UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STELLAR ENERGY AMERICAS, INC.,
`Petitioner,
`
`v .
`
`TAS ENERGY INC.,
`Patent Owner.
`
`Cases No. IPR2015-00882 and IPR2015-008861
`Patent Number RE44,815
`
`PETITIONER’S REPLY
`
`1 The undersigned hereby attests that the word-for-word identical paper is being
`
`served in each proceeding identified in the caption.
`
`

`
`IPR2015-00882 and IPR2015-00886
`U.S. Patent No. RE44,815
`
`Table of Contents
`
`INTRODUCTION ............................................................................................................................... 1
`
`1. “District Cooling” References Are Relevant to Obviousness.................................... 5
`
`2. Bodily Incorporation Is Not the Correct Obviousness Analysis............................... 7
`
`3. “Negative Consequences” All Stem from Bodily Incorporation............................10
`
`4. Subjective Desirability Is Not the Test for Obviousness...........................................13
`
`5. Known Motivations to Combine Series Chilling with Andrepont.........................15
`
`6. Efficiency Was Another Known Motivation for Series Chilling. ..........................18
`
`7. Combining a Duplex Chiller with Andrepont Was Obvious. ..................................21
`
`8. Patent Owner’s “Objective Evidence” Is Insufficient.................................................22
`
`CONCLUSION...................................................................................................................................25
`
`i
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`

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`IPR2015-00882 and IPR2015-00886
`U.S. Patent No. RE44,815
`
`Table of Authorities
`
`Cases
`ABT Sys., LLC v. Emerson Elec. Co.,
`797 F.3d 1350 (Fed. Cir. 2015) ................................................................. 9, 20, 24
`Arctic Cat, Inc. v. Polaris Indus., Inc.,
`IPR2014-01427, Paper 58 (Feb. 4, 2016).............................................. 4, 8, 12, 13
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ............................................................................20
`Berk-Tek LLC v. Belden Techs. Inc.,
`No. IPR2013-00059, Paper 27 (P.T.A.B. Apr. 28, 2014) ....................................14
`BMC Med. Co. Ltd. v. ResMed Ltd.,
`No. IPR2014-01196 (P.T.A.B. Jan. 19, 2016)........................................................1
`DyStar Textilfarben GmbH v. C.H. Patrick Co.,
`464 F.3d 1356 (Fed. Cir. 2006) ............................................................................18
`Hynix Semiconductor Inc. v. Rambus Inc.,
`645 F.3d 1336 (Fed. Cir. 2011) ............................................................................10
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) ..............................................................................5
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) ............................................................................25
`In re Keller,
`642 F.2d 413 (C.C.P.A. 1981)................................................................................8
`In re Sneed,
`710 F.3d 1544 (Fed. Cir. 1983) ..............................................................................7
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)..........................................................................................3, 14
`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) ............................................................................14
`Smith & Nephew, Inc. v. Bonutti Skeletal Innovations LLC,
`No. IPR2013-00629, Paper 31 (P.T.A.B. Feb. 18, 2015).................................8, 10
`Tokai Corp. v. Easton Enters., Inc.,
`632 F.3d 1358 (Fed. Cir. 2011) ............................................................................24
`Winner Int’l Royalty Corp. v. Wang,
`202 F.3d 1340 (Fed. Cir. 2000) ............................................................................14
`
`ii
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`

`
`IPR2015-00882 and IPR2015-00886
`U.S. Patent No. RE44,815
`
`Listing of Petitioner’s Exhibits2
`Exhibit Name
`
`Exhibit Number
`’882 Petition
`’886 Petition
`1001
`1101
`
`U.S. Reissued Patent Number RE44,815 to
`Pierson (“the ’815 Patent”)
`Prosecution History of the ’815 Patent (“the
`Prosecution History of the ’815 Patent”)
`U.S. Reissued Patent No. RE44,079 to Pierson
`(“the ’079 Patent”)
`U.S. Patent No. 7,343,746 to Pierson (“the ’746
`Patent”)
`Excerpts from the Prosecution History of the
`’746 Patent (“the Prosecution History of the
`’746 Patent”)
`U.S. Patent No. 6,769,258 to Pierson (“the ’258
`Patent”)
`U.S. Patent No. 6,470,686 to Pierson (“the ’686
`Patent”)
`U.S. Patent No. 6,318,065 to Pierson (“the ’065
`Patent”)
`Institution Decision in IPR2014-00161 for the
`’065 Patent
`Institution Decision in IPR2014-00162 for the
`’686 Patent
`Institution Decision in IPR2014-00163 for the
`’258 Patent
`Declaration of Dr. Douglas Reindl, Ph.D., P.E.
`Curriculum Vitae of Dr. Douglas Reindl,
`Ph.D., P.E.
`“Summer Peaking Capacity Via Chilled Water
`Storage Cooling of Combustion Turbine Inlet
`Air,” Andrepont et al., 1994 (“Andrepont”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`1013
`
`1014
`
`1102
`
`1103
`
`1104
`
`1105
`
`1106
`
`1107
`
`1108
`
`1109
`
`1110
`
`1111
`
`1112
`1113
`
`1114
`
`2 For convenience, Exhibit numbers for the ’882 Petition are referenced in the
`
`Petitioner’s Reply.
`
`iii
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`

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`IPR2015-00882 and IPR2015-00886
`U.S. Patent No. RE44,815
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`“Twenty-Five Ways to Raise your Chilled
`Water Temperature Differential,” Fiorino,
`Donald P., 1996 (“Fiorino”)
`“Innovations in District Heating and Cooling
`1984-1994 and their Economic Impact,”
`Mornhed et al., 1995 (“Mornhed”)
`“Trane Duplex Centrifugal Water Chillers
`CDHF (60 Hz): 1500-2800 Tons, CDHG (50
`Hz): 1200-2500 Tons,” Product data sheet
`CTV-S-49, October 1997 (“Trane Product
`Sheet”)
`“Options in Gas Turbine Power Augmentation
`Using Inlet Air Chilling,” Ondryas et al., 1991
`(“Ondryas”)
`“The Application of Thermal Energy Storage
`for District Cooling and Combustion Turbine
`Inlet Air Cooling,” Clark et al., 1998 (“Clark”)
`“ASHRAE Heating, Ventilating, and Air-
`Conditioning Systems and Equipment
`Handbook,” 1992 (“ASHRAE”)
`“Contribution of Stratified Thermal Storage to
`Cost-Effective Trigeneration Project,”
`Dharmadhikari, 2000 (“Dharmadhikari”)
`Japanese Patent No. H11-173161 to Hiraga
`(with certified English-language translation),
`1999 (“Hiraga”)
`“Trane Operation Maintenance, CDHF-OM-1,”
`March 1997 (“Trane Manual”)
`Motion for Preliminary Injunction submitted by
`TAS in the district court litigation
`Counter-Affidavit of Thomas L. Pierson
`submitted by TAS in the district court litigation
`Complaint in Florida Civil Action
`* Deposition Transcript of TAS Proffered
`Expert, Gregor P. Henze, February 9, 2016
`* September 5, 1997 Letter regarding “Turbine
`Inlet Chilling System Qaseem Power Plant
`Extension” to GE International Power Systems
`from Tom L. Pierson in ’815 Patent file history
`iv
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`1027
`
`1028
`
`1115
`
`1116
`
`1117
`
`1118
`
`1119
`
`1120
`
`1121
`
`1122
`
`1123
`
`1124
`
`1125
`
`1126
`1127
`
`1128
`
`

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`IPR2015-00882 and IPR2015-00886
`U.S. Patent No. RE44,815
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`* “Design Guide for Cool Thermal Storage,”
`1993 by the American Society of Heating,
`Refrigerating and Air-Conditioning Engineers,
`Inc. from the ’815 Patent file history
`(“ASHRAE Design Guide”)
`* “Energy Cogeneration Handbook,” Chapter
`3, Polimeros, 1981 (“Polimeros”)
`* “An Evaluation of Ice and Chilled Water as
`Thermal Storage Media for Combustion
`Turbine Inlet Air Cooling Systems,” Cross,
`1994 (“Cross Thesis”)
`
`1029
`
`1129
`
`1030
`
`1031
`
`1130
`
`1131
`
`*New Exhibit
`
`v
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`

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`IPR2015-00882 and IPR2015-00886
`U.S. Patent No. RE44,815
`
`INTRODUCTION
`
`Petitioner replies to Patent Owner’s (“TAS”) consolidated response in both
`
`IPR2015-00882 and IPR2015-00886 involving, respectively, claims 8-20 and 53-
`
`56, and claims 21-33, 66, and 71-75 of U.S. Patent No. RE 44,815. TAS’s response
`
`defends only claims that include the use of chillers arranged in series, or a duplex
`
`chiller, in a turbine inlet air cooling (“TIC”) system. TAS defends all claims of
`
`IPR2015-00886, but only claims 12 and 13 of IPR2015-00882.3
`
`TAS does not dispute that the only difference between the claimed TIC
`
`system and the chilled water TIC system disclosed in Andrepont, the primary prior
`
`art reference, is the use of series (or “staged”) chilling to cool the water in the
`
`system, which, in turn, cools the turbine inlet air. See Response at 16-17
`
`(identifying the elements of Andrepont, including C-1 chiller, “thermal energy
`
`storage tank, air cooling coils and pumps for distributing the water,” but stating
`
`that Andrepont “does not have series chilling or a duplex chiller....”); Ex. 1027 at
`
`3 By not defending, TAS has waived post-institution arguments for patentability on
`
`these claims – including variable speed pumps, sensors, and sensor systems – per
`
`the scheduling order governing these IPRs. See Scheduling Order (Paper 11) at
`
`2(b); see also BMC Med. Co. Ltd. v. ResMed Ltd., No. IPR2014-01196 at 8
`
`(P.T.A.B. Jan. 19, 2016) (finding waiver under identical scheduling order).
`
`1
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`

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`IPR2015-00882 and IPR2015-00886
`U.S. Patent No. RE44,815
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`23 (confirming the various elements of Andrepont). While not expressly disclosing
`
`the use of series chilling (or a duplex chiller), Andrepont teaches an “inherent
`
`flexibility” in chilling technology that may be used with the disclosed TIC system.
`
`Ex. 1014 at 5; see also 882 Institution Decision (Paper 10) at 15-16; 886 Institution
`
`Decision (Paper 11) at 18. Several other references in the field, notably Mornhed,
`
`disclose the use and benefits of series chilling to chill water in similar applications.
`
`See Ex. 1016 at 4; see also Ex. 1018 at 6; see also Ex. 1030 at 3-4, 6-17.
`
`One of the primary and known benefits of series chilling – achieved with
`
`arranging multiple chillers in series, or using a duplex chiller (which has multiple
`
`refrigerant circuits) – is a high water temperature differential, or high “delta (Δ)
`
`T,” of the water. The “delta T” of a chilled water system is defined by the
`
`difference in water temperature from when the water leaves the chillers to when it
`
`returns. See Ex. 1027 at 25. Water temperature increases as it exchanges heat with
`
`a “load.” In the case of TIC as described in Andrepont and the ’815 Patent, the
`
`“load” is the air cooler, which cools the air as it enters the turbine, and in turn,
`
`heats up the cool water. In order to meet the load requirement, the system must
`
`utilize a chiller package that provides a water temperature decrease corresponding
`
`to the water temperature increase at the air cooler. See Ex. 1014 at 6.
`
`Petitioner has identified myriad reasons –functional and economic – to use
`
`series chilling with the Andrepont system, meeting any standard for establishing
`
`2
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`

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`IPR2015-00882 and IPR2015-00886
`U.S. Patent No. RE44,815
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`obviousness under KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). TAS’s own
`
`expert, Dr. Henze, readily agrees that at the time of the invention, series chilling
`
`was well known in the art to provide a high delta T, resulting in reduced pumping
`
`power, greater pipe capacity, and other benefits. See Ex. 1027 at 35-39, 41, 43-45,
`
`57-60, 65-66, 74-76, 81-83, 85-86, 101-04, 149. Indeed, he opined that, starting
`
`with the Andrepont system, one of ordinary skill would have considered and may
`
`have “recommended” series chillers, including a duplex chiller, in designing a new
`
`TIC system for power generation. See Ex. 1027 at 53-60, 72-73, 104-07, 150-52.
`
`TAS’s response reflects a fundamental misunderstanding of the law of
`
`obviousness and its application to this case. Most notably, TAS limits its
`
`arguments to the bodily incorporation of Andrepont and Mornhed – e.g., the
`
`addition of the specific, 34°F “low temperature chiller” of Mornhed in series with
`
`the specific, large, field-erected chiller serving a 7,500-10,000 ton load disclosed in
`
`Andrepont. See Response at 22. TAS’s entire response and its proffered expert’s
`
`declaration are built on this faulty foundation. TAS’s expert acknowledged that he
`
`never considered replacing Andrepont’s C-1 chiller with conventional chillers in
`
`series or a duplex chiller. Ex. 1027 at 47, 51-54, 60-64, 70-71, 84.
`
`But the law is clear, as repeatedly expressed by the Board in this case, that
`
`obviousness does not involve physically combining the specific structures of prior
`
`art references – i.e., the test is not bodily incorporation. See, e.g., 882 Institution
`
`3
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`

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`IPR2015-00882 and IPR2015-00886
`U.S. Patent No. RE44,815
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`Decision (Paper 10) at 16; 882 Reh’g Denial (Paper 20) at 5. The proper question
`
`is whether the claimed combination would have been obvious in light of the
`
`teachings of the prior art, such as the use of series chilling (as disclosed in
`
`Mornhed) with a TIC system (as disclosed in Andrepont). Indeed, the Petitions
`
`expressly assert that a person of ordinary skill could “combine or replace” the
`
`field-erected chiller in Andrepont with series chillers or a duplex chiller. See, e.g.,
`
`882 Petition (Paper 2) at 39, 41, 42; 886 Petition (Paper 2) at 22, 44, 48. TAS
`
`completely ignores the replacement scenario.
`
`TAS also applies a much stricter standard of obviousness than employed by
`
`the Board and instructed by the Supreme Court, suggesting that obviousness
`
`requires a detailed analysis proving that the asserted combination would have been
`
`the most subjectively “desirable” arrangement. See Response at 35-40. That is not
`
`the law. See Arctic Cat, Inc. v. Polaris Indus., Inc., IPR2014-01427, Paper 58 at
`
`15-16 (Feb. 4, 2016) (“Arctic Cat”).
`
`A combination of known elements that one of ordinary skill in the art could
`
`predictably combine to provide known benefits is obvious, whether or not the
`
`preferred choice in every circumstance. Id. Here, the experts candidly agree that a
`
`person of ordinary skill designing a TIC system for a power plant at the time of the
`
`invention would have considered using series chilling (or a duplex chiller), which
`
`provided known, predictable benefits. See Ex. 1027 at 43-45, 53-60, 66, 104-107;
`
`4
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`

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`IPR2015-00882 and IPR2015-00886
`U.S. Patent No. RE44,815
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`and see Ex. 2002 at 89, 97-100, 108, 112, 117-18, 133-34. These facts satisfy
`
`obviousness under KSR and the Board’s precedents.
`
`Finally, TAS’s limited “objective evidence” cannot rebut the plain showing
`
`of obviousness here. The asserted evidence, a trade association database of TIC
`
`installations, shows that TIC was being used with water-based thermal energy
`
`storage (“TES”) for power generation in this country more than 10 years before the
`
`claimed invention. See Ex. 2004 at 11, 22; Ex. 1027 at 122, 128-29. And the
`
`database is admittedly “silent” on the only claimed innovative feature (series
`
`chilling), so cannot rebut obviousness. Ex. 2004; Ex. 1027 at 122.
`
`These introductory points and others are discussed in more detail below.
`
`1.
`
`“District Cooling” References Are Relevant to Obviousness.
`
`As a preliminary matter, to the extent that TAS continues to suggest that
`
`Mornhed is not relevant because it involves “district cooling,” that argument must
`
`again be rejected. Mornhed is in the same field of endeavor as the invention and is
`
`pertinent to the invention. See 886 Institution Decision (Paper 11) at 12; In re
`
`Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (analogous art standard).
`
`The patent, at bottom, involves the chilling of water, which, in turn, chills
`
`5
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`

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`IPR2015-00882 and IPR2015-00886
`U.S. Patent No. RE44,815
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`turbine inlet air.4 The purported novelty involves the chiller package for chilling
`
`the water. Mornhed expressly discusses the overlapping use of technology for
`
`chilling water in both district cooling and TIC power generation. Ex. 1016 at 1.
`
`Both types of facilities benefit from chilling water more efficiently. In fact, TAS
`
`submitted Mornhed during prosecution of the ’815 patent, presumably because it
`
`believed Mornhed to be relevant prior art. Ex. 1001 at 2.5
`
`Further, TAS’s expert – who has experience in district cooling, but not
`
`chilled water used exclusively for TIC (see Ex. 1027 at 11-15 and Ex. 2012 at 43-
`
`60 (Henze C.V.) – confirmed that a person of ordinary skill would consider district
`
`cooling references in designing a TIC system for a power plant. See Ex. 1027 at
`
`28-31. The TICA database, which TAS claims is relied upon by those in the field,
`
`also includes both district cooling and TIC installations for power generation.
`
`4 The claims are not expressly limited to power plants having a chilling facility
`
`used for the sole purpose of cooling inlet air to a large gas turbine. See Ex. 1001.
`
`5 Similarly, the Andrepont system is admittedly designed for power generation, yet
`
`specifically discusses the use of TIC other applications, including cogeneration.
`
`Ex. 1014 at 5 (“The technology is of course readily applied to cogeneration or
`
`independent power producer (IPP) CTs [combustion turbines], as well as to electric
`
`power utility CTs.”).
`
`6
`
`

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`IPR2015-00882 and IPR2015-00886
`U.S. Patent No. RE44,815
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`Response at 46-47; Ex. 2004.
`
`In fact, the inventor himself, two years before the earliest priority date, in
`
`offering to sell a TIC system for power generation using multiple pairs of Trane
`
`chillers arranged in series, made clear that chilling technology for “large
`
`commercial and industrial HVAC applications” is “equally applicable for chilling
`
`turbine inlet air.” Ex. 1028 at 2 (emphasis added)6; see also Ex. 1027 at 79-82.
`
`2.
`
`Bodily Incorporation Is Not the Correct Obviousness Analysis.
`
`TAS’s obviousness analysis is fundamentally flawed in that it considers only
`
`a combination of the specific structures and data parameters expressly set forth in
`
`the prior art references, e.g., addition of the 34°F “low temperature chiller” of
`
`Mornhed to the large, field-erected C-1 chiller serving a 7,500-10,000 ton load
`
`disclosed in Andrepont. See Response at 22. TAS’s misguided approach runs
`
`headlong into the “bodily incorporation” doctrine, as repeatedly explained by the
`
`Board, and infects the entire obviousness analysis. See, e.g., 882 Institution
`
`Decision (Paper 10) at 16 (citing In re Sneed, 710 F.3d 1544, 1550 (Fed. Cir.
`
`1983)); 882 Reh’g Denial (Paper 20) at 5.
`
`As the Board has repeatedly instructed in this case and many others, “it is
`
`6 This reference, a September 1997 offer letter from named inventor Tom Pierson
`
`to General Electric is listed on the face of the ’815 Patent. Ex. 1001 at 2.
`
`7
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`

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`IPR2015-00882 and IPR2015-00886
`U.S. Patent No. RE44,815
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`not necessary that the inventions of the references be physically combinable to
`
`render obvious the invention under review.” See id; Arctic Cat at 21 (“[T]he test
`
`for obviousness does not require bodily incorporation.”); Smith & Nephew, Inc. v.
`
`Bonutti Skeletal Innovations LLC, No. IPR2013-00629, Paper 31 at 22 (P.T.A.B.
`
`Feb. 18, 2015) (“A combination is not a physical grafting of one structure onto
`
`another.”); see also In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981)). Indeed, the
`
`challenged claims do not state exact specifications for the equipment or operating
`
`parameters for the recited systems (see, e.g., Ex. 1027 at 49); rather, the patent
`
`“broadly” claims the basic elements of a TIC system (Ex. 1001 at 1:27-28). The
`
`prior art must be read with that breadth in mind, else there be a kind of reverse,
`
`preferred embodiment restraint on the prior art.
`
`Here, Andrepont teaches an “inherent flexibility” in the chilling technology
`
`that could be used with its TIC system. See Ex. 1014 at 5; 882 Institution Decision
`
`(Paper 10) at 16-17.7 Andrepont further explains that the system can be used with a
`
`7 TAS contends that Andrepont’s teaching of flexibility does not refer to “the
`
`arrangement of chillers,” but is limited to potential types of chillers. Response at
`
`44-45; Ex. 1027 at 24. But the disclosure is all-inclusive (“any water chilling
`
`technology”) and merely references absorption chillers as a kind of chilling
`
`technology (“including absorption chilling”) (emphasis added). Ex. 1014 at 5; see
`
`8
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`

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`IPR2015-00882 and IPR2015-00886
`U.S. Patent No. RE44,815
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`“new” facility or a “retrofit” of an existing installation. Ex. 1014 at 5. Mornhed
`
`teaches the use of chillers arranged in series to generate a high delta T, resulting in
`
`multiple benefits, as TAS’s expert agreed. See Ex. 1027 at 36-39, 44-45, 61-62, 74-
`
`76, 85-86, 101-04.
`
`Taken together, as explained in the Petitions, “it would have been obvious to
`
`one of ordinary skill in the art to combine or replace the chiller package C-1 of
`
`Andrepont with the series arrangement of the chillers of Mornhed, in order to
`
`achieve the capacity, reduced pumping power, and/or economic benefits explained
`
`by Mornhed.” 882 Petition (Paper 2) at 39 (emphasis added). See ABT Sys., LLC v.
`
`Emerson Elec. Co., 797 F.3d 1350, 1360-62 (Fed. Cir. 2015). Yet TAS and its
`
`expert, as repeatedly confirmed in deposition, do not even address the possible
`
`replacement of the specific chiller disclosed in Andrepont with a series chiller
`
`arrangement as disclosed in Mornhed. See Response at 22; Ex. 1027 at 46-49, 51-
`
`53, 60-63, 84, 133, 141. TAS’s expert acknowledged that he was not familiar with
`
`the bodily incorporation doctrine and did not even consider it. Ex. 1027 at 60. (He
`
`also Ex. 2007 at 101-102 (“inherent flexibility” teaching of Andrepont would be
`
`understood to include series chillers). TAS’s expert further admitted that
`
`Andrepont “does not rule out” the use of series chillers or, for that matter, duplex
`
`chillers. Ex. 1027 at 27.
`
`9
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`

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`IPR2015-00882 and IPR2015-00886
`U.S. Patent No. RE44,815
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`also based his written opinion on the misunderstanding that the standard of review
`
`in this case was “clear and convincing” evidence of obviousness. See Ex. 2012 at
`
`7.)
`
`3.
`
`“Negative Consequences” All Stem from Bodily Incorporation.
`
`All of the purported “negative consequences” of combining Andrepont and
`
`Mornhed argued in TAS’s response derive from the bodily incorporation of the
`
`specific structures and exact parameters identified in the references. See, e.g.,
`
`Response at 21-26. Specifically, TAS asserts that the proposed combination of the
`
`particulars of Andrepont and Mornhed would “result[] in a system that (1) does not
`
`have a practical thermal energy storage tank, (2) uses far more energy for chilling;
`
`(3) uses far more energy for pumping and (4) has millions of dollars in additional
`
`capital costs.” Id. at 26. TAS is wrong.8
`
`8 TAS’s argument that the proposed system would result in “messy, expensive
`
`complexity” is also based entirely on bodily incorporation. See Response at 2, 14,
`
`36 (quoting Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1353 (Fed.
`
`Cir. 2011)). An engineer would have a reasonable expectation of success in
`
`adapting a series (or duplex) chiller arrangement with the TIC system of
`
`Andrepont in this predictable art. See Ex. 1027 at 104-107. See also Smith &
`
`Nephew, No. IPR2013-00629, Paper 31 at 24 (combination is obvious despite
`
`10
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`

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`For example, on thermal storage, TAS considers only a scenario where the
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`water in the Andrepont system is chilled down to 34°F as achieved by the system
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`disclosed in Mornhed. See Response at 23. But the proposed combination of
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`Andrepont and Mornhed does not have to chill water to 34°F. Rather, Mornhed
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`teaches the use of series chilling to provide an increased delta T, which, if
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`designing a new system based on Andrepont, could provide multiple system
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`benefits from chilling water down to 39°F, for example. Ex. 1027 at 35-39, 40-41,
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`54-60, 62, 73-76, 84-86, 100-07.
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`Similarly, TAS’s assertion that series chilling would increase energy usage
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`beyond reason is incorrect. As admitted by TAS and confirmed by both experts in
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`the case, it was well known to one of ordinary skill in the art that chillers arranged
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`in series (or a duplex chiller) chill water more efficiently than a single, large, field-
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`erected chiller for a given temperature differential or load. See Response at 40-41;
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`Ex. 1027 at 41, 44-45, 58-59, 65-67, 81-83; Ex. 2002 at 79, 100-01, 107, 112, 117-
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`18, 160; Ex. 1028 at 11.
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`As for the purported consequence of additional pumping power, TAS cites a
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`comparison of parallel versus series chillers, which is irrelevant to the proposed
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`“adjustments or modifications” that are “nothing more than a straightforward,
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`predictable exercise” in adapting elements).
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`combination. See Response at 25, 41. Andrepont illustrates the use of a single,
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`large chiller. When series chillers are compared to a standard single chiller, TAS’s
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`expert openly admits that series chilling reduces required pumping power, an
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`undisputed and known benefit of series chilling. Ex. 1027 at 74-76, 101-02, 105-
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`07; see also Ex. 1018 at 6 (“The larger differential temperature will reduce the
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`overall chilled water flow rate, reducing pumping costs as well as piping
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`requirements.”).
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`Finally, TAS’s argument regarding the increased capital cost of adding a
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`“low-temperature chiller” to the large, field-erected Andrepont chiller is
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`misguided. As TAS’s expert explained, the costs and benefits of any chiller
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`package must be weighed against each other depending on the individual owner’s
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`system requirements, including an analysis of initial capital costs versus operating
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`costs of a system. Ex. 1027 at 58-59, 101-07.
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`What TAS appears to suggest in its advocacy is that the Andrepont system,
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`with its illustrative large, field-erected chiller, could not be improved by series
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`chilling. See Response at 20 (arguing that the benefits identified in Mornhed from
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`additional chilling do not apply to Andrepont because Andrepont “did not even
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`have this problem”). This argument is wrong as a matter of fact and “exalts the
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`literal disclosures” of Andrepont over the logical substance of the abilities of one
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`of ordinary skill.” See Arctic Cat at 19.
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`Again, perhaps most telling, when unconstrained by the specific structures
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`and parameters of Andrepont and Mornhed, TAS’s own expert testified that, a
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`person of ordinary skill in the art designing a TIC system at the time of the
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`invention would have considered using a series chiller package and may have
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`recommended that design given the known benefits.9 Ex. 1027 at 57-58, 104-07.
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`4.
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`Subjective Desirability Is Not the Test for Obviousness.
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`TAS also appears to misunderstand the obviousness test as requiring that an
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`asserted combination be subjectively “desirable” in order to establish obviousness.
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`See Response at 1, 2. Whether a facility owner would ultimately choose to
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`implement series chilling (after evaluating the costs and benefits of such
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`arrangement, for instance) is not the question. See Arctic Cat at 16 (“KSR deals
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`almost exclusively with the objective knowledge of one of ordinary skill in the art.
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`. . . By contrast, KSR is silent regarding the relevance of subjective preference with
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`respect to obviousness, which, again, we discern is logical.”). Individual
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`9 To be sure, even with the combination of specific structures of Andrepont and
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`Mornhed, one of ordinary skill in the art would have considered the simultaneous,
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`predictable advantages and disadvantages of combining the references. See, e.g.,
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`882 Petition (Paper 2) at 39, 41, 42; 886 Petition (Paper 2) at 22, 44, 48.
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`preferences for particular features cannot “override known modifications having
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`known benefits.” Id. at 15. Otherwise, they “would effectively eviscerate
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`obviousness law, as any known modification has both benefits and disadvantages,
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`and someone, somewhere, would say that under their subjective preferences, the
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`disadvantages outweigh the benefits.” Id.
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`Rather, “an obviousness analysis should focus on whether a modification is
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`known to implement and has known benefits.” Id. (citing KSR, 550 U.S. at 421;
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`Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)
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`(“[T]he benefits, both lost and gained, should be weighed against one another.”)).
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`Indeed, a combination may have both benefits and disadvantages, but still be
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`obvious. See Berk-Tek LLC v. Belden Techs. Inc., No. IPR2013-00059, Paper 27 at
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`(P.T.A.B. Apr. 28, 2014) (“[T]hat there are tradeoffs. . . does not necessarily
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`prevent the proposed combination.”) (citing Medichem, S.A. v. Rolabo, S.L., 437
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`F.3d 1157, 1165 (Fed. Cir. 2006)).
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`Here, TAS’s expert agrees that, at the time of the invention, series chilling
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`was known to provide multiple system benefits, and that a TIC/TES system with
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`series chillers would have a reasonable expectation of success. See Ex. 1027 at 57-
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`58, 104-107. Dr. Henze further testified that he would “weigh” the various options
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`and “trade-offs,” and that TIC/TES with a series chillers configuration could be
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`“competitive or the recommended” design. Id. at 104. In fact, he testified that, “if
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`the conditions – the economic conditions are right, then a series chilling system
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`may prevail as the best one.” Id. at 107 (emphasis added).10
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`5.
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`Known Motivations to Combine Series Chilling with Andrepont.
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`Petitioner has offered multiple motivations for substituting or modifying the
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`chiller package disclosed in Andrepont with series chillers – including “to achieve
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`the capacity, reduced pumping power, and/or economic benefits explained by
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`Mornhed.” 882 Petition (Paper 2) at 39; 886 Petition (Paper 2) at 22.
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`TAS’s expert agrees that series chilling provides all of these benefits. Ex.
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`1027 at 34-39, 73-76. TAS also essentially concedes that those benefits would
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`apply to the TIC system of Andrepont, but argues that these benefits are smaller
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`than achieved in a district cooling system. See Response at 30. However, as the
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`Board has already repeatedly explained, “even though the benefits expressed in the
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`Mornhed reference for adding a second chiller in series in a cooling system may
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`have less significance depending on the application of the cooling system, the
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`10 TAS repeatedly cites Dr. Reindl’s testimony for the unremarkable proposition,
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`with which TAS’s expert agrees, that “owner requirements” and other factors –
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`e.g., costs, reliability needs, regulatory demands – will ultimately determine which
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`system is most desirable. See Response at 1, 2; Ex. 2002 at 33-34, 156-57, 160-61;
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`Ex. 1027 at 100-102.
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`articulated reasons for combining the teachings of Mornhed with the teachings of
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`Andrepont have a rational underpinning.” 886 Reh’g Denial (Paper 19) at 6.
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`For example, as to reduced pumping power, TAS explains that “Mornhed’s
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`motivation to save pumping power is at best a small consideration for a person of
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`skill in the art considering whether Mornhed’s techniques make sense for
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`Andrepont.” Response at 30. In fact, both experts agree that the lower chilled water
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`temperature achieved by series chilling would result in “[l]ower pumping
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`requirements.” Ex. 1027 at 76; Ex. 2002 at 100-101. Although the benefits may
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`differ in degree for different types of systems, as the experts make clear, pumping
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`power remains a consideration for a turbine inlet cooling system such as
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`Andrepont’s, and that series chilling improves pumping power. Id.11
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`11 TAS states that Trane 1977 “described the power required to pump in series as
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`3.5 times higher than the pumping power required by an alternative system using
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`parallel chillers.” Response at 25. However, TAS’s expert admits that the pumping
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`power advantages of parallel chillers versus series chillers described by Trane 1977
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`is only true at “part load” conditions. See Ex. 1027 at 65-69. He could not
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`determine if these “part load” conditions even exist in the system disclosed by
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`Andrepont. Id. at 69. Further, Trane 1977 states that series chillers require less
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`compressor power than parallel chillers. Ex. 2010 at 1.
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`Similarly, regarding capacity, the experts agree that the lower chilled water
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`temperature achieved by series chilling would result in increased capacity of the
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`piping and thermal storage tank. See Ex. 1027 at 74-76; Ex. 2002 at 86-88; see also
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`Response at 6 (identifying “larger, more expensive water tanks” as a problem with
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`the prior art). Nevertheless, TAS attempts to discount this motivation by making
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`baseless assumptions regarding the system of Andrepont. TAS assumes, for
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`example, that “Andrepont does not have an existing [underground] piping system,”
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`and that “Andrepont is working in the TIC field, where excavati