
`GEORGER. HOSKINS, Administrative Patent Judges.
`
`HOSKINS, Administrative Pulent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 CFR. § 42.73
`
`
`571-272-7822
`
`Paper No. 23
`'
`Entered: September 15, 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 IPR2016-00862
`Patent 8,689,568 B2
`
`Before HYUN J. JUNG, SCOTT A. DANIELS, and
`GEORGER. HOSKINS, Administrative Patent Judges.
`
`HOSKINS, Administrative Pulent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 CFR. § 42.73
`
`
`
`IPR2016-00862
`Patent 8,689,568 B2
`
`I.
`
`INTRODUCTION
`
`General Electric Company (“Petitioner”) filed a Petition (Paper1,
`“Pet.”) pursuant to 35 U.S.C. §§ 311-319 to institute an inter partes review
`of claims 1-21 of U.S. Patent No. 8,689,568 B2 (“the 568 patent”). United
`
`Technologies Corporation (“Patent Owner”)filed a Preliminary Response
`(Paper 6). On September 29, 2016,weinstituted review of claims 1-11 and
`13-21, but not of claim 12 (Paper8, “Inst. Dec.”).
`
`Duringthe trial, Patent Owner timely filed a Response (Paper 14,
`“PO Resp.”). Petitioner timely filed a Reply (Paper 17, “Pet. Reply”). An
`oral hearing was held on July 24, 2017, and a copy of the transcript was
`
`entered into the record (Paper 22, “Tr.”).
`Wehavejurisdiction under 35 U.S.C. § 6. This Decisionis a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims for whichtrial proceeded. Based on the record before us, Petitioner
`has shown,by a preponderanceofthe evidence, that claims 1-11 and 13-21
`
`of the °568 patent are unpatentable.
`
`Il.
`
`BACKGROUND
`
`A.
`
`Related Praceedings
`
`Neither party has identified any other judicial or administrative matter
`that would affect, or be affected by, a decision in this proceeding. Pet. 1;
`
`Paper 5, 1; 37 C.F.R. § 42.8(b)(2).
`
`B.
`
`The ’568 Patent
`
`The °568 patentis directed to “cooling techniques for airfoils and
`other gas turbine engine components exposed to hot working fluid flow.”
`Ex. 1001, 1:20-27. Figures 4 and 5 of the 568 patent are reproduced below:
`
`2
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`
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`IPR2016-00862
`
`Patent 8,689,568 B2
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`Fig. 5
`
`Figure 4 is a sectional view of cooling hole 106 in wall 100, and Figure 5 is
`a view of the samehole taken alongline 5-5 in Figure 4, looking down at
`
`surface 104 of wall 100. Jd. at 3:52-55, 6:16-18, 6:53-57. Cooling air C
`
`enters cooling hole 106 at inlet 110 in first surface 102, passes through
`metering section 112 of hole 106, then enters diffusing section 114 of
`hole 106, and exits at outlet 116 along second surface 104. Jd. at 6:57-63.
`Metering section 112 “controls (meters) the flow ofair through cooling
`hole 106.” Jd. at 6:64-66. The °568 patent claims focus on a cooling hole’s
`
`diffusing section and outlet.
`
`
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`IPR2016-00862
`Patent 8,689,568 B2
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`“As shownbest in FIG.5, diffusing section 114 includes two
`
`channel-like lobes 124 and 126.” Jd. at 7:38-39. “Lobes 124 and 126 are
`
`surfaces of wall 100 which define the void of cooling hole 106 at diffusing
`
`section 114.” Id. at 7:43-44. First lobe 124 has bottom surface 128 and side
`
`wall 132 to direct cooling air C through the lobe, toward trailing edge 136 of
`
`first lobe 124. Jd. at 7:45-61. Second lobe 126 similarly has bottom
`
`surface 130, side wall 134, and trailing edge 138. Jd. Lobes 124 and 126
`
`are separated by inclined portions 148 and 150 at an upstream end, and
`interlobe region 142 at a downstream end. Jd. at 7:62-8:27. Ridge 152
`
`betweeninclined portions 148 and 150 “aids in separating and directing the
`
`flow of cooling air C into first lobe 124 and second lobe 126.” Jd. at 8:28—
`
`34.
`
`Outlet 116 includes upstream end 158 and downstream end 160, with
`first lateral edge 162 and secondlateral edge 164 extending between the two
`ends. Jd. at 9:5-17. Asfirst lateral edge 162 extends downstream from
`
`upstream end 158,the edge “laterally diverges away trom centerline
`axis 140” until it reaches stationary point 163, at which point edge 162
`begins to “converge[] towardscenterline axis 140.” Jd. at 9:19-25. Second
`edge 164 is configured similarly. Jd. at 9:25-32. To lessen “the adverse
`effects of [thermo-mechanicalfatigue] due to [the] geometry at outlet 116”
`having “sharp corners” at each end of a “V-shaped”trailing edge in priorart
`cooling holes, “downstream end 160is straight and extends betweentrailing
`edge 136offirst lobe 124 andtrailing edge 138 of second lobe 126, forming
`a straight trailing edge at outlet 116.” Jd. at 9:33-10:11.
`
`
`
`IPR2016-00862
`Patent 8,689,568 B2
`
`C.
`
`Illustrative Claim
`
`Trial wasinstituted as to independent claims 1 and 14, and their
`
`respective dependent claims. Claim1isillustrative:
`1. A gas turbine engine component comprising:
`a wall having first and second opposing surfaces and defining
`a cooling hole, the cooling hole extending through the 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 theinlet;
`and
`a diffusing section extending from the metering section to
`the outlet and comprising:
`a first lobe diverging longitudinally andlaterally from
`the metering section and havinga trailing edge;
`a second lobe diverging longitudinally and laterally
`from the metering section and havinga trailing edge;
`an upstream endlocated atthe outlet;
`a downstream end generally opposite the upstream end
`and located at the outlet, wherein the downstream end
`extends in a straight and lateral direction from an end of
`the first lobe to an end of the second lobe, and wherein the
`downstream end is 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 diverginglaterally from the upstream end and
`converginglaterally before reaching the downstream end.
`
`Ex. 1001, 13:43-14:8.
`
`
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`IPR2016-00862
`Patent 8,689,568 B2
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`D.
`
` Asserted Grounds of Unpatentability
`
`Weinstituted a trial to determine whether claims 1—11 and 13-21 of
`
`the °568 patent are unpatentable on the following grounds. Inst. Dec. 21.
`
`
`
`Statutory
` Reference(s)
`Basis
`
`§ 102(e)
`Bunker (Ex. 1005) (U.S. Pub.
`No. 2011/0293423 Al (Dec. 1, 2011))
`
`
`BunkerandLiang (Ex. 1006) (U.S. Pat.
`No.7,997,868 BI (Aug. 16, 2011))
`
`
`§ 103(a)
`
`
`
`
`Claims Tried
`|
`
`1-7, 9-11,
`13-18, 20, and 21
`
`8 and 19
`
`
`
`Il. ANALYSIS
`
`A.
`
`Level of Ordinary Skill in the Art
`
`Petitioner’s declarant Dr. John Eatontestifies that a person of ordinary
`
`skill in the art “would include someone whohas a[n] M.S. degree in
`
`Mechanical Engineering or Aerospace Engineering as well as at least 3-5
`
`years of experiencein the field of gas turbine airfoil cooling research,
`design, and/or analysis.” Ex. 1003 § 4. Patent Owner’s declarant Dr. Amir
`
`Faghri testifies that a person of ordinary skill in the art “would typically
`
`have a[n] M.S. degree in Mechanical Engineering or Aerospace
`
`Engineering, as well as at least 3 to 5 years of experience in heat transfer.”
`
`Ex. 2002 § 16.
`
`Thus, there is agreement as to educational background and years of
`
`experience. There is disagreementas to the type of experience required —
`gas turbineairfoil cooling (per Dr. Eaton) or heat transfer in general (per
`Dr. Faghri). We determine a person ofordinary skill in the art pertaining to
`the 568 patent may havethe requisite years of experiencein the field of gas
`
`
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`IPR2016-00862
`Patent 8,689,568 B2
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`turbine airfoil cooling, or in the heat transfer field more generally. We are
`
`not persuaded by Petitioner’s argument that a person with atleast three years
`of experiencein the heat transfer field would require yet more experience in
`the specific context of gas turbine engine cooling, to achievealevel of
`ordinary skill as to the 568 patent. Moreover, our analysis would be the
`samebased oneither party’s proposed level of ordinary skill in the art.
`In this regard, Petitioner contends Dr. Faghri’s testimony “should be
`given no weight,” because he “is an expert in heat pipe design, which has
`absolutely nothing to do with.. . airfoil cooling hole design.” Pet. Reply 2,
`14-15. Petitioner’s Reply in effect urges us to exclude Dr. Faghri’s
`testimony without providing Patent Ownerthe procedural safeguardsset
`forth in 37 C.F.R. §§ 42.64(b)-(c) & 42.23 for motions to exclude evidence.
`Weare, also, unpersuadedthat testimony from a heat transfer expert would
`not help us to understand the evidenceorto determinea fact at issue in this
`proceeding. See id. § 42.62; Fed. R. Evid. 702(a). Thus, we will not
`exclude Ur. Kaghri’s testimony. We have, however, taken the respective
`educational and experiential backgrounds of Dr. Eaton and Dr. Faghri into
`account when weighing the evidence presented in this proceeding.
`
`B.
`
`Claim Construction
`
`The Boardinterprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification ofthe patent in which
`
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 214446 (2016) (upholding the broadest reasonable
`construction standard); Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,764 (Aug. 14, 2012).
`
`
`
`IPR2016-00862
`Patent 8,689,568 B2
`
`1.
`
`“sidewall” (claim 1)
`
`Patent Ownercontendsthe first sidewall of claim 1 must be a
`
`componentorpart ofthe first lobe, and the second sidewall must be a
`
`componentorpart of the second lobe. PO Resp. 52-57. Patent Owner
`
`asserts the decision in Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295
`
`(Fed. Cir. 1999), “confirm[s] that one claimed structure maybe limited to
`
`being a subcomponentofa separately recited structure” where “the
`
`specification describes the advantages of the unitary structure as important
`
`to the invention.” PO Resp. 53-54. Patent Ownerargues claim 1 “ties the
`
`lobes to the sidewalls as a single unitary structure”in that the claim specifies
`
`the edge of each sidewall extends to the “downstream endtrailing edge” of
`
`the corresponding lobe. Jd. at 54-55. Patent Owneralso relies on the
`
`’568 patent specification “expressly characteriz[ing] the ‘side wall’ as a
`subpart of a lobe.” Jd. at 55-56 (citing Ex. 1001, 7:45—50, and annotating
`°568 patent Fig. 5). Patent Owner contendsa person ofordinary skill in the
`art “would recognize the strategic importance of the sidewall as a
`subcomponentof a lobe,” based on Dr. Eaton’s testimony that “shape is
`important in these holes,” and Dr. Faghri’s testimonythat “small changes to
`cooling holes can havesignificant consequences.” Jd. at 56-57 (citing
`
`Ex. 2003, 14:1-2; Ex, 2002 4 19).
`
`Petitioner asserts Patent Owner’s proposed constructionis “irrelevant”
`
`to whether Bunker discloses the cooling hole structure recited in claim 1.
`
`Pet. Reply. 2-3, 19. We disagree. If claim 1 is construed to require that the
`sidewalls are a componentorpart of a lobe, that (assumed) claim
`requirementis not met bythe cooling hole diffusing section of Bunker’s
`Figure 5, upon whichPetitionerrelies as disclosing the claimed sidewalls.
`
`
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`IPR2016-00862
`Patent 8,689,568 B2
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`See Pet. 30 (showing alleged sidewalls as green shaded areas in Bunker’s
`
`Figure 5, and describing the sidewalls as “extend[ing] from” the alleged
`lobes that are shaded purple “up to the outer surface of” the wall).
`
`Petitioner also asserts Patent Owner’s claim construction “is based on
`
`a fundamental misconception regarding the nature ofan airfoil cooling
`
`hole,” because such a hole “is not comprised of separate structures that are
`
`pieced together”but rather “is a single unitary structure.” Pet. Reply 20-21.
`Petitioner therefore attempts to distinguish the present case from Toro,
`
`which concerned a vacuum/blower“comprised of several distinct
`
`componentsthat are assembled to form the claimed apparatus.” Jd. at 20
`n.5. Petitioner acknowledges the 568 patent specification “describes the
`side walls as being part of the lobes,” but argues claim 1 “identifies the lobes
`
`and sidewalls as separate limitations” and analyzes them as such. Pet. 29
`
`n.13 (citing Ex. 1001, 7:38-50); Pet. Reply 19-20.
`
`Wedeterminea broadest reasonable construction of claim 1 does not
`
`require the sidewalls to be a componentorpart of the lobes. First, the claim
`plainly recites “a diffusing section ... comprising”a first lobe, a second
`lobe, upstream and downstream ends locatedat an outlct, andfirst and
`second sidewalls. Ex. 1001, 13:50-14:8. Thus, claim 1 indicates that the
`
`lobes and the sidewalls are parts of the diffusing section, not that the
`sidewalls are part of the lobes. In requiring the sidewall edges to extend to a
`downstream endtrailing edge of a correspondinglobe(e.g., id. at 13:65-67),
`claim 1 merely specifies a spatial inter-relationship between the sidewall
`edges andthetrailing edges of the lobes, and does not require that the
`
`sidewalls are part of the lobes.
`
`
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`IPR2016-00862
`Patent 8,689,568 B2
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`It is true, as Patent Ownerpoints out, that each embodimentillustrated
`
`in the 568 patent figures includes diffusing section sidewalls being a
`componentof the lobes in the diffusing section. See, e.g., id. at 7:38—-50,
`Fig. 5. Nonetheless, we must be careful not to read a particular embodiment
`appearingin the specification into the claim,if the claim languageis broader
`than the embodiment. See Innova/Pure Water, Inc. v. Safari Water
`
`Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004) (“particular
`embodiments appearing in the written description will not be used to limit
`claim language that has broader effect”); In re Van Geuns, 988 F.2d 1181,
`1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from
`the specification.”). Furthermore, the °568 patent specification,like the
`language ofclaim 1, indicates the lobes and the sidewalls are parts of the
`diffusing section, not that the sidewalls are part of the lobes. Ex. 1001,
`
`Abstract, 3:12—21, 12:2-11.
`Unlike the situation presented in Toro, the °568 patent specification
`
`does not describe any advantage of the sidewalls being a componentorpart
`of the lobes. See Toro, 199 F.3d at 1298, 1301 (patent at issue emphasized
`permanent attachment between ring and cover, with ring as part of cover).
`Patent Ownerdoesnot cite, and we cannotfind, any disclosure in the
`’568 patent specification informing a person ofordinaryskill in the art of
`any special significance of the sidewalls being a part of the lobes, versus
`other characteristics of the cooling holeillustrated in Figure 5 of the
`°568 patent (for example). Patent Owner’s assertion that the “advantagesto
`the °568 cooling hole designattach to the entire shape of the cooling hole”
`(PO Resp. 56-57) proves too much. Takento its logical conclusion,it
`requires importation into claim 1 of every aspect ofthe entire shape and
`
`10
`
`
`
`IPR2016-00862
`Patent 8,689,568 B2
`
`configuration of the cooling hole illustrated in Figure 5 of the 568 patent.
`For example,it requires importation of the exact shape of lobes 124 and 126
`and outlet 116 as showntherein, without deviation as to the width ofthe
`
`lobes or the exact curvature ofthe outlet. It further requires importation of
`
`the specific inclined portions 148 and 150, andinterlobe region 142, shown
`in Figure 5. However,it is a “fundamentalprinciple that claims define the
`scope of patentprotection,” which “presupposesthat a patent applicant
`defines his invention in the claims, not in the specification.” Johnson &
`
`Johnson Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1052 (Fed. Cir. 2002)
`
`(en banc) (citations omitted).
`For the foregoing reasons, we determine a broadest reasonable
`construction of claim 1 requires the first and second sidewalls to be part of
`the diffusing section of a cooling hole, but does not require the sidewalls to
`be part of the lobes within the diffusing section.
`
`2.
`
`“lateral edge” (claim 14)
`
`Patent Owner contendsthe first and secondlateral edges of claim 14
`
`should be construed as a componentorpart of, respectively, the first and
`second lobes. PO Resp. 62. Patent Owner drawsaparallel between the
`claim requirementsfor the edges to “diverg[e] laterally from the upstream
`end and converg[e] laterally before reaching the downstream end,” and for
`the lobes to “diverg[e] longitudinally and laterally from the metering
`section.” Jd. Patent Owneralso argues the °568 patent specification
`
`“confirms that the lateral edges form where the lobe sidewalls meet the outer
`wall surface.” Jd. at 62-64 (citing Ex. 1001, 9:12-19, Abstract, Fig. 1).
`
`11
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`IPR2016-00862
`Patent 8,689,568 B2
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`Petitioner’s response is substantially the same as described abovein
`
`connection with the sidewalls of claim 1. Pet. 44-45; Pet. Reply. 19-21.
`
`Wedeterminea broadest reasonable construction of “lateral edge” in
`
`claim 14 of the 568 patent does not require the lateral edges to be a
`
`componentorpart of the lobes. The claim recites “an outlet,” and plainly
`
`specifies that the outlet comprises upstream and downstream ends,andfirst
`
`and secondlateral edges extending between those ends. Ex. 1001, 15:28-43.
`
`Claim 14 also recites “a diffusing section .
`
`.
`
`. terminating at the outlet” —
`
`that is, there is no overlap betweenthe diffusing section and the outlet. Jd. at
`
`16:34. It is the diffusing section and notthe outlet that is required to
`
`comprisefirst and second lobes. Jd. at 16:3—9. We perceive no requirement
`
`in claim 14 tying the lateral edges of the outlet to the lobes of the diffusing
`
`section.
`
`Asto the ’568 patent specification, lateral edges 162 and 164 are
`
`edges between outer wall surface 104 and, respectively, sidewalls 132 and
`
`134. Id. at Fig. 5, 7:43-50, 9:5-6, 9:12-17. As discussed above, requiring
`
`the sidewalls of claim 1 to be a componentor part of the lobes would
`
`improperly read a limitation into claim 1 from the specification. All the
`moreso, requiring the lateral edges of claim 14 to be a componentorpart of
`the lobes would similarly improperly read a limitation into claim 14 from the
`
`specification, especially given that claim 14 does not even specify sidewalls.
`For the foregoing reasons, we determine a broadest reasonable
`
`construction of claim 14 requires the first and secondlateral edges to be part
`
`of the outlet, but does not require them to be part of the lobes within the
`
`diffusing section that terminatesat the outlet.
`
`12
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`IPR2016-00862
`Patent 8,689,568 B2
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`3.
`
`Remaining Claim Terms
`
`Nofurther explicit constructions of any claim terms are needed to
`resolve the issues presented by the arguments and evidence ofrecord. See
`Nidec Motor Corp. v. Zhongshan Broad Ocean MotorCo.Ltd.,
`No. 2016-2321, F.3d __, 2017 WL 3597455, *3 (Fed. Cir. Aug. 22, 2017)
`(per curiam) (claim terms need to be construed “only to the extent necessary
`to resolve the controversy’’) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). This includes the terms “metering
`
`section”(see Pet. 13), “diffusing section” (see id. at 13-14), and “lobe” (see
`id. at 14-15). See also PO Resp. 52 n.6 (“Patent Owner does not addressthe
`
`merits of Petitioner’s proposed constructions here.”).
`
`C.
`
`Anticipation by Bunker
`
`Petitioner asserts claims 1-7, 9-11, 13-18, 20, and 21 of the
`
`°568 patent are unpatentable under 35 U.S.C. § 102(e) as anticipated by
`Bunker. Pet. 15-49. Petitioner cites the Declaration of Dr. John Eaton in
`
`support. Ex. 1003. Patent Owner opposesPetitioner’s assertions.
`PO Resp. 15-65. Patent Ownercites the Declaration of Dr, Amir Faghri in
`
`.
`support. Ex. 2002.
`Wehavereviewed the arguments and evidence of record. Based on
`our review,and for the following reasons, we determine a preponderance of
`
`the evidence demonstrates claims 1-7, 9-11, 13-18, 20, and 21 of the
`
`°568 patent are unpatentable as anticipated by Bunker. We begin our
`analysis with a brief statementofthe law ofanticipation, then provide a brief
`summary of Bunker, and finally address Petitioner’s and Patent Owner’s
`
`contentions.
`
`13
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`IPR2016-00862
`Patent 8,689,568 B2
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`1.
`
`LawofAnticipation
`
`“Anticipation requires thatall of the claim elements and their
`
`limitations are shown in a single prior art reference.” In re Skvorecz,
`
`580 F.3d 1262, 1266 (Fed. Cir. 2009).
`
`2.
`
`Bunker
`
`Bunkerdiscloses structures for cooling various components of a gas
`
`turbine engine. Ex. 1005 42. Bunkerparticularly discloses “passage holes”
`
`which “terminat[e] in a chevron outlet .
`
`.
`
`. includ[ing] a pair of wing
`
`troughs,” separated by a valley and plateau. Jd. at Abstract. Figures 2 and 3
`
`of Bunkerare reproduced below:
`
`14
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`IPR2016-00862
`Patent 8,689,568 B2
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`Figure 2 is a transverse sectional view of exemplary passage hole 28 ina
`wall, and Figure 3 is a plan view of passage hole 28 taken along line 3-3 in
`
`Figure 2, looking downat surface 26 of the wall. Jd. J] 16-18, 42. Passage
`
`hole 28 permits a cooling air flow to pass from inlet 30 at inner wall
`
`surface 24, through inlet bore 34, to chevron outlet 32 / 40 at outer wall
`
`surface 26. Id. J§ 42-45. Chevron outlet 32 / 40 comprises a pair of wing
`
`troughs 42 and 44, separated by valley 48 and plateau 50. Id. {{] 45-48.
`
`Figure 5 of Bunkeris reproduced below:
`
`Figure 5 “is a top view” of “another embodimentof a portion of a passage
`hole 80” with an outlet in outer surface 82 ofa substrate. Id. J] 20, 52.
`
`Figure 5 showsplateau 92 situated between troughs 86 and 88. Jd. 52.
`Plateau 92 “can generally lie in the same planeas outer surface region 93,
`although the figure seems to show platcau 92 as being angled upwardly from
`region 93,” and “[t]he plateau can vary in height, relative to surface 82.” Id.
`“[V]alley 90 slopes downwardly from the plateau, toward an inlet bore (not
`specifically shown) extendinginto the substrate.” Jd.
`
`15
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`IPR2016-00862
`Patent 8,689,568 B2
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`3.
`
`Independent Claim |
`
`At the outset, we note Patent Owner argues Petitioner’s anticipation
`
`challenge mustfail because Bunker’s disclosure, especially Figure 5, is
`“ambiguous”and so “cannot form the basis for an anticipation rejection.”
`PO Resp. 1-2, 15, 16-31. Patent Ownercites the prosecution history of
`Bunker, during which the Examinerstated, in support of an enablement
`
`rejection:
`
`The view ofFIG.1 is understood, but appearsto lack the claimed
`plateau and valley. FIG[S]. 2-6 are not a clear representation of
`the claimed valley and plateau and how they are arranged with
`the troughs. The detailed description furtherfails to clarify the
`specific geometry ofthe invention. The examiner, well-versed in
`the film cooling art, has made his best educated guess on the
`configuration of the plateau, valley and troughs; but cannot be
`certain that which is understood, is what Applicants attempted to
`be disclosed.
`
`Ex. 2004.075—.076 (emphases added); see PO Resp. 16, 29. Patent Owner
`contendsthe identified lack ofclarity is not resolved in the Bunker
`publication (Ex. 1005), because the applicant’s corrective amendmentsto
`Figures 1 and2 are notreflected in the Bunker publication, and Figure 5 was
`never amended. PO Resp. 16, 29. According to Patent Owner, “one can
`only speculate about the shapeof the cooling hole attempting to be depicted
`in [the top view of] Bunker’s Figure 5,” due to the lack of corresponding end
`or side views, and the lack of “sufficient explanatory text.” Jd. at 22 (citing
`
`Ex. 2003, 13:9-14:2).
`
`Patent Owneradditionally asserts Petitioner’s declarant Dr. Eaton
`“repeatedly characterized” the Bunkerdisclosure as “ambiguous” during his
`deposition. PO Resp. 1-2, 16-17, 21-22, 26-27, 30 (citing Ex. 2003, 13:9-
`
`16
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`14:2, 15:8-18, 18:23-19:4, 19:25—20:3, 20:10-21:2, 22:20-24:4, 93:25—
`
`94:19, 95:24-96:5). Patent Owner contends Dr. Eaton improperly
`
`speculated as to whatis disclosed in Bunker’s Figure 5 by looking at
`
`pictures on the web,pictures in books, physical turbine blades, and other
`
`things outside of the Bunkerdisclosure,in trying to discern what was
`
`attempted to be drawnin Figure 5. Jd. at 22-23, 27-29, 34 (citing Ex. 2003,
`14:15-20, 15:19-16:19, 90:19-24, 93:25-94:19). Patent Owner, further,
`contends Dr. Eaton was confused about Bunker’s plateau during his
`
`deposition testimony. /d. at 28 (citing Ex. 2003, 95:24—96:5).
`
`Petitioner responds that Patent Ownerhas failed to identify any
`
`ambiguity in Bunker with respect to whether Bunker discloses each and
`
`every limitation of claim 1, and that there is no such ambiguity.
`
`Pet. Reply 1, 3-9. Petitioner contends Dr. Eaton’s testimonyfails to reflect
`
`any ambiguities in Bunkerthatrelate to the claimed subject matter. Jd. at 1,
`
`5-6 (citing Ex. 2003, 20:4—21:10), 7. Petitioner further asserts Bunker’s
`prosecution history does not support Patent Owner’s position, because the
`Examiner’s enablement rejection was withdrawn anda patent issued.
`
`Id. at 6; Ex. 1015. Finally according to Petitioner, Bunker’s cooling hole
`
`description has “the samelevel ofclarity as” the ’568 patent. Pet. Reply 8-9
`
`(citing Ex. 2003, 13:14-21).
`As our following discussion makesclear, we agree with Petitionerthat
`
`there is no ambiguity in Bunkerasit relates to whether Bunkerdiscloses
`
`each and every limitation of claim 1. Thatis, there is no ambiguity in
`
`Bunker’s disclosing, in the embodiment of Bunker’s Figure 5, a gas turbine
`
`engine component comprising a wall defining a cooling hole, with the
`cooling hole having a metering section and a diffusing section. See infra.
`
`17
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`There is further no ambiguity that the diffusing section shown in Bunker’s
`
`Figure 5 comprisesfirst and second lobes, upstream and downstream endsat
`the outlet, and first and second sidewalls, having all of the properties
`specified in claim 1. See infra. The generalized nature of Patent Owner’s
`argumentsfails to specify any particular limitation(s) in claim 1 regarding
`which the Bunker disclosure might be ambiguous. Further, as encouraged
`
`by counsel for both parties (see Tr. 13:1-15:27, 26:16—24), we have
`reviewedthe entirety of Dr. Eaton’s testimony (Exs. 1003, 2001, and 2003).
`
`Weagree with Petitioner that Dr. Eaton’s testimony fails to reflect any
`ambiguities in the cooling hole embodiment of Bunker’s Figure 5 that relate
`
`to subject matter recited in claim 1.
`Concerning the prosecution history of Bunker, the evidence
`establishes the Examiner’s enablementrejection was withdrawn without any
`
`amendments being required of Figure 5 or its accompanying written
`description. See Ex. 2004.075—.076 (enablementrejection), .091 & .098
`(describing responsive amendments to Figures 1—2), .113—.114 (replacement
`Figures 1-2), .163 (enablementrejection no longer maintained), .326 (notice
`of allowance). The evidence further establishes that the enablement
`rejection focused on the plateau andvalley structure between Bunker’s lobes
`(i.e., in Figure 5, plateau 92 and valley 90 between troughs 86 and 88). See
`id. at .075-.076. The issue of whether Bunker’s disclosure adequately
`
`enabled the plateau and valley structure is not relevant to the subject matter
`recited in claim 1 of the ’568 patent, which fails to specify any particular
`
`18
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`structure(s) between the two lobes.’ Ex. 1001, 13:43-14:8. Further, there is
`
`no ambiguity in Bunker’s Figure 5 with respect to the location and
`
`orientation of troughs 86 and 88. Ex. 1005, Fig. 5, 452.
`
`The binding legal authorities cited by Patent Owner each considered
`
`situations wherethe prior art reference was ambiguousas to whetherit
`
`disclosed a claim limitation at issue. See In re Brink, 419 F.2d 914, 915,
`
`917-918 (CCPA 1970)(claim required “bulk density of between about 5 and
`about 20 poundspercubicfoot,” prior art ambiguous as to bulk density);
`In re Hughes, 345 F.2d 184, 186-188 (CCPA 1965) (claim required
`“interleaved-spiral magneticstrips,” prior art ambiguousasto interleaved-
`spiral strips or concentric closed loopstrips); Jn re Turlay, 304 F.2d 893,
`894, 898-899 (CCPA 1962) (claim required “a single exhaust port,”prior art
`ambiguousas to one or two exhaustport valves). These cases therefore do
`not apply to our presentsituation, in whichthere is no ambiguity in Bunker’s
`disclosure of each and every limitation of claim 1, as we discuss next.
`
`“1. A gas turbine engine component comprising: a wall havingfirst
`a.
`and second opposing surfaces and defining a cooling hole, the cooling hole
`extending through the wallfrom aninlet located atthefirst wall surface to
`an outlet located at the second wall surface”
`
`Petitioner contends Bunkerdiscloses a gas turbine engine component
`
`wall defining a cooling hole extending from aninlet at a first wall surface to
`an outlet at a second wall surface. Pet. 18-19. Specifically, Petitioner
`
`1 Dependent claims 8-11 of the ’568 patent specify particular structure(s)
`between the two lobes. Ex. 1001, 14:37—52; see Pet. Reply 7. Petitioner
`does not challenge claim 8 as anticipated by Bunker, and Patent Owner does
`not address how any alleged ambiguity with respect to Bunker’s valley and
`plateau might relate to the limitations in claims 9-11.
`
`19
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`provides the following annotations (in red) to Bunker’s Figure 2 to identify
`
`where Bunkerdiscloses these requirements of claim 1:
`
`ey 58
`
`Outet
`
`3
`
`Outer Wall
`(ée., second wall surface)
`
`-
`
`Inlet
`
`Fig. 2
`
`InnerWall
`(ée., first wall surface)
`
`Pet. 19. These annotations reflect how Petitioner contends Bunkerdiscloses
`
`a “Wall” defining a cooling hole (red dashed outline) extending from
`
`inlet 30 at first wall surface 24 to an “Outlet” at second wall surface 26.
`
`ld.
`
`at 15-16, 18-19 (citing Ex. 1005 J§ 4—5, 10, 39-42); Ex. 1003 {fj 42-43.
`
`Wedetermine this contention, which Patent Ownerdoes not dispute,is
`
`supported by a preponderance of the evidence.
`
`b.
`
`cooling hole having “a metering section extending downstream
`from the inlet”
`
`Petitioner contends Bunker’s cooling hole includes a metering section
`
`extending downstream from the inlet. Pet. 16, 19-20. Referring to Bunker’s
`Figure 2, Petitioner contends the metering section correspondsto inlet
`bore 34, extending from inlet 30 to point “Y.” Jd. (citing Ex. 1005 { 43);
`Ex. 1003 § 44. We determine this contention, which Patent Owner does not
`dispute, is supported by a preponderanceofthe evidence.
`
`20
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`C.
`
`cooling hole having “a diffusing section extendingfrom the metering
`section to the outlet”
`
`Petitioner contends Bunker’s cooling hole includes a diffusing section
`
`extending from the metering section to the outlet. Pet. 16, 20-22. Referring
`to Bunker’s Figure 2, Petitioner contends Bunker’s diffusing section
`corresponds to chevron outlet 32 extending from point “Y”to outer wall
`surface 26. Id. (citing Ex. 1005 J§ 44-45, 49-50); Ex. 1003 {J 39, 45. We
`
`determine this contention, which Patent Owner doesnotdispute,is
`
`supported by a preponderanceof the evidence.
`
`cooling hole diffusing section havingfirst and second “lobe[s]
`d.
`diverging longitudinally andlaterallyfrom the metering section and having
`a trailing edge”
`
`Petitioner contends Bunkerdiscloses a cooling hole diffusing section
`having two lobes. Pet. 16-17, 22-24. Petitioner particularly cites the two
`wing troughs 42 and 44 ofdiffusing section 32 / 40 shown in Figures 2
`and 3, and the two wing troughs 86 and 88of the diffusing section shown in
`Figure 5. Jd. (citing Ex. 1005 J 10, 45-47, 53); Ex. 1003 {J 40, 46-48.
`Patent Owner does not dispute that both of these respective pairs of wing
`
`troughsare “lobes”as recited in claim 1.
`Patent Owner does object, however,that Petitioner’s anticipation
`position combines features of two different embodiments within Bunker —
`namely, Figures 1-3 versus Figure 5 — andthereforefails to establish that
`Bunkerdiscloses all claim elements “arranged as in the claim.” PO Resp. 2—
`
`3, 15, 31-42. Patent Ownerasserts Petitioner “primarily relies” on Bunker’s
`Figure 5 embodiment, but the Figure 5 embodimentdoesnot disclose every
`limitation of claim 1. Jd. at 1,31. Patent Owner acknowledgesthe
`
`21
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`disclosure in Bunker paragraph 32 that “the described inventive features
`
`may be combined in any suitable mannerin the various embodiments”
`(emphasis added), but contends a person ofordinary skill in the art would
`
`not have consideredthe particular combination of Bunker’s inventive
`
`features proposed byPetitioner to be suitable. Jd. at 3, 32-40; Ex. 2002
`
`qq 25-30.
`
`Patent Owneralso addresses the decision in Blue Calypso, LLC v.
`
`Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016), which the Board cited when
`
`instituting trial. PO Resp. 32-34; see Inst. Dec. 14-15. According to Patent
`
`Owner, the Blue Calypso decision d
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