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 REPLY 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 REPLY BRIEF ON REMAND
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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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`GE R. Br.
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`UTC R. Br.
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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,
`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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`Petitioner’s Brief on Remand, filed April 15, 2019 (Paper 29)
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`Patent Owner’s Brief on Remand, filed April 22, 2019
`(Paper 30)
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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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`Between the 360 Patent and Terentieva, only the latter describes its
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`intermediate layer as having adherent properties. Terentieva explicitly states that
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`its coating layer (corresponding to the claimed “bond layer”) was designed to be
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`adherent: the “heat treatment comprises a first step under vacuum enabling the
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`desired protective coating to be formed and enabling the coating to adhere to the
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`surface of the material to be protected….” Ex. 1005, col. 4:30-33 [cited in Pet. at
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`19-20; Reply at 21]. Terentieva also teaches that another layer may be formed on
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`top of the coating layer, and a POSITA would readily understand that in that
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`instance the intermediate coating layer would adhere to both the substrate and the
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`top layer. GE R. Br. at 3-4, citing, inter alia, Glaeser Decl., ¶¶ 45-49, 51, 54-57.
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`During prosecution the Examiner drew the same conclusion, which UTC never
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`disputed. Ex. 1002.032 (“The layer of Terentieva serves as an intermediate layer
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`when the outer layer is present, and is therefore considered to effectively function
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`as a bond layer.”) [cited in Reply at 19]. The evidence confirms that Terentieva’s
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`coating layer meets the Federal Circuit’s construction for “bond layer.”
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`ARGUMENT
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`UTC’s arguments on remand are without merit. UTC effectively asserts that
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`there must be a statement in Terentieva that its coating layer is designed to directly
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`adhere Eaton’s BSAS layer to Terentieva’s substrate. That is not what the Federal
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`Circuit’s claim construction requires. UTC v. GE, 2019 WL 332754, *2 (Fed. Cir.
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`Jan. 25, 2019) (construing bond layer as “a layer of material designed to adhere
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`another layer to a substrate”). All GE needs to show is that Terentieva’s coating
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`layer is designed to adhere “another layer” to a substrate. Terentieva’s outer layer
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`(e.g., silica, alumina, zirconia glass, or a non-oxide ceramic such as silicon
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`carbide) is “another layer” that the coating layer adheres to the substrate. GE R.
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`Br. at 3-4; see Reply at 21. The claim language and specification specifically
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`allow for additional intermediate layers between the bond layer and substrate, and
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`the bond layer and EBL layer. Ex. 1001, col. 1:26-29; 2:12-17; claim 1 (using the
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`open-ended “comprising” term).
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`Even under UTC’s improper attempt to re-cast its own construction that it
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`obtained at the Federal Circuit, a POSITA would understand that Terentieva’s
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`coating layer adheres to Eaton’s BSAS layer:
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`• Terentieva’s coating layer was specifically designed via a heat treatment
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`process to be adherent. Ex. 1005, col. 4:30-33. Terentieva’s examples confirmed
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`the adherent properties of the coating layer. Id., col. 4:53-57; col. 5:50-53 [cited in
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`Reply at 21, Pet. at 31]; see GE R. Br. at 3-4;
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`• Eaton teaches that the BSAS layer is compatible with an “intermediate”
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`layer between the substrate and the BSAS layer, whereby the intermediate layer
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`“serve(s) to provide enhanced adhesion between the [BSAS] layer and the
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`substrate…” Ex. 1006, col. 3:58-63 [cited in Pet. at 21]; and
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`2
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`• Eaton teaches that the BSAS layer is “particularly useful” when it is
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`overlaid on a “molybdenum-silicon” alloy layer, id., col. 3:2-6, and Terentieva’s
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`coating layer (TiMoSi2) is a type of molybdenum-silicon alloy. See Glaeser Decl.,
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`¶¶ 45-49, 51, 54-57 [cited in Pet. at 28-29; Reply at 2, 9, 17]. A POSITA would
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`recognize that Terentieva’s coating layer, acting as an intermediate layer, would
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`adhere to Eaton’s BSAS layer, and thereby adhere the BSAS layer to the substrate.
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`Id.; see Ex. 1006, col. 3:58-63 (noting that an intermediate layer provides
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`“enhanced adhesion between the barrier layer and the substrate”).
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`UTC’s response is that the presence of titanium in Terentieva’s coating layer
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`“may” (not “will”) alter the properties of the coating layer, including the layer’s
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`CTE, which UTC infers may result in decreased adherence. UTC R. Br. at 4-5
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`(citing Dr. Clarke’s declaration). This argument fails.
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`First, the 360 Patent refutes this argument, as it discloses and claims a bond
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`layer that includes TiMoSi2 (exactly as Terentieva discloses) in between a substrate
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`and a BSAS layer (exactly as Eaton discloses). The 360 Patent identifies no
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`concerns with mismatched CTEs or incompatibilities when using this (or any of
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`the claimed) combinations. GE R. Br. at 7 (citing In re Epstein, 32 F.3d 1559, 1568
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`(Fed. Cir. 1994)). UTC acknowledges the evidence showing that MoSi2 layers
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`readily bonded with aluminosilicates like BSAS (UTC R. Br. at 4; GE R. Br. at 4-
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`5), but suggests that TiMoSi2 may not have such strong bonding properties. The
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`3
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`problem for UTC is that the bond layer of claim 1 covers both. Whether one may
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`be more adherent or otherwise “better” than the other is simply irrelevant.
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`Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1347 (Fed.
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`Cir. 2008). UTC chose to write the claims it did, and it cannot now argue that
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`certain compositions for the bond layer are within the scope of the claims and
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`others are not, based on an adhesion quality lacking any quantitative scope. To the
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`extent that UTC’s argument is directed to the obviousness combination, the Board
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`already found that the evidence shows a motivation to combine Terentieva and
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`Eaton with a reasonable expectation of success. FWD at 11-20; see Pfizer v.
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`Apotex, 480 F.3d 1348, 1364 (Fed. Cir. 2007) (“[O]nly a reasonable expectation of
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`success, not a guarantee, is needed.”).
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`Second, a POSITA would expect the CTEs of Terentieva’s coating layer and
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`Eaton’s BSAS layer to be compatible. Eaton teaches that the BSAS layer and a
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`MoSi alloy layer have compatible CTEs. Ex. 1006, col. 3:2-7. The CTE of BSAS
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`also overlaps with the known CTEs of combinations of silicon and MoSi2. Glaeser
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`Decl., ¶ 57. UTC’s expert confirmed that a POSITA would know that the CTE of
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`a refractory metal disilicide (which encompasses TiMoSi2) is “tuned” up or down
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`by changing the amount of silicon. Ex. 1031 at 46:1-9 [cited in Reply at 12]. And
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`the CTEs of MoSi2 and Ti are approximately the same, confirming that TiMoSi2
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`would have approximately the same CTE as MoSi2. Ex. 1016.007; Glaeser Decl.,
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`4
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`¶¶ 54-57 [cited in Pet. at 28-29]. A POSITA would thus expect that the CTEs of
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`Terentieva’s coating layer and Eaton’s BSAS layer are compatible.
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`Regarding UTC’s “designed to” argument, the Court did not adopt UTC’s
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`argument that a bond layer is only such if it “improves” or “enhances” existing
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`adherence. UTC R. Br. at 6-7. The evidence cited by the Court only states that the
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`bond layer has “an adherence quality.” 2019 WL 332754 at *2. The 360 Patent
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`contains no suggestion that the “bond layer” was designed to “enhance” adhesion
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`between the outer layer and the substrate. Ex. 1001, col. 1:61-66 (stating only that
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`the bond layer’s purpose was to increase the layer’s fracture toughness).
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`Terentieva, in contrast, specifically identifies that the coating layer was designed to
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`be adherent. Ex. 1005, col. 4:30-33. This point coupled with the undisputed fact
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`that Terentieva’s coating layer composition (TiMoSi2) falls within the composition
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`of the claimed “bond layer” leaves UTC no room to argue that the Federal
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`Circuit’s construction requires some unspecified “improved”/“enhanced” adhesion.
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`In re Spada, 911 F.2d 705, 708-09 (Fed. Cir. 1990) (“Products of identical
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`chemical composition can not have mutually exclusive properties…. [C]laimed
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`compositions [that] are not novel … are not rendered patentable by recitation of
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`properties, whether or not these properties are shown or suggested in the prior
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`art.”). The claimed “bond layer” is “designed to adhere another layer to a
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`substrate,” just like Terentieva’s chemically-identical coating layer.
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`5
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`Dated: May 8, 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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`6
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on May 8, 2019, the foregoing
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`PETITIONER’S REPLY BRIEF ON REMAND was served via electronic mail,
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`upon the 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
`IPR43498-0002IP1@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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