UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`General Electric Company,
`Petitioner,
`
`v.
`
`United Technologies Corporation,
`Patent Owner
`
`———————
`
`Case IPR2016-01289
`Patent 7,060,360 B2
`
`———————
`
`
`PATENT OWNER’S RESPONSIVE REMAND BRIEF
`
`
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`General Electric Company,
`Petitioner,
`
`v.
`
`United Technologies Corporation,
`Patent Owner
`
`———————
`
`Case IPR2016-01289
`Patent 7,060,360 B2
`
`———————
`
`
`PATENT OWNER’S RESPONSIVE REMAND BRIEF
`
`
`
`Case IPR2016-01289
`Docket No. 43498-0002IP1
`Before and during trial, UTC argued that “bond layer” means “a layer of
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`material designed to adhere another layer to a substrate.” Paper 6, p. 14-16; Paper
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`12, p. 40-46. GE chose not to offer evidence addressing UTC’s construction, instead
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`arguing that “bond layer” should be defined “solely in terms of its location and the
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`material from which it is composed.” Paper 16, pp. 18-22. The Federal Circuit
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`rejected GE’s argument, holding that a “bond layer” is “designed to adhere another
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`layer to a substrate” and that the bond layer’s location and composition are
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`“additional” requirements of claim 1. United Techs. Corp. v. Gen. Elec. Co., 2019
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`WL 332754, at *2 (Fed. Cir. Jan. 25, 2019) (original emphasis).
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`Nevertheless, GE argues that Terentieva’s protective coating constitutes a
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`“bond layer” for Eaton’s BSAS layer because it has the location and composition
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`required by claim 1. See Paper 29 at 5 (relying on Terentieva’s protective coating
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`being an “intermediate” layer), 6-7 (relying on Terentieva’s coating falling within
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`the claimed genus). Those arguments are foreclosed by the Federal Circuit’s
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`construction and mandate, which require separate proof that Terentieva’s alleged
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`“bond layer” “also ha[s] to bond,” and indeed must be “designed to bond another
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`layer to a substrate.” United Techs., 2019 WL 332754, at *2 (first emphasis in the
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`original).
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`GE cannot show that Terentieva’s protective coating provides any adherence
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`in the context of the proposed combination, much less that it is “designed to” adhere
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`
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`1
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`Case IPR2016-01289
`Docket No. 43498-0002IP1
`Eaton’s BSAS to a substrate. Indeed, every citation to evidence GE provides either
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`relates to different materials than those at issue in its combination or misrepresents
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`what the cited material actually says. Accordingly, GE has not met its burden under
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`the Federal Circuit’s construction.1
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`I.
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`The Record Is Devoid of Evidence Showing Any Adherence Between the
`Layers in GE’s Proposed Combination
`GE admits that its evidence does not “show that Terentieva’s exact coating
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`layer adheres Eaton’s exact BSAS layer to the substrate.” See Paper 29 at 6. Yet,
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`the combination GE defined in its petition suggests no alterations to the layers
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`disclosed in the prior art when combining them. See Pet., 23. Therefore, GE must
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`show that its proposed combination includes a layer that meets the Federal Circuit’s
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`construction of “bond layer.” See Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075,
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`1086 (Fed. Cir. 2008). Indeed, as described below, none of GE’s evidence
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`demonstrates that Terentieva’s protective coating is “a layer of material designed to
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`adhere another layer to a substrate,” as the Federal Circuit’s construction requires.
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`United Techs., 2019 WL 332754, at *2 (emphasis added).
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`First, the Petition combined Terentieva’s protective coating with Eaton’s
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`1 GE’s remand brief addresses only Ground 1 of the Petition. Although GE has
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`therefore waived any arguments regarding Ground 2 under the Federal Circuit’s
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`construction, the deficiencies discussed herein would also apply to Ground 2.
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`2
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`Case IPR2016-01289
`Docket No. 43498-0002IP1
`BSAS layer, not with Terentieva’s optional outer layer on which GE now relies. See,
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`e.g., Paper 16 at 9-10 (describing that GE’s combination is Eaton’s BSAS EBC
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`deposited directly on Terentieva’s protective coating); Paper 29 at 3-4 (citing FWD
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`at 17; Ex. 1005, 3:7-10, 4:45-50). Whether this optional outer refractory layer could
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`be adhered to a substrate by Terentieva’s protective coating is not relevant. As
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`Terentieva explains, its optional outer refractory layer “compris[es] at least one
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`oxide such as a layer of silica, alumina, or zirconia glass, or a layer of a non-oxide
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`ceramic such as silicon carbide (SiC) or silicon nitride (Si3N4) e.g. obtained by
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`chemical vapor deposition.” Ex. 1005, 3:7-10 [cited in Paper 29 at 4]. Because
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`BSAS is not among these materials, even if the protective coating were designed to
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`adhere these other materials to a substrate, GE lacks evidence that the protective
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`coating would retain that functionality when those layers were substituted with
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`Eaton’s BSAS layer. But GE’s proof does not go even that far because Terentieva
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`does not describe the extent to which its protective coating adheres its optional outer
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`layer to a substrate, and GE provides no reasoned explanation regarding how it is
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`“designed to” do so. See Ex. 1005, 3:7-10, 4:45-50.
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`Second, GE asserts that “Terentieva teaches that the coating layer has
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`adherent properties.” Id. at 3. However, the citations GE provides speak to only
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`adherence between Terentieva’s protective coating and the underlying substrate. See
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`id. at 3 (arguing that Terentieva’s protective coating “‘adhered well’ to materials,”
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`3
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`Case IPR2016-01289
`Docket No. 43498-0002IP1
`and “the coating layer is designed to adhere to the underlying layer, e.g., the
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`substrate” (emphases added)). This evidence does not describe any adherence
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`between Terentieva’s protective coating and Eaton’s BSAS, which is the key
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`relationship. GE’s citation to Dr. Glaeser’s discussion of col. 3:17-33 of Terentieva
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`is not pertinent to the Federal Circuit’s claim construction because that portion of
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`Terentieva discusses adherence between the eutectic elements of Terentieva’s
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`coating and the “other structural component[s]” which “form[] the armature” of the
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`protective coating. Ex. 1005, 3:17-33. GE’s attempt to recast this description as
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`showing adherence to other layers is misleading and unsupported.
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`Third, GE asserts that “it was well known that aluminosilicates readily
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`bonded to MoSi2-based materials” and that “Eaton further teaches that the BSAS
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`layer is particularly suitable for use over molybdenum-silicon alloys.” Paper 29 at
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`4. However, the evidence to which GE cites for the former proposition states only
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`that “MoSi2 particles readily bond with an aluminosilicate glass,” and is silent about
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`a broader class of “MoSi2-based materials.” Glaeser Decl., ¶ 54 (cited in Paper 29
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`at 4). Dr. Clarke explained that “Terentieva’s coating does not contain a MoSi2
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`phase” and “is not a Mo-Si alloy layer.” Ex. 2013, ¶ 15 (cited in Paper 12 at 35-36).
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`Dr. Clarke further noted that the “presence of titanium in Terentieva’s mixed
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`refractory disilicide” may significantly alter the properties of Terentieva’s protective
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`coating as compared to the “MoSi2 particles” and “molybdenum-silicon alloys” cited
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`4
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`Case IPR2016-01289
`Docket No. 43498-0002IP1
`by GE, including the protective coating’s coefficient of thermal expansion (CTE).
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`Ex. 2013, ¶¶ 16-18.
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`Indeed, Eaton itself clarifies that only “molybdenum-silicon alloys, niobium-
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`silicon alloys, and other Si containing alloys having a coefficient of thermal
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`expansion compatible with the [BSAS] barrier layer” are good substrates for its
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`BSAS. Ex. 1006, 3:2-7 (emphasis added) [cited in Paper 2 at 20, Paper 29 at 4].
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`Yet, GE has consistently omitted this last part of the quote when citing to Eaton. See
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`Paper 2 at 20; Paper 29 at 4. Tellingly, when faced with evidence from Dr. Clarke
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`that Terentieva’s protective coating would have a significantly different CTE than
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`the “MoSi2 particles” it cites as proof that Terentieva’s CTE is compatible with
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`BSAS, GE provided no rebuttal from Dr. Glaser and no other evidence to the
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`contrary. See Paper 16 at 5-6 (arguing instead that, based on its now-rejected
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`construction of “bond layer,” the claims would “potentially cover an article with a
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`substantial CTE mismatch between the bond layer and the other layers”). Thus, GE
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`has never explained how its evidence regarding “MoSi2 particles” and Eaton’s
`
`discussion of “molybdenum-silicon alloys . . . having a coefficient of thermal
`
`expansion compatible with the [BSAS] barrier layer” relates to the relationship
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`between Eaton’s BSAS and the composite of Ti(0.4-0.95)Mo(0.6-0.05)Si2 and TiSi2 that
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`forms Terentieva’s protective coating, much less how that evidence speaks to the
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`property of adherence, which Dr. Glaeser never addressed.
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`
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`5
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`
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`Case IPR2016-01289
`Docket No. 43498-0002IP1
`In sum, GE’s evidence does not satisfy its burden of proof that, in GE’s
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`proposed combination, Terentieva’s protective coating is “a layer of material
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`designed to adhere another layer to a substrate.” Therefore, GE has failed to prove
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`that each and every element of independent claim 1 is rendered obvious.
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`II. GE Fails To Address the Federal Circuit’s Requirement that a Bond
`Layer Be “Designed To” Adhere Another Layer to a Substrate
`Even if Terentieva’s protective coating would incidentally adhere to BSAS—
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`which GE has not shown—GE cites no evidence that it was “designed to” adhere a
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`BSAS layer to a substrate. Although this panel expressed concern that this
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`construction would require “some undisclosed degree or quality of adherence,”
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`FWD at 9, the extrinsic evidence relied upon by the Federal Circuit provides an
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`objective standard for determining when a layer is “designed to adhere another layer
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`to a substrate.” See United Tech. Corp., 2019 WL 332754, at *1-2. Specifically, a
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`layer “designed to” adhere another layer to a substrate enhances the adherence that
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`would otherwise exist between the other layer and the substrate without the bond
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`layer. In particular, as set forth on pages 41 and 42 of UTC’s POR:
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`[I]t was known that the “adhesion of plasma sprayed ceramic coatings
`to metals is generally poor but can be considerably improved” with an
`appropriate bond coat. UTC-2002, p. 28. . . . In yet another example, a
`publication in the field of ceramics and ceramic matrix composites for
`high temperature applications note[s] that “[c]urrent state-of-the art
`EBC consists of two bond coats (silicon and modified mullite) and a
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`6
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`Case IPR2016-01289
`Docket No. 43498-0002IP1
`top coat … The silicon bond coat provides a further improvement in
`the adherence.” UTC-2021, p. 306 (emphasis added). It has also been
`observed that “EBC durability can also be enhanced by improving the
`adherence through the modification of the mullite bond coat / SiC
`interface … silicon is an excellent bond layer to improve the adherence
`of mullite onto SiC.” GE-1011, p. 4 (emphasis added). “A silicon bond
`layer further improved the EBC durability by providing stronger
`bonding of the coating.” GE-1011, p. 5-6 (emphasis added).
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`Paper 12 at 41-42. Thus, a layer “designed to” adhere another layer to a substrate
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`must at least improve/enhance any adherence that would otherwise exist between
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`the layer(s) above it and the substrate. See id. Eaton describes its own intermediate
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`layer the same way, explaining that its purpose is “to provide enhanced adherence
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`between the barrier layer and the substrate.” Ex. 1006, 2:10-14 (emphasis added).
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`Although GE itself acknowledges this teaching in Eaton, Paper 29 at 5, GE fails to
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`show that Terentieva’s protective coating would enhance adhesion between Eaton’s
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`BSAS layer and a substrate. See generally Paper 29. Accordingly, GE cannot satisfy
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`the construction adopted by the Federal Circuit.
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`For at least the foregoing reasons, the Board should uphold the challenged
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`claims under the Federal Circuit’s construction.
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`7
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`Case IPR2016-01289
`Docket No. 43498-0002IP1
`Respectfully submitted,
`
`
`
`/W. Karl Renner/
`
`W. Karl Renner, Reg. No. 41,265
`Lauren A. Degnan, Reg. No. 40,584
`Timothy W. Riffe, Reg. No. 43,881
`David L. Holt, Reg. No. 65,161
`Attorneys for Patent Owner
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`April 22, 2019
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`
`
`Date:
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`
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (202) 783-5070
`Facsimile: (877) 769-7945
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`
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`CERTIFICATE OF SERVICE
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`Case IPR2016-01289
`Docket No. 43498-0002IP1
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on April 22,
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`2019, a complete and entire copy of this Patent Owner’s Responsive Remand Brief
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`was provided via email, to the Petitioner by serving the email correspondence
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`address of record as follows:
`
`Anish Desai
`Weil Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153-0119
`
`Brian E. Ferguson
`Megan H. Wantland
`Weil Gotshal & Manges LLP
`2001 M Street, NW, Suite 600
`Washington, DC 20006
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`Email: GE.WGM.Service@weil.com
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(202) 626-6420
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