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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`———————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————
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`General Electric Company,
`Petitioner,
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`v.
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`United Technologies Corporation,
`Patent Owner
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`———————
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`Case IPR2016-01289
`Patent 7,060,360 B2
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`———————
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`PETITIONER’S SUPPLEMENTAL BRIEF
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`Pursuant to the Board’s Order Granting Patent Owner’s Request for
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`Supplemental Briefing (Paper No. 20), Petitioner hereby submits the following
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`Supplemental Brief in Support of its Petition for Inter Partes Review of U.S.
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`Patent No. 7,060,360 (“the 360 Patent”).
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`I.
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`Petitioner’s Arguments Regarding Idemitsu
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`The Federal Circuit’s decision in Idemitsu Kosan Co., Ltd. v. SFC Co. Ltd,
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`2017 U.S. App. LEXIS 17856, *12 (Fed. Cir. Sept. 15, 2017) confirms that Patent
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`Owner’s arguments regarding features outside the scope of the claims should be
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`rejected. Patent Owner has argued that addition of an outer environmental barrier
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`layer would “hinder or eliminate” the healing function of the refractory metal
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`disilicide/silicon eutectic bond layer disclosed in Terentieva. As explained by
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`Petitioner, this argument is flawed. Patent Owner asserts that addition of a BSAS
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`EBL/TBC would result in a lower temperature seen by the bond layer, but does so
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`by incorrectly assuming the gas flow temperature would not be increased upon
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`addition of the EBL/TBC. Patent Owner also disregards entirely that Terentieva
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`already contemplates the addition of an outer barrier layer above the refractory
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`metal disilicide/silicon eutectic bond layer. Moreover, while Patent Owner argues
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`that the healing properties would be hindered or eliminated, its expert, Dr. Clarke,
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`offered nothing more than an opinion that lower temperature means higher
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`viscosity. GE-1031 at 49:21-50:8. Indeed, Dr. Clarke was unwilling and unable to
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`1
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`articulate a point at which the healing function would be hindered, let alone
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`eliminated. Id. Nonetheless, even assuming that at the lower temperature example
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`discussed by Dr. Clarke (e.g., 1300 F) the healing properties would be “hindered”
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`because of higher viscosity, Idemitsu confirms that such an argument fails as it
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`neither “relate[s] to [nor is] commensurate in scope with the ultimate claims” of
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`the 360 patent. 2017 U.S. App. LEXIS 17856, at *12.
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`In Idemitsu, there was no dispute that the prior art disclosed the claimed
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`limitations of the patent in question. Id. at *5-6. Instead, the patent owner argued
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`“at least implicitly—that [the prior art] teaches away from non-energy gap
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`combinations.” Id. at *10-11. More specifically, the issue was whether the Board
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`erred in combining the particular prior art compounds in view of the requirement in
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`the prior art that the “HT compound and the ET compound must be selected so
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`that the energy gap of the HT compound is smaller than the energy gap of the ET
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`compound.” Id. at *6. The Board’s decision noted that the claims of the patent
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`under review did “not include any limitations directed to the energy gap
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`characteristics of the individual components or particular performance
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`characteristics of the light emitting layer.” Id. at *8. The Board further explained
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`that “[t]he sufficiency of [the prior art] disclosure to establish the obviousness of
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`the combination does not depend on whether the resulting light emitting layer
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`2
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`would satisfy [the prior art’s] energy gap relationship or the desired stability and
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`heat resistance criteria.” Id. (emphasis in original).
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`The Federal Circuit affirmed the Board’s decision explaining that
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`“[e]vidence concerning whether the prior art teaches away from a given invention
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`must relate to and be commensurate in scope with the ultimate claims at issue.” Id.
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`at *12. The Court further noted that “the claims at issue do not include limitations
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`with respect to half-life or efficiency” and therefore, “poor performance under
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`those criteria…is of substantially reduced importance here.” Id. at *12-13. The
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`Federal Circuit held that “the Board reasonably concluded that [the prior art]
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`teaches that a light-producing device can be made—regardless of comparative
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`shortcomings in durability or resistance caused by imperfect energy gap ratio…”
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`Id. at *14.
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`The facts of the present case are analogous to Idemitsu. There is no dispute
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`that the prior art—Terentieva and Eaton 456—discloses the claimed silicon
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`substrate, refractory metal disilicide/silicon eutectic bond layer, and BSAS
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`environmental barrier layer. There is also undisputed motivation to add the Eaton
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`456 environmental barrier layer to the Terentieva article (i.e., the addition of a
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`BSAS environmental barrier layer is necessary to protect the silica scale from
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`attack in a water vapor environment). Petition at 23-25. The issue, raised by
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`Patent Owner, is whether a POSITA would have understood that the disclosed
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`3
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`healing function in Terentieva discourages or teaches away from the proposed
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`combination. The claims of the 360 Patent, however, include no limitations
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`regarding the temperature at which the claimed article will be exposed, the
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`viscosity of the layers within the claimed article, or any healing properties. GE-
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`1001 at 2:56-4:17. Thus, any purported shortcoming resulting from high viscosity
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`at low temperatures is of “questionable relevance” and “substantially reduced
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`importance” given the scope of the 360 claims. Idemitsu, 2017 U.S. App. LEXIS
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`17856, at *12.
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`II.
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`Petitioner’s Arguments Regarding Southwire
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`The Federal Circuit’s decision in Southwire Co. v. Cerro Wire LLC, 2017
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`U.S. App. LEXIS 17374 (Fed. Cir. Sept. 8, 2017) confirms that the fracture
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`toughness limitation (> 1 MPa·m1/2) of dependent claims 6, 8 and 10 is obvious
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`and that Patent Owner’s argument regarding inherency is irrelevant. In Southwire,
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`the Federal Circuit found that while the Board had “improperly invoked inherency”
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`as to a functional claim limitation regarding pulling force, “[i]t made the necessary
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`underlying factual findings to support an obviousness determination.” Id. at *10.
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`Specifically, the Board found that “[n]one of the patented steps differs in any
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`material way from the process disclosed in [the prior art],” and further, that “there
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`is no evidence that the claimed 30% reduction in pulling force would have been
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`4
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`unexpected or unattainable from the process disclosed in [the prior art].” Id. at
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`*11.
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`In the present case, Petitioner made the requisite factual showing that a
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`POSITA would have expected that a refractory metal disilicide/silicon eutectic
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`bond layer can have a higher fracture toughness than that of a silicon bond layer
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`(i.e., greater than 1 MPa·m1/2). GE-1003 at ¶ 89; GE-1031 at 20:13-21. Like the
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`prior art in Southwire, Terentieva discloses a bond layer that matches all of the
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`compositional requirements in claims 1-5, 7, 9 and 11-14. In other words, the
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`bond layer disclosed in Terentieva is “identical or substantially identical” to that
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`which is disclosed and claimed in the 360 patent.1 Dr. Glaeser’s testimony that one
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`of ordinary skill in the art would have expected that incorporating a refractory
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`metal disilicide, such as MoSi2, would increase the fracture toughness as compared
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`to a silicon layer stands unrebutted. Petition at 33 (citing GE-1003 at ¶¶ 50, 89-
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`90). Thus, Petitioner presented undisputed evidence that the claimed fracture
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`toughness is expected and obvious. Southwire, 2017 U.S. App. LEXIS 17374,
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`*12 (“In the absence of any evidence that the claimed 30% reduction would have
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`been unexpected in light of the [prior art] disclosure, there is no indication that the
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`limitation is anything other than mere quantification of the results of a known
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`process.”).
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`1 The 360 patent does not disclose or limit in any way the process by which the
`claimed layers are formed.
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`5
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`Respectfully submitted,
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`/Anish R. Desai /
`Brian E. Ferguson (Reg. No. 36,801)
`Anish R. Desai (Reg. No. 73,760)
`Megan H. Wantland (Reg. No. 64,423)
`Weil Gotshal & Manges LLP
`1300 Eye Street NW Suite 900
`Washington, DC 20005
`T: 202-682-7000
`E: GE.WGM.Service@weil.com
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`
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`Dated: September 26, 2017
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on September 26, 2017, the foregoing
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`PETITIONER’S SUPPLEMENTAL BRIEF 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
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`AXF-PTAB@fr.com
`PTABInbound@fr.com
`IPR43498-0002IP1@fr.com
`Riffe@fr.com
`Degnan@fr.com
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`
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`/ Timothy J. Andersen /
`Timothy J. Andersen
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`timothy.andersen@weil.com
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`7
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