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
`Technology Center 3900
`____________
`
`Record of Oral Hearing
`Held: September 18, 2017
`____________
`
`
`
`
`Before GRACE K. OBERMANN, CHRISTOPHER M. KAISER, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`
`

`

`Case IPR2016 01289
`Patent 7,060,360 B2
`
`
`
`
`APPEARANCES:
`
`ON BEHALF OF PETITIONER:
`
`
`ANISH DESAI, ESQUIRE
`Weil, Gotshal, and Manges, LLP
`767 Fifth Avenue
`New York, New York 10153
`(212) 310-8730
`
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`LAUREN A. DEGNAN, ESQUIRE
`W. KARL RENNER, ESQUIRE
`Fish and Richardson, PC
`The McPherson Building
`901 15th Street Northwest
`Suite 700
`Washington, D.C. 20005
`(202) 626-6392
`
`
`
`
`The above-entitled matter came on for hearing on Monday, September
`
`18, 2017, commencing at 1:00 p.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`2
`
`

`

`Case IPR2016 01289
`Patent 7,060,360 B2
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE OBERMANN: Please be seated.
`JUDGE OBERMANN: Great, there we are. This is a final hearing in
`IPR2016-01289, General Electric Company versus United Technologies
`Corporation. The patent at issue is 7,060,360. I'm Judge Obermann, and to
`the right, we have Judge Michelle Ankenbrand. Appearing remotely from
`Denver today we have on the screen Judge Christopher Kaiser. I'd like to
`start with appearances. Who do we have appearing for Petitioner today?
`MR. DESAI: Anish Desai, on behalf of Petitioner.
`JUDGE OBERMANN: Hello, Mr. Desai, will both of you be
`delivering argument or just one of you?
`MR. DESAI: Just me.
`JUDGE OBERMANN: Okay. Thank you, and who do we have for
`Patent Owner?
`MR. RENNER: Karl Renner, Your Honor.
`JUDGE OBERMANN: Hello, Mr. Renner.
`MS. DEGNAN: Lauren Degnan.
`JUDGE OBERMANN: Hello, Lauren, nice to see you today.
`MR. RENNER: Also representatives from Batton Whitney, Your
`Honor, are with us, Troy Prince and
`Janice Jabioo.
`JUDGE OBERMANN: Okay. Welcome, thank you. And Mr.
`Renner, will you be delivering argument or will both of you?
`MR. RENNER: Ms. Degnan will, thank you.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`3
`
`

`

`Case IPR2016 01289
`Patent 7,060,360 B2
`
`
`JUDGE OBERMANN: Thank you very much. Okay. Because we
`have -- especially because we have Judge Kaiser appearing remotely I'll ask
`that when you refer to a demonstrative, please refer to the slide number. We
`did receive your transmissions last week so we have them available to us on
`the computer. But it would be very helpful though for the transcript and also
`for Judge Kaiser if you could refer to the slide before you begin speaking.
`Each party will have 45 minutes of total time to present arguments.
`Petitioner bears the burden of proof and will go first, and may reserve
`rebuttal time if you'd like. Patent Owner will then go and you can use your
`entire 45 minutes and after that Petitioner will use any rebuttal time that's
`been reserved. I'm going to use the clock on the wall to time you all. And
`we received no objections to the demonstrative exhibits, so both sides agree
`to use them all, thank you very much for that. Mr. Desai, I'm going to start
`the clock and when you're ready to begin you may. First I need to know,
`would you like to reserve any time for rebuttal?
`MR. DESAI: I think I'll reserve about ten minutes.
`JUDGE OBERMANN: Ten minutes?
`MR. DESAI: Yes.
`JUDGE OBERMANN: So, I'm going to set the clock for 35 minutes,
`and I'll start it when you begin speaking.
`MR. DESAI: Good afternoon, Your Honors. The '360 patent is
`directed to an article that comprises a silicon-based substrate, a bond layer
`comprising of a refractory metal disilicide/silicon eutectic, and an
`environmental barrier there selected from an alkaline earth aluminosilicate
`based on barium and strontium, which has been referred to in the briefs as
`BSAS or yttrium silicate. Petitioner believes that it has shown by a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`4
`
`

`

`Case IPR2016 01289
`Patent 7,060,360 B2
`
`preponderance of the evidence in its briefs that this combination of layers
`would have been obvious to a person of ordinary skill in the art as of the
`May 2013 filing date of the '360 patent. As set forth in our briefs, the '360
`claims are directed to the application of a known technique using an
`environmental barrier layer, which I'll use shortly, an EBL, to a known
`article which is the refractory metal disilicide material disclosed in the
`Terentieva reference to yield a predictable result, which is protection of
`silicon containing materials in the Terentieva article from water vapor
`attack.
`Before I walk through some of the undisputed evidence and
`motivation to combine and reasonable expectation of success, in this
`particular case the overview of the prosecution history as well as the prior art
`that the examiner didn't consider will really show us how narrow the issue is
`before the Board today.
`So, I'll start with slide 2 here, and what I have here is the first -- in the
`top left corner is the original claim and what that covered was a silicon
`substrate and a bond layer. The bond layer comprising an alloy refractory
`metal disilicide/silicon eutectic. That claim was found to be anticipated by
`the Terentieva reference, this is in the file history. After the office action
`finding anticipation, Patent Owner did not contest that anticipation, and
`instead amended claim 1. Claim 1 was amended to require an additional
`layer, a barrier layer, between the substrate -- sorry, the barrier layer above
`the bond layer, and that's shown on the right. Figure at the bottom, the
`bottom right, and again, this claim was deemed anticipated by the Terentieva
`reference. And again, Patent Owner did not contest this anticipation finding.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`5
`
`

`

`Case IPR2016 01289
`Patent 7,060,360 B2
`
`
`I'm on slide 3 now, so, next what happened was, the claim was again
`amended, and this time the claim was amended to require an environmental
`barrier layer made of a particular substance, which was BSAS or yttrium
`silicate. On this basis the claim was allowed over Terentieva.
`Now, oddly, the addition -- and I'm on slide 4 now -- the additional of
`BSAS or yttrium silicate as the EBL does not come from the summary of the
`invention or the detailed description of the invention in the '360 patent which
`is a very short patent, it's two full columns. It, in fact, comes from the
`background. This is the only description of the '360 patent of an
`environmental barrier layer and it's at column 1, lines 19 to 26, and what it
`tells you here is that the BSAS or yttrium silicate EBL comes from the prior
`art. Now, we agree with the examiner that Terentieva does not anticipate the
`current claims, but the examiner did not substantively address the
`obviousness of an EBL or the prior art that demonstrates this obviousness,
`and that's the subject this IPR.
`JUDGE OBERMANN: Is there any difference between what you call
`the admitted prior art and the Eaton reference that's before us?
`MR. DESAI: There is, the Eaton reference includes more than what is
`stated in the admitted prior art here in column 1. In fact, it provides more
`information about the preferred type of barrier layer, information about the
`motivations to use it and why it's being used, and it also provides
`information about what BSAS will be compatible with, which is not found
`in column 1 of the patent, so there is a difference. And our ground is based
`on Terentieva in combination with Eaton, at least the first ground.
`So, that brings me to the prior art that was not considered by the
`examiner which is the first one, it's Eaton '456, that's GE-10006. And there
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`6
`
`

`

`Case IPR2016 01289
`Patent 7,060,360 B2
`
`are some key disclosures in Eaton that I'll go through, but among them are
`what's shown here on slide 5, and the first is that the protective
`environmental barrier, a thermal barrier, is used for the purposes of
`protecting the article when it's exposed to a high temperature, aqueous
`environment. That's the key, water or steam, right, that's the purpose of
`Eaton's environmental thermal barrier coating, and here it also tells you that
`the preferred barrier coating is BSAS.
`On slide 6, there's additional prior art that was also not considered by
`the examiner and this goes to the motivation for using an EBL. This is on
`slide 6, this is GE-1011, which is a paper titled, "Current Status of
`Environmental Barrier Coatings for Si-Based Ceramics." This is a 2000
`paper and the key here on page 1 is it talks about in the late '80s and early
`1990s there was a focus on protection from hot corrosion, oxidation in an
`oxygen environment. But later the focus shifted to water vapor issues, and
`there that's where the development of EBLs came into play. And the
`distinction here being hot corrosion versus water vapor, okay. And here,
`what GE-1011 tells us in clear terms that the environmental barrier coating
`was necessary when protection for water vapor was needed.
`Moving on to slide 7, this is yet another prior art reference that was
`not considered by the examiner. This also goes to the motivation to use an
`EBL, this is GE-1014, and it's a 2001 paper titled, "Environmental Barrier
`Coatings for Silicon-Based Ceramics," and again here the focus is on how
`do we protect the silica scale from water vapor attack. Here we go, the
`motivation that EBC is a logical approach, they are an absolute necessity for
`the protection of Si-based ceramics. Now, Patent Owner and its expert, Dr.
`Clark, ignore these additional references, okay. Dr. Clark really has
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`7
`
`

`

`Case IPR2016 01289
`Patent 7,060,360 B2
`
`absolutely nothing to say about Eaton '456, GE-1011, GE-1014, or any of
`the other references that demonstrates the obviousness of using an EBL.
`Another way of thinking about this is that Patent Owner and Dr. Clark
`want to pretend that the universe of prior art is limited to Terentieva.
`JUDGE OBERMANN: I just want to make clear, where did you cite
`these in your petition?
`MR. DESAI: These are referred to in the petition in ground 1, where
`we're discussing the obviousness of...
`JUDGE OBERMANN: Did you discuss them in the petition?
`MR. DESAI: They are discussed in the petition.
`JUDGE OBERMANN: Can you point me to the page?
`MR. DESAI: One moment. Eaton '456, for example, is discussed at
`page 20, and then starting at page 23 and 24 of the petition is where these
`other references are discussed with respect to the obviousness in using an
`EBL. Another way of thinking about Patent Owner and Dr. Clark is that
`they're suggesting that the prior art universe consists of Terentieva, and we
`can certainly start with Terentieva because that's the primary reference at
`issue. But the law tells us that we can't ignore the published developments
`in the field, in the eight years between Terentieva and the '360 patent. So,
`I'll start with Terentieva, this is slide 8, and it really is undisputed that it
`discloses the refractory metal disilicide/Silicon eutectic layer on a
`silicon-based substrate. As I mentioned during prosecution, this was
`admitted by Patent Owner by amending the claims and sort of agreeing with
`the anticipation of the earlier filed claims. It's also undisputed that
`Terentieva disclosed the limitations of dependent claims 2 through 5, 7, 9,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`8
`
`

`

`Case IPR2016 01289
`Patent 7,060,360 B2
`
`and 11 through 14, there's no dispute from Patent Owner on those issue. I'll
`come back and discuss the dispute of dependent claims 6, 8, and 10 later.
`So, when it comes to the motivation to add an EBL, this is where the
`analysis really starts. This is what -- from Dr. Glaeser's declaration that was
`submitted with the petition. This is paragraph 73, and he talks about how
`Terentieva discloses that there's a surface oxide film comprising the silica
`and he says here, it's vulnerable to the same attack and degradation by water
`vapor. So, this is also undisputed, Dr. Clark does not dispute the opinions
`that are set forth here in paragraph 73. Dr. Glaeser's declaration that
`Terentieva discloses a surface oxide film, and that it is vulnerable to water
`vapor attack.
`Moving to slide 10, this is still paragraph 73 of Dr. Glaeser's
`declaration, and what he tells us here is that based on these variety of
`references the addition of a protective layer to protect that silica film is
`necessary, okay, and that's based on these prior art references. It's not
`conclusive expert testimony, he cites a plethora of publications to support
`that and, again, this is not disputed by Dr. Clark.
`And finally, we get to paragraph 74, this is Dr. Glaeser's declaration
`as well and we now know that there is a need to protect the surface oxide
`film in Terentieva, and his opinion here is that a person of ordinary skill in
`the art would go to the use of a known preferred EBL to do that. It says,
`barium strontium was known to delay the onset of accelerated oxidation in
`water vapor by a factor of at least two. A person of ordinary skill in the art
`would have been motivated to use a known barrier layer selected from those
`disclosed in the prior art --
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`9
`
`

`

`Case IPR2016 01289
`Patent 7,060,360 B2
`
`
`JUDGE OBERMANN: Now, here he's talking about the corrosion of
`the disilicide, not the oxidation of the underlying substrate?
`MR. DESAI: That's right, he's talking about water vapor attacking the
`surface oxide film.
`JUDGE OBERMANN: And that's what accelerated oxidation by
`water vapor is?
`MR. DESAI: Yes, that's water vapor --
`JUDGE OBERMANN: So, oxidation and corrosion would be the
`same thing?
`MR. DESAI: Well, I think the issue is oxidation is not the same thing
`as water vapor attack.
`JUDGE OBERMANN: So, where does it say onset of accelerated
`oxidation is talking about the disilicide?
`MR. DESAI: Oxidation can occur without water vapor and in a pure
`oxygen environment you can have oxidation, that's kind of a growth. Water
`vapor attack is a degradation because you have, as disclosed here -- let me
`find the right slide -- it's slide 5 and this is an example of GE-1006 as Eaton
`where it says you have a barrier layer which inhibits the formation of
`gaseous species of Si when the article is exposed to a high temperature,
`aqueous environment. This is not just hot oxidation, this is in a water vapor
`environment. You have a degradation of the material because of an
`interaction between the water and the silica film. So, we know BSAS is a
`preferred and known and successful way of protecting silica scale from
`water vapor attack and that's the motivation to use BSAS.
`So, then the question becomes do we have a reasonable expectation of
`success combining BSAS and the refractory metal disilicide/silicon eutectic
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`10
`
`

`

`Case IPR2016 01289
`Patent 7,060,360 B2
`
`undisclosed in Terentieva and the answer is, yes. This is paragraph 56 of Dr.
`Glaeser's declaration and here is a specific prior art reference that discloses
`that BSAS can be combined and in fact should be combined with
`silicon-metal alloys. Particularly useful silicon-metal alloys for use as
`substrates for the article of the present invention including
`molybdenum-silicon alloys. This is from Eaton talking about where you can
`put BSAS, what you can put BSAS on top of. It's undisputed that the
`refractory metal disilicide is disclosed in Terentieva is a silicon-metal alloy.
`It's also a silicon-molybdenum alloy, but it also had titanium. In other
`words, it falls within the category of alloys that Eaton discloses you can
`place BSAS on top of. And this is Dr. Glaeser's testimony explaining how
`that would provide a person of ordinary skill in the art with a reasonable
`expectation of success. Again, this paragraph, this aspect of Eaton is not
`contested by Dr. Clark. So, that is effectively a prima facie case of
`obviousness, the motivation to use BSAS and the reasonable expectation of
`success.
`There is obviously more in the petition but I want to address the
`arguments that have been raised by Patent Owner. The first of which is that
`Terentieva's healing function would be hindered or destroyed by placing a
`layer of BSAS on top of a refractory metal disilicide. The premise here is
`that the healing function is based on viscosity if you add a layer on top. If
`you lower the temperature, the lower the temperature the higher the
`viscosity, the less healing, okay. But there are multiple flaws in Patent
`Owner's argument. The first is the notion that adding an EBL would lower
`the temperature seen by the healing layer underneath the EBL. Dr. Clark
`assumed that if you add an EBL the temperature seen by the healing layer
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`11
`
`

`

`Case IPR2016 01289
`Patent 7,060,360 B2
`
`would be lower than it was without EBL. This is a false anticipation, okay,
`and I asked Dr. Clark -- well, sorry, it's not a reasonable assumption because
`it ignores the fact that the purpose of adding EBL, the thermal barrier
`coating, is you can raise the gas flow temperature, okay. So, you're actually
`not going to see a net decrease in the temperature that the healing layer
`would see otherwise.
`So, I asked Dr. Clark at the deposition, this is slide 15, you don't
`examine in your declaration when discussing the healing function use of a
`thermal barrier coating which the gas flow temperature is actually increased.
`He goes, I could have opined on that too, but no, I didn't. Well, he didn't do
`that because it conflicts with his opinion that adding EBL hinders or
`destroys the healing function, because his opinion is based on the
`assumption that adding the EBL lowers the temperature that would
`otherwise be seen by the healing layer, and he should have explained the
`problem with his opinion because on slide 16, this is the paper that Dr. Clark
`wrote prior to this IPR about thermal barrier coatings and it says, "the TBC
`allows the turbine designer to increase the gas flow temperature."
`So, you don't keep the gas -- you don't add the barrier layer and keep
`the gas flow temperature the same as it was before you put the barrier layer
`on and then you increase the gas flow temperature so you can get more
`efficiency out of your turbine, that's the point. And he didn't address this in
`his opinion because it undercuts his theory about the healing function being
`hindered.
`Now, there's also another flaw in Dr. Clark's opinion about the healing
`function and that is it's entirely speculative. In contrast to what I showed
`you on slide 14, which is paragraph 42 of Dr. Clark's supplemental
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`12
`
`

`

`Case IPR2016 01289
`Patent 7,060,360 B2
`
`declaration where he says, adding the barrier layer would hinder or destroy.
`On slide 17 we asked him, well, at what temperature would you arrive or be
`at the hindered healing function. I don't think we can say that, he says. I
`can't give you any real opinion other than the lower the temperature, the
`lower the viscosity. So, he actually doesn't have a real opinion as to what
`temperature would cause the healing function to be hindered. And the
`speculative nature of his opinion becomes even more clear when you look at
`the example temperature that Dr. Clark examined in his declaration. This is
`slide 18 and in paragraph 48 on the left side, this is the only example in his
`declaration he used what would cause hindered healing function, and he
`used 1300 degrees C as the starting temperature and then he assumed the 71
`degrees drop, and he said at that temperature gap is where I guess you would
`be 1229, you would see a reduction of viscosity by a factor of 13. But where
`did he get the 1300 C from, it didn't come from Terentieva because when he
`asked him in his deposition, what are the temperatures of the examples in
`Terentieva that have the surface temperature, they were significantly higher
`than 1300 degrees. So, in other words, he didn't examine his opinion about
`hindered healing function based on a temperature that the materials in
`Terentieva are actually exposed to. You can see if you look at examples one
`and two in the Terentieva reference that they're exposed to surface
`temperature. The surface temperature of the healing layer is 1675,
`significantly hotter than the 1300, where he says there would be a reduced
`factor of 13 in viscosity. I would like to make one more additional point
`about this healing function issue and it claims -- the issue of the healing
`function being an issue when the temperature is lowered is really -- has little
`relevance to this case because the claims of the '360 patent don't specify any
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`13
`
`

`

`Case IPR2016 01289
`Patent 7,060,360 B2
`
`operating temperatures, don't specify an environment, and there was a recent
`decision last week in the Federal Circuit in Idemitsu Kosan versus SSC
`Company, and that was case number 16-2721, and this case confirms that
`the suitability of a combination, whether there is teaching a way in the prior
`art or some sort of inoperability must be about the claimed invention, and it
`said, while a prior art reference may indicate that a particular combination is
`undesirable for its own purposes, the reference can nevertheless teach the
`combination if it remains suitable for the claimed invention.
`Here, it is undisputed the claims at issue do not include limitations
`with respect to half-life or efficiency, similar to these claim. These claims
`include no temperature requirements, they include no healing function
`requirements, so as a general matter the arguments made by Patent Owner
`about hindered healing function as lower temperatures are of questionable
`relevance because those are not even limitations of the claim.
`The next argument that Patent Owner makes about motivation to use
`an EBL is that adding an EBL would be redundant to what already exists in
`the Terentieva coding and the issue here confusing hot oxidation with
`protection from water vapor attack. On slide 21 what we have is Eaton '456,
`and I've shown you this already, this is GE-1006, column 1, lines 14 to 20,
`and here are the purposes of the Eaton '456 thermal barrier layer,
`environmental barrier layer, that we're adding is to protect from water vapor
`attack, that is the purpose of that addition. Now, we know that's not
`redundant of Terentieva because during prosecution, and this is on the right
`side, Patent Owner told the Patent Office that Terentieva Patent does not
`discuss nor does it recognize the issue of accelerated oxidation of silica and
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`14
`
`

`

`Case IPR2016 01289
`Patent 7,060,360 B2
`
`silica formers in a high-steam environments, okay. That at GE-1002.041.
`So --
`
`JUDGE OBERMANN: And you cited that in your reply brief?
`MR. DESAI: I believe we cited this in or briefs, at least -- it may be
`in the petition where we talked about the prosecutions.
`JUDGE OBERMANN: Okay. If you didn't cite it to us in one of
`your papers we really can't look at it here.
`MR. DESAI: I believe it is cited in the petition for the proposition
`that Terentieva does not discuss or recognize the issue of oxidation of silica
`in high-steam environments. Nonetheless, the point was made in the petition
`that Terentieva does not recognize that and it does not disclose anywhere in
`the Terentieva Patent that it already considers protection from water vapor
`and has a layer that protects from water vapor attack. That is what is
`provided by the addition of EBL that we're proposing at add.
`The next argument that Patent Owner raises is that the additional
`thickness of an EBL would dissuade a POSITA from adding a layer. First,
`we already know that the Terentieva reference tells us that the EBL is a
`necessity to protect from water vapor attack. That evidence is undisputed,
`that it's a necessity to add an EBL to protect from water vapor attack.
`Second, Terentieva already contemplates the addition of an optional layer.
`So, adding thickness is something that Terentieva contemplates as a
`possibility. This is on --
`JUDGE OBERMANN: And that extra option layer in Terentieva, that
`was a barrier layer, it just wasn't this particular type of barrier layer?
`MR. DESAI: Exactly, and that's why during prosecution the examiner
`found the claims which were just specified as barrier layer to be anticipated.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`15
`
`

`

`Case IPR2016 01289
`Patent 7,060,360 B2
`
`
`JUDGE OBERMANN: So, that's why it's really not redundant. I
`mean, Terentieva itself disclosed the barrier layer for this particular purpose
`to protect against corrosion from water vapor?
`MR. DESAI: It does not.
`JUDGE OBERMANN: It does not?
`MR. DESAI: It does not. It disclosed an optional refractory layer, it
`does not state the purpose of it.
`JUDGE OBERMANN: But you've given us evidence to show that the
`purpose would have been the same, as a barrier layer, have you not?
`MR. DESAI: Well, I think the issue is an environmental barrier layer
`means specifically protection from, in this art, means protection from water
`vapor attack.
`JUDGE OBERMANN: Okay.
`MR. DESAI: So, the Petitioner's argument and position is that
`Terentieva does not disclose an environmental barrier layer.
`JUDGE OBERMANN: Okay. But there are other reasons that you
`would put a barrier layer on, and you just don't know what they are because
`Terentieva doesn't tell us?
`MR. DESAI: Right, but it certainly doesn't address the water vapor
`attack, that comes later in time. So 1998ish or '7 is when you have
`Terentieva and they're dealing with this hot corrosion, and then later on in
`time people start to deal with this water vapor attack and that's where the
`motivation to add an EBL comes in. Now, of course, that's all before the
`2003 '356 patent filing date, but this specifically is the point of the additional
`outer layer being disclosed in Terentieva, is for the premise that a person of
`ordinary skill in the art wouldn't be dissuaded by the thickness.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`16
`
`

`

`Case IPR2016 01289
`Patent 7,060,360 B2
`
`
`JUDGE OBERMANN: Right.
`MR. DESAI: That's the premise of what I'm reading about.
`JUDGE OBERMANN: Right, and they also wouldn't necessarily be
`persuaded. Wouldn't that barrier layer have decreased the temperature?
`MR. DESAI: It would have, and that's -- we -- I brought this up with
`Dr. Clark at his deposition as well, and I think we've mentioned this in our
`reply brief, is that the same healing function issue and lowering the
`temperature is something that would have been an issue with an optional
`layer that's disclosed in Terentieva and, of course, they didn't disclose that as
`hindering or eliminating the healing function. I think -- this is it right here, I
`have it on slide 20. I asked him if adding this outer refractor layer impacted
`the temperature experienced by the layer below, he said, yes. I said, it
`would result in a lower temperature at the layer below. Yes, any coating you
`put on top would lower the temperature. So that actually, again, refutes their
`position that adding another layer will hinder or eliminate the healing
`function because of lower temperatures. So, that covers -- and also to this
`desired -- this issue of coating thickness. There's also a paper we cite from
`Dr. Clark from before the IPR which talks about sort of the routine nature of
`adjusting thickness to achieve desired properties, this is at GE-1010, it's
`slide 22. So, prior to this IPR, Dr. Clark also offered opinions in his papers
`about how temperature can be achieved through simply increasing the
`thickness. Thickness of the EBC is usually varied from place to place to
`provide the desired thermal protection. So, if thickness is something that
`you can adjust as a person of ordinary skill in the art, it's not going to
`dissuade a POSITA from adding this EBL, is the point we've made.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`17
`
`

`

`Case IPR2016 01289
`Patent 7,060,360 B2
`
`
`So, I'll move on to the issue of reasonable expectation of success, and
`there are, I think, numerous problems with Patent Owner's arguments on
`reasonable expectations of success. To begin with, we believe Patent
`Owner's not using the correct standard. If you read carefully into the
`arguments being made about requirements for time-consuming
`experimentation Patent Owner is actually talking about taking absolute
`capability which is not the law. I mean there's numerous Federal Circuit
`cases that tell us that reasonable expectation of success is not absolute
`capability. If you read carefully in Patent Owner's arguments they are
`demanding absolute capability. Here, on slide 23, it says, absent knowledge
`-- this is from Patent Owner's response at 12 -- of previously developed
`evidence of the behavior of the actual materials being considered you would
`have a reasonable likelihood of success. I read that as essentially saying we
`have to show that prior art that combine BSAS with the actual material that's
`in Terentieva, that's anticipation. If we had that, we wouldn't even be talking
`about obviousness here. What we have shown is prior art that talks about
`the reason for adding BSAS and the types of materials that BSAS will be
`compatible with, which include silicon-metal alloys and, even more
`specifically, molybdenum-silicon metal alloys, right, and that's enough to
`give a person of ordinary skill a reasonable expectation of success.
`The other problem with Patent Owner's argument here is that they're
`relying on unclaimed limitations, okay. We look at slide 23, it says, a
`POSITA would not have perceived a likelihood of success in combining
`layers capable of withstanding high temperature services in a gas turbine.
`The claims of the '360 patent do not require a gas turbine, do not require
`temperature, do not require any service requirement, those are not
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`18
`
`

`

`Case IPR2016 01289
`Patent 7,060,360 B2
`
`limitations. The law is -- it's black letter law that reasonable expectation of
`success must be measured against the claimed limitations, that's the Allergan
`case that we cited in our beliefs and also there's an Intelligent Biosystems
`case which also cites the Allergan case, it's 821F1359. We must measure
`reasonable expectation of success based on the claimed invention.
`So, couple of more points about reasonable expectation of success.
`Another argument being that Patent Owner, this is on slide 24, that the field
`is inherently unpredictable, that's page 9 of their brief, and then, it is
`effectively impossible to predict how coatings will work in an integrated,
`multi-layer structure, page 11. Those positions by Patent Owner simply do
`not line up with the '360 patent. On the right-hand side I've shown you this
`is actually what's disclosed in the '360 patent, on the right-hand side of slide
`24. Gives you a list of substrates, gives you a bond layer that can be a
`m