UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GENERAL ELECTRIC CO.,
`Petitioner,
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`v.
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`UNITED TECHNOLOGIES CORP.,
`Patent Owner.
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`Case No. IPR2016-01289
`U.S. Patent No. 7,060,360 B2
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`PETITIONER’S BRIEF ON REMAND
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GENERAL ELECTRIC CO.,
`Petitioner,
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`v.
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`UNITED TECHNOLOGIES CORP.,
`Patent Owner.
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`Case No. IPR2016-01289
`U.S. Patent No. 7,060,360 B2
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`PETITIONER’S BRIEF ON REMAND
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`TABLE OF CONTENTS
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`ARGUMENT….……………………………………………………………………1
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` A. Terentieva Discloses the Claimed Bond Layer ……………………2
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`B. Response to UTC’s Anticipated Arguments …………………….. 6
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`TABLE OF AUTHORITIES
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`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015) ……..………… 7
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`In re Epstein, 32 F.3d 1559 (Fed. Cir. 1994) ……………………………………... 7
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`In re Graves, 69 F.3d 1147 (Fed. Cir. 1995)……………………………………… 6
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`United Tech. Corp. v. General Electric Co., 2019 WL 332754
` (Fed. Cir. Jan. 25, 2019)………………………………………………………... 1
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`GE
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`UTC
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`FWD
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`Pet.
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`Reply
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`360 Patent
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`Glaeser Decl.
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`Terentieva
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`Eaton
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`POSITA
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`[Citation]
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`Emphasis
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`TABLE OF ABBREVIATIONS
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`Petitioner General Electric Company
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`Patent Owner United Technologies Corporation
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`Final Written Decision Finding Claims 1-14
`Unpatentable, 35 U.S.C. § 318 and 37 C.F.R. § 42.73,
`filed December 19, 2017 (Paper 25)
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`Petition for Inter Partes Review of U.S. Patent No.
`7,060,360, filed June 28, 2016 (Paper 1)
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`Petitioner’s Reply Brief in Support of its Petition for
`Inter Partes Review of U.S. Patent No. 7,060,360, filed
`June 27, 2016 (Paper 16)
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`U.S. Patent No. 7,060,360 B2, issued June 13, 2006 to
`Harry E. Eaton et al. (Ex. 1001)
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`Declaration of Andreas M. Glaeser, Ph.D. (Ex. 1003)
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`U.S. Patent No. 5,677,060, issued October 14, 1997 to
`Valentina Sergeevna Terentieva et al. (Ex. 1005)
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`U.S. Patent No. 6,387,456 B1, issued May 14, 2002 to
`Harry Edwin Eaton, Jr. et al. (Ex. 1006)
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`Person of Ordinary Skill in the Art
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`Identification of “record evidence previously cited in
`substantive brief” pursuant to Order on Remand
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`Procedure and Briefing Schedule (Paper 28)
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`All emphasis added unless otherwise noted
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`ii
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`GE hereby submits its Brief on Remand pursuant to the Board’s April 5,
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`2019 Remand Order (Paper 28) for this IPR concerning the 360 Patent.
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`On January 25, 2019, the Federal Circuit issued its opinion in which it
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`adopted UTC’s construction of the claim term “bond layer,” defining it as “a layer
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`of material designed to adhere another layer to a substrate.” United Tech. Corp. v.
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`General Electric Co., 2019 WL 332754, *2 (Fed. Cir. Jan. 25, 2019). The Court
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`remanded to the Board to consider invalidity under the Court’s construction.
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`As explained herein, the evidence shows that the challenged claims of the
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`360 Patent (claims 1-14) are unpatentable under 35 U.S.C. § 103 under the Court’s
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`construction of “bond layer.” Terentieva teaches that its “bond layer” (referred to
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`as a “coating” in Terentieva and composed of the same refractory metal
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`disilicide/silicon eutectic as claimed in the 360 Patent) has adherent properties and
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`thus is designed to adhere another layer to a substrate. As the Court’s opinion does
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`not impact any other aspect of the Board’s invalidity finding in the FWD,
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`including motivation to combine and reasonable expectation of success, the Board
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`may confirm the invalidity of the challenged claims upon determining that
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`Terentieva meets the Court’s claim construction for “bond layer.”
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`ARGUMENT
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`Claim 1 of the 360 Patent requires a “silicon based substrate,” at least one
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`“environmental barrier layer” (“EBL”) that is an alkaline earth aluminosilicate
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`based on, e.g., barium and strontium, and a “bond layer” between the substrate and
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`EBL that “comprises an alloy comprising a refractory metal disilicide/silicon
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`eutectic.” GE-1001, claim 1. The Board found that “Terentieva discloses a
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`silicon-containing substrate coated with a refractory metal disilicide/silicon
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`eutectic layer, which meets the compositional requirements of the ‘bond layer’
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`specified by claim 1.” FWD at 11-12 (hereinafter, Terentieva’s “coating layer”).
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`The Board found that Eaton (Ex. 1006) “describes a prior art BSAS coating
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`[‘alkaline earth aluminosilicate based on barium and strontium,’ FWD at 3] that
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`meets the compositional requirements of the [EBL] specified in claim 1.” Id. at 12.
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`After thoroughly considering the evidence (id. at 12-20), the Board found
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`that a POSITA “would have been led to apply Eaton’s BSAS layer over the article
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`disclosed in Terentieva, and that the modified article would have met every
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`limitation of claim 1.” Id. at 20. The Board thus held claim 1 unpatentable, and,
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`upon consideration of the parties’ evidence and arguments concerning the
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`dependent claims, also found claims 2-14 would have been obvious over the
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`Terentieva/Eaton combination. Id. at 20-22.
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`A.
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`Terentieva Discloses the Claimed Bond Layer
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`The question on remand is whether the Terentieva coating layer meets the
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`Court’s claim construction of “bond layer,” that is, whether it is designed to adhere
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`another layer to a substrate. The evidence confirms that it does.
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`2
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`First, Terentieva teaches, and the Board found, that an outer refractory
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`protective layer may be deposited on top of the coating layer, such that the coating
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`layer is between the substrate and outer refractory layer. FWD at 17 (noting
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`“Terentieva’s express disclosure” and “express instruction” that an additional
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`protective layer may be successfully applied over the coating layer).
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`Second, Terentieva teaches that the coating layer has adherent properties.
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`As GE’s expert Dr. Glaeser explained, Terentieva states that the coating layer
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`provides excellent protection and “adhered well” to materials, including C-SiC
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`components which shows that the coating layer may be used as a “bond coat.”
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`Glaeser Decl., ¶ 49, citing Ex. 1005, col. 3:17-33 [cited in Pet. at 28; Reply at 17].
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`Terentieva further explicitly states that the coating layer is designed to adhere to
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`the underlying layer, e.g., the substrate. Ex. 1005, col. 4:30-34 (teaching that the
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`coating layer is formed by a heat treatment under vacuum, which “enabl[es] the
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`coating to adhere to the surface of the material to be protected.”) [cited in Pet. at
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`19-20; Reply at 21]; see also col. 5:54-57 (noting that the coating layer had
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`“adhesion to the surface of the material to be protected”); id., col. 6:50-54 (same)
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`[cited in Reply at 21, Pet. at 31].
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`A POSITA reviewing Terentieva would also understand that the coating
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`layer adheres “another layer” to the substrate. Terentieva teaches that an outer
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`layer may be applied over the coating layer: “The protective coating may further
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`3
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`include an outer refractory layer. This may be a layer comprising at least one
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`oxide such as a layer of silica, alumina, or zirconia glass….” Id., col. 3:7-10 [cited
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`in Pet. at 19-20]; see also col. 4:45-50 [cited in Reply at 21]. Terentieva subjected
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`the articles employing the coating layer to various tests (e.g., thermal cycling
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`(Examples 1 and 2), high-speed gas flows (Example 2), high pressure stress
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`(Example 4)). Id., col. 5:22-8:27 [cited in Reply at 21]. The testing showed that
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`the coating layer did not spall or delaminate; instead “no destructive effect was
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`observed.” Id., col. 6:18-21; col. 7:19-20 (“No sample destruction was observed
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`during the tests.”); col. 8:15-24 [cited in Reply at 21]. A POSITA would have
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`readily understood that when the outer refractory layer is present in Terentieva, the
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`coating layer, which is now an intermediate layer, would adhere to both the
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`underlying substrate and the refractory layer overlaid on it. Glaeser Decl., ¶¶ 45-
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`49, 51, 54-57 [cited in Pet. at 28-29; Reply at 2, 9, 17].
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`Moreover, as Dr. Glaeser explains, it was well known that aluminosilicates
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`readily bonded to MoSi2-based materials. Id., ¶ 54 (“Reported studies have
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`revealed that MoSi2 particles readily bond with an aluminosilicate glass….”) [cited
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`in Pet. at 28-29; Reply at 2, 9, 17]. Eaton’s BSAS layer is a barium-strontium
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`aluminosilicate; id., ¶ 55, and Eaton further teaches that the BSAS layer is
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`particularly suitable for use over molybdenum-silicon alloys. Id., ¶ 56, citing Ex.
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`1006, col. 3:2-4 [cited in Pet. at 28]. Terentieva’s coating layer is a form of
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`molybdenum-silicon alloy, see Glaeser Decl., ¶ 56, and thus a POSITA would have
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`known to apply a BSAS barrier layer onto a MoSi2 alloy, “including single-phase
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`and multiphase systems such as MoSi2, Si, and combinations thereof.” Id.; see
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`also id. at ¶ 57 (noting that Eaton teaches that a BSAS barrier layer can be applied
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`directly to a Mo-Si alloy layer, and that a POSITA would understand that when
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`applying a BSAS layer onto a MoSi2-Si layer, the latter serves “as a bond coat”).
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`That a POSITA would have understood that Terentieva’s coating layer
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`meets the Court’s construction of “bond layer” is further confirmed by Eaton. That
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`reference teaches that “an intermediate layer can be provided” between the
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`substrate and the BSAS layer, and that the purpose of the “intermediate layer” is
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`“to provide enhanced adherence between the [BSAS] layer and the substrate….”
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`Ex. 1006, col. 2:10-14 [cited in Pet. at 21]. In the Terentieva-Eaton combination,
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`Terentieva’s coating layer is exactly such an “intermediate layer” providing
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`adhesion between the substrate and Eaton’s BSAS layer. Glaeser Decl., ¶¶ 57, 75
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`[¶ 57 cited in Pet. at 27-29 and ¶ 75 in Pet. at 23, 26, 30; see also Reply at 9, 17].
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`The evidence thus confirms that a POSITA would understand that
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`Terentieva’s coating layer, when combined with Eaton’s BSAS layer, is a layer
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`“designed to adhere another layer [the BSAS layer] to a substrate.” Accordingly,
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`Terentieva discloses the claimed “bond layer” as construed by the Court, and
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`claims 1-14 are invalid as obvious.
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`5
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`B. Response to UTC’s Anticipated Arguments
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`UTC may argue that Terentieva does not explicitly state that its coating layer
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`adheres another layer to the substrate. Terentieva does, however, describe the
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`coating layer as having adhesive properties. Ex. 1005, col. 3:28-41; col. 4:30-33
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`[cited in Pet at 19-20, 28 and in Reply at 17, 21]. That is more than the 360 Patent,
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`which never once states that the claimed bond layer is used to adhere a layer to the
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`substrate. Further, it matters not whether a prior art reference contains a word-for-
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`word disclosure of the claimed subject matter; what is important is whether a
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`POSITA would recognize that the reference discloses the claimed limitations. In
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`re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (holding that a prior art reference
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`discloses the claimed invention when a skilled artisan could “take its teachings in
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`combination with his own knowledge of the particular art and be in possession of
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`the invention.”). Here, as described above, a POSITA would understand that
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`Terentieva’s coating layer is the claimed “bond layer” when combined with
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`Eaton’s BSAS layer.
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`UTC may also repeat its argument that the 360 Patent subject matter is an
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`“unpredictable art,” and therefore GE must show that Terentieva’s exact coating
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`layer adheres Eaton’s exact BSAS layer to the substrate. That argument also fails.
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`First, UTC cannot dispute that Terentieva’s coating layer is an “alloy comprising a
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`refractory metal disilicide/silicon eutectic,” and Eaton’s BSAS layer is an
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`6
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`“environmental barrier layer selected from the group… of an alkaline earth
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`aluminosilicate based on barium and strontium” exactly as claim 1 requires. FWD
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`at 11-12. That the Terentieva/Eaton combination may be a species of the broad
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`genus set forth in claim 1 is irrelevant, because “claims which are broad enough to
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`read on obvious subject matter are unpatentable” even though they may also read
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`on allegedly nonobviousness subject matter. In re Cuozzo Speed Techs., LLC, 793
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`F.3d 1268, 1281 (Fed. Cir. 2015).
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`Second, the Board in the FWD agreed with GE that UTC’s “plethora” of
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`alleged “unpredictable variables” was belied by the sparse disclosure of the 360
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`Patent itself. FWD at 19. The 360 Patent provides no examples or testing of any
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`actual compositions that meet the claims. Rather, the patent contains a laundry list
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`of possible refractory metals that may be used for the bond layer and leaves it to
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`the POSITA to determine which of the possible bond layer combinations will
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`adhere the substrate to one or both of the two disclosed EBLs. Reply at 5-6. A
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`POSITA necessarily brings that same knowledge to bear when considering the
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`teachings of the prior art. In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994)
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`(noting that appellant “did not provide the type of detail in his specification that he
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`now argues is necessary in the prior art,” which supported the Board’s finding that
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`a POSITA “would have known how to implement the features of the [prior art]”).
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`7
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`Dated: April 15, 2019
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`Respectfully submitted,
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`/Brian E. Ferguson/ l
`Anish R. Desai (Reg. No. 73,760)
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153-0119
`T: 212-310-8730
`GE.WGM.Service@weil.com
`
`Brian E. Ferguson (Reg No. 36,801)
`Christopher Pepe (Reg. No. 73,851)
`Weil, Gotshal & Manges LLP
`2001 M Street NW, Suite 600
`Washington, D.C. 20036
`T: 202-682-7000
`GE.WGM.Service@weil.com
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`8
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on April 15, 2019, the foregoing
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`PETITIONER’S BRIEF ON REMAND was served via electronic mail, upon the
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`following:
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`W. Karl Renner
`Timothy W. Riffe
`Lauren A. Degnan
`David L. Holt
`Fish & Richardson
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`renner@fr.com
`riffe@fr.com
`degnan@fr.com
`david.holt@fr.com
`AXF-PTAB@fr.com
`PTABIndound@fr.com
`IPR43498-002IP1@fr.com
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`/Timothy J. Andersen/ c
`Timothy J. Andersen
`Weil, Gotshal & Manges LLP
`2001 M Street NW, Suite 600
`Washington, D.C. 20036
`T: 202-682-7000
`timothy.andersen@weil.com
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