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,
`
`v.
`
`United Technologies Corporation,
`Patent Owner
`
`———————
`
`Case IPR2016-01289
`Patent 7,060,360 B2
`
`———————
`
`
`PATENT OWNER’S RESPONSIVE SUPPLEMENTAL BRIEFING
`
`
`
`———————
`
`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 SUPPLEMENTAL BRIEFING
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`
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`I.
`
`Case IPR2016-01289
`Docket No. 43498-0002IP1
`Idemitsu Is About Teaching Away, Which Is Inapposite Here
`In Idemitsu, the Patent Owner (PO) argued that the prior art reference taught
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`away from the claimed combination. See Idemitsu Kosan Co. v. SFC Co., 2017 WL
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`4078964, *12 (Fed. Cir. Sept. 15, 2017). In finding no teaching away, the Board
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`and the Federal Circuit both found that the single prior art reference taught each
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`claimed limitation, and their combination. Idemitsu, 2017 WL 4078964, *5, *13-
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`14. There, because the disclosure upon which the PO exclusively relied for its
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`arguments was found to be “separate from” the teaching of the claimed combination,
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`the court found no teaching away. Id. at *13-14. In this manner, Idemitsu is simply
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`another case in the line of jurisprudence in which preferred teachings or
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`embodiments do not “teach away” from broader or non-preferred embodiments.
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`See, e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
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`Unlike in Idemitsu, here, UTC’s arguments do not rely upon the finding of a
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`teaching away in that sense.1 Rather, as GE correctly recognizes in its supplemental
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`1 Even within the peripheral “teaching away” precedent, Idemitsu cannot be read as
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`broadly as GE proposes. See, e.g., DePuy Spine, Inc. v. Medtronic Sofamor
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`Danek, Inc., 567 F. 3d 1314 (Fed. Cir. 2009). In DePuy Spine, the court affirmed a
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`finding of non-obviousness where the primary prior art “warns that rigidity
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`increases the likelihood that the screw will fail within the human body.” Id. at
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`1
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`Case IPR2016-01289
`Docket No. 43498-0002IP1
`briefing, this is a case of lost benefits (e.g., Terentieva’s “guarantee” of continuous
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`healing). See Paper 21 at 1. Although the tradeoff of one benefit for another does
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`not per se nullify a basis for combination, “the benefits, both lost and gained, should
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`be weighed against one another.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
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`1165 (Fed. Cir. 2006) (quoting Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340,
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`1349 n.8 (Fed. Cir. 2000)). “Trade-offs often concern what is feasible, not what is,
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`on balance, desirable. Motivation to combine requires the latter.” Winner, 202 F.3d
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`at 1349 (emphasis added). Here, a POSITA would have weighed a single benefit
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`against several unrebutted costs, and GE—bearing the ultimate burden—fails to
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`provide the factual predicate to appraise this “weighing,” or to demonstrate how the
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`resulting imbalance would have been “desirable.”
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`II.
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`Unlike in Idemitsu, This Case Lacks a Single Prior Art Reference That
`Teaches the Combination, Leaving GE to Prove, “On Balance,” the
`Desirability of Its Combination
`The prior art here does not have the same kind of explicit teaching to combine
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`as in Idemitsu. Specifically, neither reference discloses depositing an EBC/TBC
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`(like the one taught in Eaton ‘456) on top of a healing layer (like the one taught in
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`1326. Although the claims at issue did not recite specific failure rates or rigidity,
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`id. at 1325, this cost was highly probative to how a POSITA would not have been
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`motivated to make the combination, id. at 1327.
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`2
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`Case IPR2016-01289
`Docket No. 43498-0002IP1
`Terentieva). See Paper 21 at 3 (summarizing that the prior art teaches the claimed
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`elements in isolation). Even under GE’s attempted characterization of the
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`combination as a deposition of an EBC/TBC on any generic “molybdenum-silicon
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`alloy,” the combination is not taught. See GE-1003, ¶ 56. Dr. Glaeser and GE
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`conveniently used an ellipsis to omit that Eaton ’456 explicitly requires the
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`EBC/TBC to be deposited on alloys “having a coefficient of thermal expansion
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`compatible with the barrier layer of the present invention.” GE-1006, 3:2-7. Yet,
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`the record contains simply no objective evidence that the healing layer of Terentieva
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`has “a coefficient of thermal expansion compatible with the [Eaton ‘456] barrier
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`layer” GE seeks to deposit thereon, nor would this have been obvious. See UTC-
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`2001, ¶¶ 111-112; UTC-2013, ¶¶ 13-18, see also Response at 34-37.
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`Without the required teaching to combine, GE bears the burden to prove that,
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`“on balance,” a POSITA would have found the tradeoffs of its proposed combination
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`“desirable.” See Winner, F.3d 1340 at 1349. In its Petition, GE identified a single
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`potential benefit of its proposed combination: protection from attack in a water vapor
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`environment. See Paper 21 at 3. In response, UTC offered uncontroverted evidence
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`that Terentieva fails in its primary objective (“guarantee[ing]” continuous healing)
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`if combined in the manner GE proposes. See UTC-2013, ¶¶ 37-48. This evidence
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`is another sharp distinction from Idemitsu, where PO provided no expert testimony
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`or corroborative evidence for its arguments. Idemitsu, 2017 WL 4078964, *12.
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`3
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`Case IPR2016-01289
`Docket No. 43498-0002IP1
`Specifically, in contrast to Idemitsu, Dr. Clarke offers an example of how
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`GE’s combination hinders or destroys healing within Terentieva’s coating at 1300ºC,
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`a temperature within the relevant operating range identified by Terentieva. See
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`UTC-2013, ¶¶ 32, 48; see also GE-1005, 4:35-37. Relying upon this example and
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`his experience, Dr. Clarke concluded it unreasonable for a POSITA to expect that
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`the coating could achieve its primary benefit of guaranteeing continuous healing.
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`See UTC-2013, ¶ 48. Adding to this benefit loss, Dr. Clarke identified a number of
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`other costs weighing against the combination (e.g., increased stress and unknown
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`compatibility). See UTC-2001, ¶¶ 100-102 (stress), 111-114 (compatibility).
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`In reply, GE offers no new evidence. Indeed, GE does not even contest Dr.
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`Clarke’s calculations as inaccurate at this relevant temperature. As such, GE tacitly
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`admits the uncertainty of its proposed combination within the temperature range of
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`interest that was noted by Terentieva (i.e., at/around 1300ºC, at the least). Instead,
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`GE merely suggests (exclusively through attorney argument) that some level of
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`healing might still exist at other temperatures. And GE’s attorneys contend that
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`temperatures could otherwise simply be raised within an engine that is already
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`operating above the melting point of many of its components. Not only are these
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`arguments divorced from Terentieva’s “guarantee” of continuous healing, but GE
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`never actually analyzes—at any temperature—the effect of its combination on
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`Terentieva’s “guarantee,” much less a POSITA’s ability to successfully raise
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`4
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`Case IPR2016-01289
`Docket No. 43498-0002IP1
`temperatures and effects thereof. Tellingly, Dr. Glaeser’s initial conclusions on
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`obviousness are devoid of such evidence, as he admitted he failed to consider the
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`effect on healing at any temperature. UTC-2014, 61:9-22, 71:18-15, 78:16-20.
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`Thus, Dr. Glaeser’s opinions regarding the combination lack a weighing of
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`the costs and benefits required by Medichem and Winner. Indeed, the only evidence
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`of record that acknowledges GE’s single identified benefit (see UTC-2013, ¶ 83) and
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`weighs it against the plethora of costs is Dr. Clarke’s declaration, and he found that
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`“[a] POSITA would not have been motivated to make this combination of layers”
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`(UTC-2013, ¶ 42). As a result, the evidence demonstrates that GE has simply failed
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`to establish a prima facie case of obviousness.
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`III.
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`Southwire Is Also Inapposite
`GE concedes that its invalidity arguments are based on obviousness, not
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`inherency. Paper 21 at 4. Southwire’s holdings on obviousness relate to the
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`“quantification of the results of a known process,” which the claims here lack.
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`Southwire Co. v. Cerro Wire LLC, 2017 WL 3927195, *9 (Fed. Cir. Sept. 8, 2017).
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`Southwire does not speak to article claims—nor could it, as articles produced by
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`varying processes may have very different properties depending on the manner in
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`which they are produced. Here, GE presented only evidence regarding MoSi2, which
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`Dr. Glaeser failed to link to Terentieva’s coating and which Dr. Clarke confirms is
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`not an accurate predictor of properties thereof. UTC-2013, ¶¶ 13-18.
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`
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`5
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`
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`Case IPR2016-01289
`Docket No. 43498-0002IP1
`Respectfully submitted,
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`/W. Karl Renner/
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`W. Karl Renner, Reg. No. 41,265
`Lauren A. Degnan, Reg. No. 40,584
`Timothy W. Riffe, Reg. No. 43,881
`Attorneys for Patent Owner
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`Date: October 3, 2017
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (202) 783-5070
`Facsimile: (877) 769-7945
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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 October 3,
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`2017, a complete and entire copy of this Patent Owner’s Responsive Supplemental
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`Briefing was provided via email, to the Petitioner by serving the email
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`correspondence address of record as follows:
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`Anish Desai
`Brian E. Ferguson
`Megan H. Wantland
`Weil Gotshal & Manges LLP
`1300 Eye Street, NW, Suite 900
`Washington, DC 20005
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`Email: GE.360.IPR@weil.com
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`/Susan Johnson/
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`Susan Johnson
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(214) 292-4086
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