UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GENERAL ELECTRIC COMPANY
`Petitioner
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`v.
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`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner
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`Case IPR2016-01289
`Patent 7,060,360
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`UNITED TECHNOLOGIES CORPORATION’S
`PATENT OWNER RESPONSE
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`

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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`TABLE OF CONTENTS
`
`Page
`Introduction .......................................................................................................... 1
`I.
`II. Overview of the Patent ........................................................................................ 3
`III. Overview of the Prior Art .................................................................................... 6
`A. Field of the Prior Art ..................................................................................... 6
`B. Designing Coating Systems for Aviation or Space Applications ................. 9
`IV. Defects in the Proposed Grounds of Unpatentability ........................................ 12
`A. It Would Not Have Been Obvious to Combine the Layers in Petitioner’s
`Proposed Combinations .............................................................................. 13
`1. Petitioner’s Proposed Combination Would Hinder or Eliminate the
`Healing Functionality of Terentieva’s Protective Layer ........................... 15
` Function of Healing Layers ............................................................ 16
` Preserving the Healing Function of the Protective Coating is
`Essential to Terentieva’s Teaching ..................................................... 18
` Whether Terentieva’s Healing Layer Will Work Properly Depends
`on the Environmental Temperature to which the Layer is Exposed ... 19
` Thermal Barrier Layers Reduce the Temperature to Which
`Underlying Layers Are Exposed ......................................................... 21
` Petitioner’s Proposed Combination of a Thermal Barrier Layer
`with Terentieva Would Render Terentieva’s Healing Layer
`Inoperative ........................................................................................... 22
`2. Redundant Functionality of Layers and Unaddressed Drawbacks
`Resulting from Proposed Combinations Negate Petitioner’s Proposed
`Motivation for the Combinations ............................................................... 27
` A POSITA Would Not Have Added the Environmental Barrier
`Layer from Eaton ’456 or the ’360 Patent’s Background to Terentieva
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`Because It Would Render Terentieva’s Protective Coating Redundant.
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`28
` Adding the Environmental Barrier Layer Would also Have Made
`the Resulting Coating Thicker, Contributing to its Stress and Making
`Failure More Likely............................................................................. 29
` Adding the Environmental Barrier Layer Negates a Key Design
`Motivation of Terentieva’s Protective Coating ................................... 30
`3. Insufficient Evidence Regarding Likelihood of Success of
`Combination Belies Existence of Prima Facie Proof of Obviousness ..... 31
` Petitioner Fails to Address Factors its Own Expert Identifies as
`Key to Perceiving a Reasonable Likelihood of Success ..................... 32
` The Evidence that Petitioner Does Put Forth Bears Little Relation
`to the Claimed Invention ..................................................................... 34
`(i) The Evidence Proffered in the Petition to Demonstrate the
`Compatibility of the Thermal Expansion Coefficients of the
`Layers in the Proposed Combination Is Irrelevant ..................... 34
`(ii) The Evidence Proffered in the Petition to Demonstrate the
`Chemical Compatibility of the Layers in the Proposed
`Combination is Irrelevant ........................................................... 37
` Petitioner Ignores the Conditions Under Which the Invention Must
`Operate and the Unpredictability of the Art ........................................ 38
`B. Terentieva’s Protective Coating is Not a Bond Layer ................................ 40
`1. A “bond layer” Must Bond .................................................................. 40
`2. Terentieva Does Not Have a Bond Layer ........................................... 45
`C. The “Allegedly Admitted Prior Art” Utilized in Ground 2 is Not a Proper
`Basis for an IPR Ground of Unpatentability ............................................... 47
`D. Petitioner Has Failed to Make a Case re Claim 6, 8, and 10 ...................... 52
`V. Conclusion ......................................................................................................... 53
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`TABLE OF AUTHORITIES
`
`
`Cases
`
`Coalition For Affordable Drugs XI LLC v. Insys Pharma, Inc.
`(IPR2015-01797) ................................................................................................ 53
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F. 3d 1314 (Fed. Cir. 2009) ......................................................................... 26
`Gemstar-TV Guide Int’l, Inc. v. ITC,
`383 F.3d 1352 (Fed. Cir. 2004) .......................................................................... 44
`Kaneka Corp. v. Xiamen Kingdomway Group Co.,
`790 F. 3d 1298 (Fed. Cir. 2015) ......................................................................... 44
`Kingbright Electronics Co. Ltd., et al. v. Cree, Inc.,
`IPR2015-00741, Paper No. 8 (PTAB August 20, 2015) .............................. 48, 49
`Kingbright Electronics Co. Ltd., et al. v. Cree, Inc.,
`IPR2015-00743, Paper No. 8 (PTAB September 9, 2015) ................................. 48
`Kingbright Electronics Co. Ltd., et al. v. Cree, Inc.,
`IPR2015-00744, Paper No. 8 (PTAB September 9, 2015) ................................. 48
`Kingbright Electronics Co. Ltd., et al. v. Cree, Inc.,
`IPR2015-00746, Paper No. 8 (PTAB August 20, 2015) .................................... 48
`LG Electronics, Inc. v. Core Wireless Licensing S.A.R.L.,
`IPR2015-01987, Paper No. 7 (PTAB March 24, 2016) ..................................... 48
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F. 3d 1292 .................................................................................................... 43
`PharmaStem Therapeutics, Inc. v. ViaCell, Inc.,
`491 F. 3d 1342 (Fed. Cir. 2007) ......................................................................... 31
`Teleflex, Inc. v. Ficosa N. Am. Corp.,
`299 F.3d 1313 (Fed. Cir. 2002) .......................................................................... 45
`Texas Digital Sys., Inc. v. Telegenix, Inc.,
`308 F.3d 1193 (Fed. Cir. 2002) .......................................................................... 44
`
`iii
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`
`In re Wilson,
`424 F.2d 1382, 165 USPQ 494 (CCPA 1970) .................................................... 43
`Statutes, Rules and Regulations
`35 U.S.C. § 311(b) ............................................................................................passim
`37 CFR § 42.6(e)(4) ................................................................................................. 56
`37 CFR § 42.24(b)(1) ............................................................................................... 55
`37 CFR § 42.24(d) ................................................................................................... 55
`37 C.F.R. § 42.104(b)(4) .................................................................................... 47, 49
`M.P.E.P. § 2143.02 .................................................................................................. 40
`
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`iv
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`
`EXHIBIT LIST
`
`Declaration of Dr. David R. Clarke
`
`M.G. Hocking et al., METALLIC & CERAMIC COATINGS:
`PRODUCTION, HIGH TEMPERATURE PROPERTIES & APPLICATIONS
`(1989)
`
`Alwyn Scott, Japanese airline ANA to replace 100 Rolls
`engines on 787s, Reuters (Aug. 31, 2016), available at
`http://www.reuters.com/article/us-ana-rolls-royce-hldg-engines-
`idUSKCN1162OD
`
`Excerpt of MERRIAM WEBSTER’S COLLEGIATE DICTIONARY
`(10th ed. 2002)
`
`Curriculum Vitae of Dr. David R. Clarke
`
`J.W. Hutchinson and A.G. Evans, On the delamination of
`thermal barrier coatings in a thermal gradient, 149 Surface and
`Coatings Technology. 179-184 (2002).
`
`D.R. Clarke and C.G. Levi, Materials Design for the Next
`Generation Thermal Barrier Coatings, 33 Annual Review of
`Materials Research. 383-417 (2003).
`
`D. Zhu and R.A. Miller, Sintering and creep behavior of
`plasma-sprayed zirconia- and hafnia-based thermal barrier
`coatings, 108-109 Surface and Coatings Technology. 114-120
`(1998).
`
`J.W. Hutchinson and Z. Suo, Mixed Mode Cracking in Layered
`Materials, 29 Advances in Applied Mechanics. 63-191 (1991).
`
`A. Bagchi and A.G. Evans, The Mechanics and Physics of Thin
`Film Decohesion and its Measurement, 3 Interface Science.
`169-193 (1996).
`
`v
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`
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`UTC-2001
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`UTC-2002
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`UTC-2003
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`UTC-2004
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`UTC-2005
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`UTC-2006
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`UTC-2007
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`UTC-2008
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`UTC-2009
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`UTC-2010
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`

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`UTC-2011
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`UTC-2012
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`UTC-2013
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`UTC-2014
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`UTC-2015
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`UTC-2016
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`UTC-2017
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`UTC-2018
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`UTC-2019
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`UTC-2020
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`UTC-2021
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`UTC-2022
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`UTC-2023
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`D. Zhu and R.A. Miller, Investigation of thermal fatigue
`behavior of thermal barrier coating systems, 94-95 Surface and
`Coatings Technology. 94-101 (1997).
`
`A.G. Evans, D.R. Mumm, J.W. Hutchinson, G.H. Meier, and
`F.S. Pettit, Mechanisms controlling the durability of thermal
`barrier coatings, 46 Progress in Materials Science. 505-553
`(2001).
`
`Supplemental Declaration of Dr. David R. Clarke
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`Transcript of Cross-Examination of Andreas M. Glaeser, Ph.D.,
`conducted March 1, 2017.
`
`[RESERVED]
`
`M.E. Westwood et al., Oxidation protection for carbon fibre
`composites, 31 Journal of Materials Science. 1389-1397 (1996).
`
`M. Ohring, ENGINEERING MATERIALS SCIENCE (1995).
`
`L.H. Van Vlack, ELEMENTS OF MATERIALS SCIENCE AND
`ENGINEERING (1989).
`
`U.S. Patent No. 6,296,941.
`
`K.N. Lee, Key Durability Issues With Mullite-Based
`Environmental Barrier Coatings for Si-Based Ceramics, 122
`Transactions of the ASME. 632-636 (2000).
`
`N.S. Jacobson et al., Oxidation and corrosion of ceramics and
`ceramic matrix composites, 5 Current Opinion in Solid State
`and Materials Science. 301-309 (2001).
`
`K.N. Lee, Current status of environmental barrier coatings for
`Si-Based ceramics, 133-134 Surface and Coatings Technology.
`1-7 (2000).
`
`S.V. Raj, Comparison of the Thermal Expansion Behavior of
`Several Intermetallic Silicide Alloys Between 293 and 1523 K,
`
`vi
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`UTC-2024
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`UTC-2025
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`UTC-2026
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`UTC-2027
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`UTC-2028
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`UTC-2029
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`UTC-2030
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`UTC-2031
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`UTC-2032
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`UTC-2033
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`UTC-2034
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`UTC-2035
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`24 Journal of Materials Engineering and Performance. 1199-
`1205 (2015).
`
`D. Zhu et al., Thermal Conductivity of Ceramic Thermal
`Barrier and Environmental Barrier Coating Materials,
`NASA/TM–2001-211122 (2001).
`
`R. Siegel and C.M. Spuckler, Analysis of thermal radiation
`effects on temperatures in turbine engine thermal barrier
`coatings, A245 Materials Science and Engineering. 150-159
`(1998).
`
`M. Peters et al., Design and Properties of Thermal Barrier
`Coatings for Advanced Turbine Engines, 28
`Materialwissenschaft und Werkstofftechnik. 357-362 (1997).
`
`R.H. Doremus, Viscosity of silica, 92 Journal of Applied
`Physics. 7619-7629 (2002).
`
`Date Stamped Pages of UTC-2002
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`Date Stamped Pages of UTC-2006
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`Date Stamped Pages of UTC-2007
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`Date Stamped Pages of UTC-2008
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`Date Stamped Pages of UTC-2009
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`Date Stamped Pages of UTC-2010
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`Date Stamped Pages of UTC-2011
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`Date Stamped Pages of UTC-2012
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`
`I.
`
`Introduction
`Petitioner challenges the claims of U.S. Patent No. 7,060,360 (the ’360
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`Patent) on two obviousness grounds which are technologically similar, and
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`similarly flawed. Both grounds are based on U.S. Patent No. 5,677,060
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`(Terentieva), a reference that was distinguished to the satisfaction of the Patent
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`Office after thorough consideration during prosecution.
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`Despite this, Petitioner attempts to replay the original prosecution of the
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`’360 Patent by contending that the ’360 Patent claims are obvious over Terentieva,
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`in combination with either Eaton ’456 or the background section of the ’360
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`Patent. In each instance, Petitioner fails to demonstrate that these references are
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`properly combinable, much less that a person of ordinary skill in the art
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`(“POSITA”) would have been motivated to make the alleged combinations.
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`Indeed, the proposed combinations are simply an attempt by Petitioner to pick and
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`choose from the prior art references to reconstruct the claimed invention,
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`improperly using the invention itself as a roadmap. Moreover, a POSITA would
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`have had no reason to combine the proposed references because the combinations
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`would, at best, have led to redundant elements in Terentieva’s protective coating,
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`and, at worst, hindered or destroyed one of the key functionalities of Terentieva’s
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`protective coating.
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`Specifically, Petitioner suggests integrating a barrier layer onto Terentieva’s
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`protective coating while ignoring the dilatory impact that the proposed
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`combination of layers would have on the ability of Terentieva’s protective coating
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`to perform its disclosed “healing function,” the guaranteed continuity of which is
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`“the object of [Terentieva’s] invention.” See GE-1005, 1:48-51, 2:48-56. No
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`POSITA would be so irresponsible, particularly in the field of gas turbine engines,
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`which is technically complex, costly, and subject to unexpected results. Rather,
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`fairly considering the implications of integrating a barrier layer onto Terentieva’s
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`protective coating, a POSITA would readily appreciate that the key functionality of
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`Terentieva’s protective coating would be hindered or altogether eliminated, leading
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`the POSITA away from the proposed combination.
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`Furthermore, a POSITA would have perceived both that the layers in the
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`proposed combination have redundant functionality and that there are drawbacks
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`associated with introducing additional layers and attendant thickness into a
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`multilayer structure, and thus would have been led away from such a combination.
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`Petitioner has also failed to account for the well-known technical obstacles
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`associated with creating a multilayer coating, particularly in a field involving
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`“intense heat flows” and “gas flows at very high speeds” (see GE-1005, 2:48-56),
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`where the behavior of coatings is known as volatile and unpredictable, and where
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`expensive, complex, and non-standardized testing is often required. Petitioner’s
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`failure to account for, or intentional avoidance of, these technical challenges
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`further would lead a POSITA away from the proposed combination once a
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`reasonable POSITA considered such challenges. UTC-2001, ¶¶ 108-110; UTC-
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`2013, ¶¶ 7-18.
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`In its institution decision, the Board identified the obviousness of the
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`Petition’s proposed combinations as “critical” and “close” questions, and credited
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`Dr. Clarke’s prior testimony as “creat[ing] a genuine issue of material fact.”
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`Institution Decision (Paper 7), pp. 10-11. Accordingly, Patent Owner addresses
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`first the question of obviousness. Thereafter, Patent Owner addresses the
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`construction of the term “bond layer” and the absence of one in the Petition’s prior
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`art, the Petition’s improper reliance on the ’360 Patent’s background disclosure as
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`prior art, and the dearth of objective evidence regarding the prior art’s teaching of
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`dependent claims 6, 8, and 10.
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`II. Overview of the Patent
`The ’360 Patent discloses “a bond layer for use on a silicon based substrate.”
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`GE-1001, abstract. Notably, the ’360 Patent discloses an improvement over Eaton
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`’456. In particular, after helping to develop the structure shown by Eaton ’456
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`under a joint NASA contract with GE, the inventors of the ’360 Patent determined
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`that this prior art system resulted in “significant loss of mechanical properties,”
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`such as “a reduction in bond strength.” GE-1001, 1:35-43. Accordingly, the
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`inventors sought to improve this system by modifying the bond coat in the system,
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`shown below. See GE-1001, 1:1-3; UTC-2001, paragraphs 64-66. Figs. 1a and 1b
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`of the ’360 Patent illustrate the coating system disclosed in Eaton ’456, also
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`authored by one of the ’360 Patent’s inventors – Dr. Harry Eaton. This coating
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`system, depicted in the following diagram, includes “a silicon based substrate 12, a
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`bond coat or layer 14 such as a dense continuous layer of silicon metal, a barrier
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`layer 16 such as either an alkaline earth aluminosilicate based on barium and
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`strontium, or yttrium silicate, and an optional top layer.” GE-1001, 1:20-24; see
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`UTC-2001, ¶¶ 63, 81.
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`As described in the ’360 Patent specification, this inventive modification to
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`the bond coat led to “an increase in room temperature fracture toughness,” while
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`retaining the coating’s bonding functionality within the system. GE-1001, 1:51-64.
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`The figure below illustrates this improvement. UTC-2001, ¶¶ 64-66.
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`
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`Environmental Barrier Layer
`& Oxidation Protection
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`Bond Coat
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`Story of Invention
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`Development
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`Environmental Barrier Layer
`& Oxidation Protection
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`Improved 
`Bond Coat
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`Eaton ’456 and 
`Structure From 
`Background of ’360 
`Patent
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`Inventive Structure 
`of ’360 Patent
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`
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`The originally-filed claims of the ’360 Patent recited the advancement in
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`terms that broadly reference the existence of an improved bond layer and the
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`substrate. GE-1002, p. 66. In the first Office Action, the Examiner relied on
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`Terentieva to reject the original claims. Without assenting to configuration or use
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`of Terentieva’s protective coating as a “bond layer,” applicant amended the claims
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`to draw attention to the disclosed multi-layer configuration, in which the improved
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`bond layer was positioned between the “barrier layer” and the substrate. This
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`recited configuration unambiguously required the bond layer to be configured to
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`provide a bond between two particular layers – a substrate and an “environmental
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`barrier layer” that consists essentially of an alkaline earth aluminosilicate based on
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`barium and strontium, or yttrium silicate. GE-1002, p. 21, 24-25, 37, 40-42.
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`The Examiner ultimately acknowledged what was established in the
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`specification and what became further evident through record arguments and
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`amendments – that the prior art, particularly, Terentieva, fails to disclose a bond
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`layer, particularly one that bonds an “environmental barrier layer selected from the
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`group consisting essentially of an alkaline earth aluminosilicate based on barium
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`and strontium, and yttrium silicate” to a silicon based substrate. Flowing from this
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`failure was the absence of any appreciation in the prior art for problems that could
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`be addressed by the claimed configuration (e.g., “significant loss of mechanical
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`properties” and “a reduction in 4-point bend strength”), or advantages that could
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`flow from the claimed configuration (e.g., “an increase in room temperature
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`fracture toughness”). GE-1001, 1:35-43.
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`III. Overview of the Prior Art
`Each of the primary prior art references and the ’360 Patent describe coating
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`systems for use in protecting components within aviation and space applications.
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`This field is technically complex, costly, and subject to unexpected results. See
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`UTC-2001, ¶¶ 43-57; UTC-2013, ¶¶ 7-12.
`
`A.
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`Field of the Prior Art
`The invention and prior art concern materials for use in those portions of gas
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`turbine engines exposed to a high-temperature, aqueous environment.
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`Terentieva discloses a protective coating for a refractory metal substrate.
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`GE-1005, 1:6-18. From the outset, Terentieva describes that such refractory metal
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`substrates are “used, in particular, in the aviation or space industries to make parts
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`that are subjected in operation to high temperatures, such as parts of aero-engines
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`or elements of aerodynamic fairings (space vehicles).” Id. at 1:14-18. These
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`conditions and their implication are further evident from the stated objects of
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`Terentieva’s invention, namely, to “further improve the performance of anti-
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`oxidation protection to make it possible to use refractory materials at very high
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`temperatures, typically with the material having a surface temperature of up to at
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`least 1850° C, and also to guarantee that the healing function is continuous, even in
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`surface zones which, because of their configuration or their location, are exposed
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`to intense heat flows or to gas flows at very high speed.” GE-1005, 2:48-56.
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`Indeed, it is undisputed that “one of ordinary skill in the art would read Terentieva
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`and understand that its teachings applies in the field of aeroengines or elements of
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`aerodynamic fairings.” UTC-2014, 53:22-54:5; see also GE-1003, ¶ 60.
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`Similarly, Eaton ’456 describes the protection of ceramic material “for use
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`in gas turbine engines which operate at high temperatures in aqueous
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`environments.” GE-1006, 1:25-27. Webster – which GE argues motivates the
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`combination proposed in Ground 2 – relates to the “use of carbon fibre reinforced
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`silicon carbide (C|SiC) in high temperature structural applications such as gas
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`turbine engines.” GE-1025, p. 2345. Each of these operating environments is
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`consistent with that described in the subject ’360 Patent, which focuses on
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`protecting substrates exposed to “high temperature, aqueous environments such as
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`for example, the combustor and turbine sections of gas turbine engines.” GE-1001,
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`1:10-13.
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`As a result, a POSITA considering these references and any proposed
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`combinations of these references would be leery of diverging from their teachings.
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`Rather, a POSITA would skeptically approach any proposed combinations or
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`modifications of these references with careful consideration that takes account of
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`the principles governing how coatings function in high-temperature operating
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`conditions, as well as cyclic temperature and high gas flow operating conditions,
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`such as in gas turbine engines. UTC-2001, ¶¶ 105-109. Indeed, the Petition
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`acknowledges the necessity of these considerations by addressing the nature of
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`“engine materials” in its “Technology Overview.” See Petition, pp. 4-9. It is
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`undisputed that a POSITA would not simply juxtapose coatings based on a subset
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`of their features, particularly without careful consideration of the chemical and
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`physical properties known to be vital to the success of multi-layer coating
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`structures. GE-1003, ¶¶ 45-46; UTC-2013, ¶¶ 7-12; UTC-2014, 47:14-49:19 (Dr.
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`Glaeser agreeing that a POSITA must consider at least chemical compatibility,
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`compatibility in coefficients of thermal expansion, differences in elastic moduli,
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`and thermal conductivity).
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`B.
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`Designing Coating Systems for Aviation or Space Applications
`Petitioner’s obviousness theory assumes that the POSITA would approach
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`the design of a multilayer coating as a simple matter of mixing and matching prior-
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`art elements. But that is not an accurate representation of the technology or field.
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`In the first place, the field itself is inherently unpredictable. “Coatings
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`enable the attributes of two or more materials [the substrate and the layer(s) of the
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`coating] to be combined to form a composite having characteristics not readily
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`available in a monolithic material.” UTC-2002, p. xii. “The primary requirement
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`of a protective surface is to have qualities superior to that of the substrate in order
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`to shield the component from an aggressive environment.” UTC-2002, p. 1. “The
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`system is invariably hybrid, whether it has been achieved by means of a surface
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`modification of the component substrate itself or one or more other materials have
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`been applied as a coating to the component surface.” UTC-2002, p. 1; see also
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`UTC-2001, ¶¶ 35-36.
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`These design issues are compounded in gas turbine engine applications
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`where the uniquely challenging environmental conditions make it especially
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`problematic to predict how or whether a coating will work without engine-
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`component failure. “[C]omponent failure is often due to the synergistic action of
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`several features in operation at high temperature conditions - the temperature and
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`time scale of actual operation, local high temperature changes, the material used, . .
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`. mechanical and thermal stress cycles in the course of operation as well as shut
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`down and rest periods.” UTC-2002, p. 6. Furthermore, a high heat-flux
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`environment, such as in gas turbine engine applications, activates an additional
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`failure mode in coatings used therein. UTC-2001, ¶ 54.
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`The difficulty in predicting the performance of a single coating is further
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`compounded when designing multilayer systems, as claimed in the ’360 patent.
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`Coating systems designed to protect a component (i.e., a substrate) may have one
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`or multiple layers. UTC-2002, p. 1; UTC-2001, ¶¶ 37-40. Hybrid materials, such
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`as multi-layer coatings, “bring their own problems, especially in property matching
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`at the interface, and coatings technology has thus emerged as a challenging field
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`both for the fundamental and applied research worker.” UTC-2002, p. xiv
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`(emphasis added).
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`In developing a coating system, such as a multilayer coating system, for
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`such an environment, a designer must consider a large number of variables,
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`including “the coating composition, structure, porosity and adhesion together with
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`operating and coating temperatures, [and] substrate/coating compatibility . . . .”
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`UTC-2002, p. 11. In other words, “compatibility” is only one of many factors that
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`must be addressed in determining whether one or more coatings will be viable, a
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`fact explicitly supported by Petitioner’s expert. UTC-2001, ¶¶ 50-52, 55-57; UTC-
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`2013, ¶¶ 7-12; see also GE-1003, ¶¶ 45-46; UTC-2014, 42:17-44:22 (Dr. Glaeser
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`agreeing that a POSITA must consider at least chemical compatibility,
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`compatibility in coefficients of thermal expansion, differences elastic moduli, and
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`thermal conductivity).
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`As a result, it is difficult to predict how the same layer composition will
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`function in two different multi-layer coatings. It is therefore well known that
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`coatings must be developed for specific substrates as integrated systems and cannot
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`be adequately developed in isolation. UTC-2002, p. 563. For example, the
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`industry has shown that “[d]uplex and multilayer coatings must be studied in a
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`graded programme to enable assessment of the influence of each of the
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`coating layers.” UTC-2002, p. 563 (emphasis added). In other words, it is
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`effectively impossible to predict how coatings will work in an integrated, multi-
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`layer structure, even if you are aware of their behavior in isolation. UTC-2001, ¶¶
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`44, 50-52. Indeed, in order to confirm compatibility of multilayer structures or
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`coatings, a developer must consider a number of factors, including, but not limited
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`to, (1) the thermal interaction between the layers (e.g., the thermal expansion
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`coefficient of each layer), (2) how the elements in these layers diffuse between
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`layers during operation in the high heat of a turbine engine environment, and (3)
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`changes in the coating layers with service at high temperature associated with
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`sintering or densification of the material. UTC-2001, ¶¶ 45-49, 55-56.
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`To this point, GE’s expert, Dr. Glaeser, agrees that designing multilayer
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`coating systems is a complex endeavor, because there are many ways that these
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`systems can fail. See UTC-2014, 41:6-16 (“There are many ways that these
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`systems can fail, so there is complexity in terms of -- in terms of these [multilayer
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`coating] systems.”), 45:14-18 (“Any time you add more components things
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`become more complex.”). Moreover, Dr. Glaeser agrees that testing in the field of
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`high temperature coatings is expensive, and that testing is the only way to know
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`that a particular multi-layer coating system will be successful. See UTC-2014,
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`43:6-11 (“To know that [coatings] are successful, to prove that they are successful,
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`one would -- one would need to test, yes.”), 45:5-13 (“I would agree that testing is
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`expensive.”). It is for these very reasons that Dr. Clarke notes that, “[a]bsent
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`knowledge of previously developed evidence of” the behavior of the actual
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`materials being considered for use in a multilayer coating system, “a POSITA
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`would not have perceived a reasonable likelihood of success in combining layers
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`into a multilayer system, capable of withstanding high temperature service in a gas
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`turbine, without undertaking expensive and time-consuming experimentation.”
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`UTC-2013, ¶ 7.
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`IV. Defects in the Proposed Grounds of Unpatentability
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`Each of the proposed grounds of unpatentability is defective because each
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`fails to meet Petitioner’s burden of establishing a prima facie case of obviousness.
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`As will be described in greater detail in subsequent sections, Petitioner
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`proposes a combination of coatings not previously contemplated in the prior art,
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`and proposes this combination within the field of coatings exposed to high-
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`temperature operating conditions, repeated heating and cooling cycles, and high
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`velocity gas flows, such as in gas turbine engines. In essence, Petitioner baldly
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`asserts that a POSITA would have known how, and been motivated, to excise a
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`barrier layer from the Eaton ’456 composite structure and form it on top of the
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`protective coating taught by Terentieva. See generally Petition, pp. 23-30.
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`Similarly, Petitioner proposes excising and integrating the barrier layer from the
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`structure described in the background section of the ’360 Patent. See generally
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`Petition, pp. 39-43.
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`Neither of Petitioner’s proposed combinations are workable. Petitioner does
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`not consider the functionality that the prior art attributes to the layers in the
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`proposed combination. Furthermore, Petitioner fails to account for the well-known
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`complexities of creating such new composite structures. The proposed
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`obviousness of the ’360 patent combination is really just hindsight.
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`A.
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`It Would Not Have Been Obvious to Combine the Layers in
`Petitioner’s Proposed Combinations
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`The Petition alleges that a POSITA would have found it obvious to form
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`either the environmental barrier layer described by Eaton ’456 (Ground 1) or the
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`environmental barrier layer described in the background of the ’360 Patent
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`(Ground 2) on top of the protective coating of Terentieva. Neither allegation is
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`correct. In particular, the Petition argues that “the addition of an environmental
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`barrier coating layer consisting of BSAS to protect an underlying silicon-
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`containing substrate and vulnerable silicon-containing layer(s) would have been
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`obvious to a POSITA faced with using the coating article of Terentieva in high
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`temperature components.” Petition, p. 30. Following is a diagram of the proposed
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`Bond Coat
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`?P
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`roposed Combination
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`combinations.
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`Environmental Barrier Layer
`& Oxidation Protection
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`Oxidation Protection
`and Healing
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`Terentieva (GE‐1005)
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`Eaton ’456 and 
`Structure From 
`Background of ’360 
`Patent
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`
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`A POSITA would have understood this proposed combination to be
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`inappropriate for at least three reasons. First, a POSITA would have understood
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`that the formation of either the environmental barrier layer described by Eaton
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`Case IP