`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`GENERAL ELECTRIC COMPANY
`Petitioner
`
`v.
`
`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-01289
`Patent 7,060,360
`
`
`
`
`
`
`
`
`
`
`UNITED TECHNOLOGIES CORPORATION’S
`PATENT OWNER RESPONSE
`
`
`
`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
`
`i
`
`
`
`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`Because It Would Render Terentieva’s Protective Coating Redundant.
`
`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
`
`ii
`
`
`
`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
`
`
`
`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
`
`
`
`iv
`
`
`
`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
`
`
`
`UTC-2001
`
`UTC-2002
`
`UTC-2003
`
`UTC-2004
`
`UTC-2005
`
`UTC-2006
`
`
`UTC-2007
`
`
`UTC-2008
`
`
`UTC-2009
`
`
`UTC-2010
`
`
`
`
`
`UTC-2011
`
`
`UTC-2012
`
`
`UTC-2013
`
`UTC-2014
`
`
`UTC-2015
`
`UTC-2016
`
`
`UTC-2017
`
`UTC-2018
`
`
`UTC-2019
`
`UTC-2020
`
`
`UTC-2021
`
`
`UTC-2022
`
`
`UTC-2023
`
`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
`
`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
`
`
`
`
`UTC-2024
`
`
`UTC-2025
`
`
`UTC-2026
`
`
`UTC-2027
`
`
`UTC-2028
`
`UTC-2029
`
`UTC-2030
`
`UTC-2031
`
`UTC-2032
`
`UTC-2033
`
`UTC-2034
`
`UTC-2035
`
`
`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
`
`Date Stamped Pages of UTC-2006
`
`Date Stamped Pages of UTC-2007
`
`Date Stamped Pages of UTC-2008
`
`Date Stamped Pages of UTC-2009
`
`Date Stamped Pages of UTC-2010
`
`Date Stamped Pages of UTC-2011
`
`Date Stamped Pages of UTC-2012
`
`vii
`
`
`
`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`
`I.
`
`Introduction
`Petitioner challenges the claims of U.S. Patent No. 7,060,360 (the ’360
`
`Patent) on two obviousness grounds which are technologically similar, and
`
`similarly flawed. Both grounds are based on U.S. Patent No. 5,677,060
`
`(Terentieva), a reference that was distinguished to the satisfaction of the Patent
`
`Office after thorough consideration during prosecution.
`
`Despite this, Petitioner attempts to replay the original prosecution of the
`
`’360 Patent by contending that the ’360 Patent claims are obvious over Terentieva,
`
`in combination with either Eaton ’456 or the background section of the ’360
`
`Patent. In each instance, Petitioner fails to demonstrate that these references are
`
`properly combinable, much less that a person of ordinary skill in the art
`
`(“POSITA”) would have been motivated to make the alleged combinations.
`
`Indeed, the proposed combinations are simply an attempt by Petitioner to pick and
`
`choose from the prior art references to reconstruct the claimed invention,
`
`improperly using the invention itself as a roadmap. Moreover, a POSITA would
`
`have had no reason to combine the proposed references because the combinations
`
`would, at best, have led to redundant elements in Terentieva’s protective coating,
`
`and, at worst, hindered or destroyed one of the key functionalities of Terentieva’s
`
`protective coating.
`
`
`
`1
`
`
`
`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`Specifically, Petitioner suggests integrating a barrier layer onto Terentieva’s
`
`protective coating while ignoring the dilatory impact that the proposed
`
`combination of layers would have on the ability of Terentieva’s protective coating
`
`to perform its disclosed “healing function,” the guaranteed continuity of which is
`
`“the object of [Terentieva’s] invention.” See GE-1005, 1:48-51, 2:48-56. No
`
`POSITA would be so irresponsible, particularly in the field of gas turbine engines,
`
`which is technically complex, costly, and subject to unexpected results. Rather,
`
`fairly considering the implications of integrating a barrier layer onto Terentieva’s
`
`protective coating, a POSITA would readily appreciate that the key functionality of
`
`Terentieva’s protective coating would be hindered or altogether eliminated, leading
`
`the POSITA away from the proposed combination.
`
`Furthermore, a POSITA would have perceived both that the layers in the
`
`proposed combination have redundant functionality and that there are drawbacks
`
`associated with introducing additional layers and attendant thickness into a
`
`multilayer structure, and thus would have been led away from such a combination.
`
`Petitioner has also failed to account for the well-known technical obstacles
`
`associated with creating a multilayer coating, particularly in a field involving
`
`“intense heat flows” and “gas flows at very high speeds” (see GE-1005, 2:48-56),
`
`where the behavior of coatings is known as volatile and unpredictable, and where
`
`expensive, complex, and non-standardized testing is often required. Petitioner’s
`
`
`
`2
`
`
`
`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`failure to account for, or intentional avoidance of, these technical challenges
`
`further would lead a POSITA away from the proposed combination once a
`
`reasonable POSITA considered such challenges. UTC-2001, ¶¶ 108-110; UTC-
`
`2013, ¶¶ 7-18.
`
`In its institution decision, the Board identified the obviousness of the
`
`Petition’s proposed combinations as “critical” and “close” questions, and credited
`
`Dr. Clarke’s prior testimony as “creat[ing] a genuine issue of material fact.”
`
`Institution Decision (Paper 7), pp. 10-11. Accordingly, Patent Owner addresses
`
`first the question of obviousness. Thereafter, Patent Owner addresses the
`
`construction of the term “bond layer” and the absence of one in the Petition’s prior
`
`art, the Petition’s improper reliance on the ’360 Patent’s background disclosure as
`
`prior art, and the dearth of objective evidence regarding the prior art’s teaching of
`
`dependent claims 6, 8, and 10.
`
`II. Overview of the Patent
`The ’360 Patent discloses “a bond layer for use on a silicon based substrate.”
`
`GE-1001, abstract. Notably, the ’360 Patent discloses an improvement over Eaton
`
`’456. In particular, after helping to develop the structure shown by Eaton ’456
`
`under a joint NASA contract with GE, the inventors of the ’360 Patent determined
`
`that this prior art system resulted in “significant loss of mechanical properties,”
`
`such as “a reduction in bond strength.” GE-1001, 1:35-43. Accordingly, the
`
`
`
`3
`
`
`
`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`inventors sought to improve this system by modifying the bond coat in the system,
`
`shown below. See GE-1001, 1:1-3; UTC-2001, paragraphs 64-66. Figs. 1a and 1b
`
`of the ’360 Patent illustrate the coating system disclosed in Eaton ’456, also
`
`authored by one of the ’360 Patent’s inventors – Dr. Harry Eaton. This coating
`
`system, depicted in the following diagram, includes “a silicon based substrate 12, a
`
`bond coat or layer 14 such as a dense continuous layer of silicon metal, a barrier
`
`layer 16 such as either an alkaline earth aluminosilicate based on barium and
`
`strontium, or yttrium silicate, and an optional top layer.” GE-1001, 1:20-24; see
`
`UTC-2001, ¶¶ 63, 81.
`
`
`As described in the ’360 Patent specification, this inventive modification to
`
`the bond coat led to “an increase in room temperature fracture toughness,” while
`
`
`
`4
`
`
`
`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`retaining the coating’s bonding functionality within the system. GE-1001, 1:51-64.
`
`The figure below illustrates this improvement. UTC-2001, ¶¶ 64-66.
`
`
`
`Environmental Barrier Layer
`& Oxidation Protection
`
`Bond Coat
`
`Story of Invention
`
`Development
`
`Environmental Barrier Layer
`& Oxidation Protection
`
`Improved
`Bond Coat
`
`Eaton ’456 and
`Structure From
`Background of ’360
`Patent
`
`Inventive Structure
`of ’360 Patent
`
`
`
`The originally-filed claims of the ’360 Patent recited the advancement in
`
`terms that broadly reference the existence of an improved bond layer and the
`
`substrate. GE-1002, p. 66. In the first Office Action, the Examiner relied on
`
`Terentieva to reject the original claims. Without assenting to configuration or use
`
`of Terentieva’s protective coating as a “bond layer,” applicant amended the claims
`
`to draw attention to the disclosed multi-layer configuration, in which the improved
`
`bond layer was positioned between the “barrier layer” and the substrate. This
`
`recited configuration unambiguously required the bond layer to be configured to
`
`provide a bond between two particular layers – a substrate and an “environmental
`
`barrier layer” that consists essentially of an alkaline earth aluminosilicate based on
`
`barium and strontium, or yttrium silicate. GE-1002, p. 21, 24-25, 37, 40-42.
`
`
`
`5
`
`
`
`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`The Examiner ultimately acknowledged what was established in the
`
`specification and what became further evident through record arguments and
`
`amendments – that the prior art, particularly, Terentieva, fails to disclose a bond
`
`layer, particularly one that bonds an “environmental barrier layer selected from the
`
`group consisting essentially of an alkaline earth aluminosilicate based on barium
`
`and strontium, and yttrium silicate” to a silicon based substrate. Flowing from this
`
`failure was the absence of any appreciation in the prior art for problems that could
`
`be addressed by the claimed configuration (e.g., “significant loss of mechanical
`
`properties” and “a reduction in 4-point bend strength”), or advantages that could
`
`flow from the claimed configuration (e.g., “an increase in room temperature
`
`fracture toughness”). GE-1001, 1:35-43.
`
`III. Overview of the Prior Art
`Each of the primary prior art references and the ’360 Patent describe coating
`
`systems for use in protecting components within aviation and space applications.
`
`This field is technically complex, costly, and subject to unexpected results. See
`
`UTC-2001, ¶¶ 43-57; UTC-2013, ¶¶ 7-12.
`
`A.
`
`Field of the Prior Art
`The invention and prior art concern materials for use in those portions of gas
`
`turbine engines exposed to a high-temperature, aqueous environment.
`
`
`
`6
`
`
`
`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`Terentieva discloses a protective coating for a refractory metal substrate.
`
`GE-1005, 1:6-18. From the outset, Terentieva describes that such refractory metal
`
`substrates are “used, in particular, in the aviation or space industries to make parts
`
`that are subjected in operation to high temperatures, such as parts of aero-engines
`
`or elements of aerodynamic fairings (space vehicles).” Id. at 1:14-18. These
`
`conditions and their implication are further evident from the stated objects of
`
`Terentieva’s invention, namely, to “further improve the performance of anti-
`
`oxidation protection to make it possible to use refractory materials at very high
`
`temperatures, typically with the material having a surface temperature of up to at
`
`least 1850° C, and also to guarantee that the healing function is continuous, even in
`
`surface zones which, because of their configuration or their location, are exposed
`
`to intense heat flows or to gas flows at very high speed.” GE-1005, 2:48-56.
`
`Indeed, it is undisputed that “one of ordinary skill in the art would read Terentieva
`
`and understand that its teachings applies in the field of aeroengines or elements of
`
`aerodynamic fairings.” UTC-2014, 53:22-54:5; see also GE-1003, ¶ 60.
`
`Similarly, Eaton ’456 describes the protection of ceramic material “for use
`
`in gas turbine engines which operate at high temperatures in aqueous
`
`environments.” GE-1006, 1:25-27. Webster – which GE argues motivates the
`
`combination proposed in Ground 2 – relates to the “use of carbon fibre reinforced
`
`silicon carbide (C|SiC) in high temperature structural applications such as gas
`
`
`
`7
`
`
`
`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`turbine engines.” GE-1025, p. 2345. Each of these operating environments is
`
`consistent with that described in the subject ’360 Patent, which focuses on
`
`protecting substrates exposed to “high temperature, aqueous environments such as
`
`for example, the combustor and turbine sections of gas turbine engines.” GE-1001,
`
`1:10-13.
`
`As a result, a POSITA considering these references and any proposed
`
`combinations of these references would be leery of diverging from their teachings.
`
`Rather, a POSITA would skeptically approach any proposed combinations or
`
`modifications of these references with careful consideration that takes account of
`
`the principles governing how coatings function in high-temperature operating
`
`conditions, as well as cyclic temperature and high gas flow operating conditions,
`
`such as in gas turbine engines. UTC-2001, ¶¶ 105-109. Indeed, the Petition
`
`acknowledges the necessity of these considerations by addressing the nature of
`
`“engine materials” in its “Technology Overview.” See Petition, pp. 4-9. It is
`
`undisputed that a POSITA would not simply juxtapose coatings based on a subset
`
`of their features, particularly without careful consideration of the chemical and
`
`physical properties known to be vital to the success of multi-layer coating
`
`structures. GE-1003, ¶¶ 45-46; UTC-2013, ¶¶ 7-12; UTC-2014, 47:14-49:19 (Dr.
`
`Glaeser agreeing that a POSITA must consider at least chemical compatibility,
`
`
`
`8
`
`
`
`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`compatibility in coefficients of thermal expansion, differences in elastic moduli,
`
`and thermal conductivity).
`
`B.
`
`Designing Coating Systems for Aviation or Space Applications
`Petitioner’s obviousness theory assumes that the POSITA would approach
`
`the design of a multilayer coating as a simple matter of mixing and matching prior-
`
`art elements. But that is not an accurate representation of the technology or field.
`
`In the first place, the field itself is inherently unpredictable. “Coatings
`
`enable the attributes of two or more materials [the substrate and the layer(s) of the
`
`coating] to be combined to form a composite having characteristics not readily
`
`available in a monolithic material.” UTC-2002, p. xii. “The primary requirement
`
`of a protective surface is to have qualities superior to that of the substrate in order
`
`to shield the component from an aggressive environment.” UTC-2002, p. 1. “The
`
`system is invariably hybrid, whether it has been achieved by means of a surface
`
`modification of the component substrate itself or one or more other materials have
`
`been applied as a coating to the component surface.” UTC-2002, p. 1; see also
`
`UTC-2001, ¶¶ 35-36.
`
`These design issues are compounded in gas turbine engine applications
`
`where the uniquely challenging environmental conditions make it especially
`
`problematic to predict how or whether a coating will work without engine-
`
`component failure. “[C]omponent failure is often due to the synergistic action of
`
`
`
`9
`
`
`
`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`several features in operation at high temperature conditions - the temperature and
`
`time scale of actual operation, local high temperature changes, the material used, . .
`
`. mechanical and thermal stress cycles in the course of operation as well as shut
`
`down and rest periods.” UTC-2002, p. 6. Furthermore, a high heat-flux
`
`environment, such as in gas turbine engine applications, activates an additional
`
`failure mode in coatings used therein. UTC-2001, ¶ 54.
`
`The difficulty in predicting the performance of a single coating is further
`
`compounded when designing multilayer systems, as claimed in the ’360 patent.
`
`Coating systems designed to protect a component (i.e., a substrate) may have one
`
`or multiple layers. UTC-2002, p. 1; UTC-2001, ¶¶ 37-40. Hybrid materials, such
`
`as multi-layer coatings, “bring their own problems, especially in property matching
`
`at the interface, and coatings technology has thus emerged as a challenging field
`
`both for the fundamental and applied research worker.” UTC-2002, p. xiv
`
`(emphasis added).
`
`In developing a coating system, such as a multilayer coating system, for
`
`such an environment, a designer must consider a large number of variables,
`
`including “the coating composition, structure, porosity and adhesion together with
`
`operating and coating temperatures, [and] substrate/coating compatibility . . . .”
`
`UTC-2002, p. 11. In other words, “compatibility” is only one of many factors that
`
`must be addressed in determining whether one or more coatings will be viable, a
`
`
`
`10
`
`
`
`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`fact explicitly supported by Petitioner’s expert. UTC-2001, ¶¶ 50-52, 55-57; UTC-
`
`2013, ¶¶ 7-12; see also GE-1003, ¶¶ 45-46; UTC-2014, 42:17-44:22 (Dr. Glaeser
`
`agreeing that a POSITA must consider at least chemical compatibility,
`
`compatibility in coefficients of thermal expansion, differences elastic moduli, and
`
`thermal conductivity).
`
`As a result, it is difficult to predict how the same layer composition will
`
`function in two different multi-layer coatings. It is therefore well known that
`
`coatings must be developed for specific substrates as integrated systems and cannot
`
`be adequately developed in isolation. UTC-2002, p. 563. For example, the
`
`industry has shown that “[d]uplex and multilayer coatings must be studied in a
`
`graded programme to enable assessment of the influence of each of the
`
`coating layers.” UTC-2002, p. 563 (emphasis added). In other words, it is
`
`effectively impossible to predict how coatings will work in an integrated, multi-
`
`layer structure, even if you are aware of their behavior in isolation. UTC-2001, ¶¶
`
`44, 50-52. Indeed, in order to confirm compatibility of multilayer structures or
`
`coatings, a developer must consider a number of factors, including, but not limited
`
`to, (1) the thermal interaction between the layers (e.g., the thermal expansion
`
`coefficient of each layer), (2) how the elements in these layers diffuse between
`
`layers during operation in the high heat of a turbine engine environment, and (3)
`
`
`
`11
`
`
`
`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`changes in the coating layers with service at high temperature associated with
`
`sintering or densification of the material. UTC-2001, ¶¶ 45-49, 55-56.
`
`To this point, GE’s expert, Dr. Glaeser, agrees that designing multilayer
`
`coating systems is a complex endeavor, because there are many ways that these
`
`systems can fail. See UTC-2014, 41:6-16 (“There are many ways that these
`
`systems can fail, so there is complexity in terms of -- in terms of these [multilayer
`
`coating] systems.”), 45:14-18 (“Any time you add more components things
`
`become more complex.”). Moreover, Dr. Glaeser agrees that testing in the field of
`
`high temperature coatings is expensive, and that testing is the only way to know
`
`that a particular multi-layer coating system will be successful. See UTC-2014,
`
`43:6-11 (“To know that [coatings] are successful, to prove that they are successful,
`
`one would -- one would need to test, yes.”), 45:5-13 (“I would agree that testing is
`
`expensive.”). It is for these very reasons that Dr. Clarke notes that, “[a]bsent
`
`knowledge of previously developed evidence of” the behavior of the actual
`
`materials being considered for use in a multilayer coating system, “a POSITA
`
`would not have perceived a reasonable likelihood of success in combining layers
`
`into a multilayer system, capable of withstanding high temperature service in a gas
`
`turbine, without undertaking expensive and time-consuming experimentation.”
`
`UTC-2013, ¶ 7.
`
`IV. Defects in the Proposed Grounds of Unpatentability
`
`
`
`12
`
`
`
`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`Each of the proposed grounds of unpatentability is defective because each
`
`fails to meet Petitioner’s burden of establishing a prima facie case of obviousness.
`
`As will be described in greater detail in subsequent sections, Petitioner
`
`proposes a combination of coatings not previously contemplated in the prior art,
`
`and proposes this combination within the field of coatings exposed to high-
`
`temperature operating conditions, repeated heating and cooling cycles, and high
`
`velocity gas flows, such as in gas turbine engines. In essence, Petitioner baldly
`
`asserts that a POSITA would have known how, and been motivated, to excise a
`
`barrier layer from the Eaton ’456 composite structure and form it on top of the
`
`protective coating taught by Terentieva. See generally Petition, pp. 23-30.
`
`Similarly, Petitioner proposes excising and integrating the barrier layer from the
`
`structure described in the background section of the ’360 Patent. See generally
`
`Petition, pp. 39-43.
`
`Neither of Petitioner’s proposed combinations are workable. Petitioner does
`
`not consider the functionality that the prior art attributes to the layers in the
`
`proposed combination. Furthermore, Petitioner fails to account for the well-known
`
`complexities of creating such new composite structures. The proposed
`
`obviousness of the ’360 patent combination is really just hindsight.
`
`A.
`
`It Would Not Have Been Obvious to Combine the Layers in
`Petitioner’s Proposed Combinations
`
`
`
`13
`
`
`
`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`The Petition alleges that a POSITA would have found it obvious to form
`
`either the environmental barrier layer described by Eaton ’456 (Ground 1) or the
`
`environmental barrier layer described in the background of the ’360 Patent
`
`(Ground 2) on top of the protective coating of Terentieva. Neither allegation is
`
`correct. In particular, the Petition argues that “the addition of an environmental
`
`barrier coating layer consisting of BSAS to protect an underlying silicon-
`
`containing substrate and vulnerable silicon-containing layer(s) would have been
`
`obvious to a POSITA faced with using the coating article of Terentieva in high
`
`temperature components.” Petition, p. 30. Following is a diagram of the proposed
`
`Bond Coat
`
`?P
`
`roposed Combination
`
`combinations.
`
`Environmental Barrier Layer
`& Oxidation Protection
`
`Oxidation Protection
`and Healing
`
`Terentieva (GE‐1005)
`
`Eaton ’456 and
`Structure From
`Background of ’360
`Patent
`
`
`
`A POSITA would have understood this proposed combination to be
`
`inappropriate for at least three reasons. First, a POSITA would have understood
`
`that the formation of either the environmental barrier layer described by Eaton
`
`
`
`14
`
`
`
`Case IP