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`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`GENERAL ELECTRIC COMPANY
`Petitioner,
`v.
`
`UNITED TECHNOLOGIES CORPORATION
`Patent Owner.
`___________
`
`Case IPR2016-01301
`Patent 6,939,392 B2
`___________
`
`Record of Oral Hearing
`Held: October 5, 2017
`___________
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST,
`and JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`
`
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`Case IPR2016-01301
`Patent 6,939,392 B2
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`Brian E. Ferguson, Esquire
`Weil, Gotshal & Manges LLP
`1300 Eye Street, Northwest
`Suite 900
`Washington, DC 20005
`
`ON BEHALF OF PATENT OWNER:
`
`M. Andrew Holtman, Ph.D
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, LLP
`901 New York Avenue, Northwest
`Washington, DC 20001
`
`
`The above-entitled matter came on for hearing Thursday, October
`5, 2017, commencing at 1:30 p.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
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`P R O C E E D I N G S
` JUDGE TORNQUIST: Good afternoon. We are
` here on IPR2016-1301, General Electric Company
` versus United Technologies Corporation.
` Who do we have for petitioner.
` MR. FERGUSON: Good afternoon, Your Honor.
` It's Brian Ferguson with Weil Gotshal & Manges on
` behalf of Petitioner General Electric.
` JUDGE TORNQUIST: And patent owner?
` MR. HOLTMAN: Good afternoon. Andy
` Holtman. And with me is Jeff Totten, both from
` Finnegan Henderson representing Patent Owner United
` Technologies Corporation.
` JUDGE TORNQUIST: Welcome. As set forth
` in the order setting oral argument, each party will
` have 30 minutes to argue today. Petitioner, bearing
` the ultimate burden of proof, you'll go first. You
` can reserve as much time as you like for rebuttal.
` Then we'll hear from patent owner and then any
` rebuttal time that you might have reserved.
` Okay. Petitioner, when you are ready.
` MR. FERGUSON: Thank you and good
` afternoon. May it please the Board.
` I have physical copies of our
` demonstratives if you would like copies or we can
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` just go with what's on the screen.
` JUDGE TORNQUIST: We have it online.
` MR. FERGUSON: Great. Then I would like
` to reserve eight minutes, please.
` JUDGE TORNQUIST: Okay.
` MR. FERGUSON: As I'm sure the Board knows
` there are a number of claims at issue in this IPR.
` And on slide two I have summarized the claims that
` are at issue as well as the -- a listing of four
` independent claims. I'm going to focus my
` presentation primarily on the independent claims.
` I'll be happy, of course, to address any
` questions that the Board may have with respect to
` any of the independent claims or any of the issues
` and may address dependent claims as well in my
` rebuttal.
` Let me start with the '392 patent. The
` '392 patent, as we have on slide 3, is, in general
` and very broadly, directed to two concepts. The
` first concept is the recognition that thermal
` management systems for aircraft and others utilize
` fuel as a cooling medium. That's the first
` statement that's in the patent. It's in the
` abstract. It's throughout the patent.
` And the second point that's in the '392
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` patent is that it is beneficial to remove oxygen
` from the fuel in such a system in order to avoid
` the problems, the well known problems, that are
` associated with coking deposits that form when
` oxygenated fuel rises above 325 degrees.
` Now, neither of concepts were new. The
` Spadaccini patent, which is our main prior art
` reference, GE-1005, discloses those exact same two
` concepts. As we show on slide 4, this is the
` Spadaccini patent. It first discloses the concept
` of deoxygenating the fuel in a aircraft
` environment in order to avoid the problems of
` coking.
` As we have in slide 5, it also discloses
` the concept of using the fuel as a coolant for one
` or more of the subsystems that exist throughout
` the aircraft.
` Spadaccini also shows us an example of a
` vent system. This is slide 6. This is figure 9
` for Spadaccini. So Spadaccini has, as shown in
` the slide and in figure 9, there's the tank that
` has the fuel. That's 130. That fuel then goes
` through the deoxygenator, which is labeled 110.
` And then as the patent teaches, from there it goes
` into a heat exchange, section 106, that represents
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` one or several regions of operation through which
` the fuel passes in a heat exchange relationship.
` And then from there it goes into the ECD, that's
` an energy conversion device, which in this
` specific embodiment is an aircraft engine.
` So fundamentally, Spadaccini teaches the
` same concepts as the '392 patent. And because so
` many of the claims of the '392 patent are broadly
` written they really run right into the teachings
` of Spadaccini.
` For example, slide 7 summarizes or
` repeats Claim 1. Now, Claim 1 is a very broad
` claim. It's a method claim. It has only three
` steps, and we believe we can go through each of
` these three steps, and it's plain that Spadaccini,
` either explicitly or at least obviously, discloses
` all three.
` So let's go through them one by one, if
` I may. Slide 8 the first limitation of the claim
` is removing oxygen from the fuel. It's very
` clearly disclosed in Spadaccini. That's the whole
` point of the Spadaccini reference. It teaches
` deoxygenation of the liquid fuel in an aircraft
` turbine engine.
` Step 2 is the step of transferring heat
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` from a subsystem to the fuel. Now, that is also
` disclosed in Spadaccini, as we see here. This is
` slide 9. And there's a quote there that in figure
` 9 there is illustrated a heat exchange section
` 106. And that represents one or more of several
` regions of an aircraft through which the fuel
` passes in a heat exchange relationship.
` And if there's any doubt about
` Spadaccini's meeting the subsystem specifically
` requirement of this step, as we show in slide 10,
` Spadaccini does say that the fuel serves as a
` coolant for one or more of the subsystems in the
` aircraft and becomes heated. So that step of the
` claim we believe is also taught in Spadaccini.
` And then lastly there's a step of
` combusting fuel, and that, too, is plainly
` disclosed in Spadaccini. It teaches that after
` the fuel is heated, it's delivered to fuel
` injectors immediately prior to combustion.
` So Claim 1, we believe, is at a very
` minimum obvious in view of Spadaccini. And I
` think it's important to point out that with
` respect to Claim 1 each of these limitations there
` was no argument from UTC in the patent owner
` response that Spadaccini did not meet any one of
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` these limitations.
` JUDGE CRUMBLEY: You didn't assert a
` single reference 103 ground of unpatentability
` against Claim 1, though.
` MR. FERGUSON: I believe, Your Honor, that
` we did. We made it clear in the individual analysis
` for each of our claims in the petition that
` Spadaccini, either alone or in combination with
` Wilmot, rendered the claim obvious.
` For example, in the petition on page 25
` we stated that Spadaccini therefore discloses each
` and every limitation of Claim 1. And because it's
` well settled in anticipation as the epitome of
` obviousness, citing the McDaniel case, Claim 1 is
` at least rendered obvious in view of Spadaccini.
` But to the extent it was not, we believe
` that the claim would nonetheless have been obvious
` based on the Spadaccini-Wilmot combination. So I
` think this is a situation, Your Honor, where there
` is certainly no surprise to patent owner that we
` made arguments that Spadaccini either alone or in
` combination with Wilmot, taught every limitation
` of a number of these claims.
` So again, with respect to these
` individual limitations there was no argument from
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` UTC that Spadaccini did not contain them. The
` argument was based on a more threshold argument
` that there was no motivation to combine Spadaccini
` with Wilmot. But we don't believe that that is
` what the arguments in the petition are limited to.
` So I want to jump ahead to Claim 27.
` JUDGE TORNQUIST: Counsel, could I ask
` just one question about Claim 1.
` MR. FERGUSON: Yes.
` JUDGE TORNQUIST: Would you agree that how
` the oxygen is removed in Claim 1 is not specified?
` MR. FERGUSON: I would agree with that,
` Your Honor. I believe it's just plain from the
` wording of the claim itself. It says removing
` oxygen from a stream of fuel fed to an engine used
` to drive an aircraft. This is a method claim. I
` think that any method for removing oxygen from fuel
` would fall within step of that claim.
` JUDGE TORNQUIST: Okay. And do chemical
` getters or the like in Wilmot also remove oxygen?
` MR. FERGUSON: Yes. The additives that
` are disclosed in Wilmot. In fact, it's plain in
` Wilmot the additives are used for removing oxygen,
` yes.
` Did you want to follow-up with that,
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` Your Honor?
` JUDGE TORNQUIST: No. I just wanted to
` make sure, the baseline.
` MR. FERGUSON: Okay. So let's move up to
` slide 15. Slide 15 is the next -- I'm jumping ahead
` to Claim 27. We'll get back to Claim 13.
` So Claim 27 really is a system claim.
` But aside from that, the limitations are not
` materially different from that in Claim 1, with
` the exception of the temperature limitation which
` is at the bottom. It states if the fuel is heated
` to a temperature greater than 550 degrees.
` But with respect to the structural
` limitations, my analysis with respect to Claim 1,
` I believe, applies. Claim -- as we have on slide
` 16, Spadaccini teaches each of the structural
` limitations. It has the fuel supply. It has the
` fuel system. It has the heat generating
` subsystem, and it has the energy conversion
` device. So those limitations are all met.
` With respect to the limitation that the
` oxygen or the fuel is substantially coke-free as
` we show here on slide 17, that, too, is met
` clearly by Spadaccini. Spadaccini teaches that
` its fuel deoxygenator removes the fuel to a level
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` at least below that at which significant coking
` occurs. With respect to that I would point the
` Board to the '392 patent disclosure, which says
` that it's a goal to get the oxygen removed to
` about five parts per million. That's GE-1001 it's
` at Column 4 line 64.
` So that's what the '392 patent teaches
` is a limit or a range where it is substantially
` coke-free the fuel. Well, Spadaccini teaches the
` exact same thing. It says five parts per million
` is the goal of Spadaccini. And that's at GE-1005,
` column 2, lines 39 through 40.
` So UTC could not make an argument that
` Spadaccini does not meet this limitation because
` of the '392 patent. The Spadaccini disclosure as
` to what constitutes substantially coke-free fuel
` is exactly the same as in the '392 patent.
` So that just leaves the question of the
` temperature range. And for that, it's either
` disclosed explicitly or certainly obvious in view
` of the Spadaccini disclosure.
` As we have on slide 18, Spadaccini
` teaches that it was known in the art that coking
` would begin to occur around 300 degrees or so. It
` also was known in the art that this becomes
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` dominant as the temperature of the fuel rises up
` to about 700 degrees. So you can see that on the
` slide, figure 2 of the patent. That large hump in
` the graph indicates the coking deposits. And you
` see that it becomes very high as it reaches that
` temperature range about 400 to 800 degrees.
` But it was also known -- this is not
` something Spadaccini invented, this is something
` that was known in the art. It was known that if
` you reduce the oxygen or remove the oxygen from
` that fuel, then coking does not occur. Then it is
` unimportant. You can raise the temperature of the
` fuel and be able to beneficially use the fuel then
` because deoxygenating the fuel yields dramatic
` reductions in the formation of deposits.
` So that's the first thing that
` Spadaccini discloses. And then when we go to
` slide 19 same figure -- it's in reference to
` figure 2 -- Spadaccini explicitly says that
` deoxygenating the fuel, you should deoxygenate the
` fuel before subjecting it to operation in that
` temperature range. Now, the question is what is
` that temperature range. The answer is immediately
` above it. It's in reference to fuel temperature
` increasing between 300 and 700 degrees Fahrenheit.
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` The board recognized that in the institution
` decision. That is very clearly a disclosure that
` you can operate the fuel or you can use the fuel
` in Spadaccini in a range of between 300 and 700 if
` you deoxygenate the fuel. And that range,
` obviously 550 degrees, as is in the claim, falls
` squarely within that limitation.
` So we think Spadaccini expressly
` discloses this limitation. If it doesn't we also
` argued that it would be obvious to a person of
` ordinary skill. The whole point of Spadaccini was
` to allow you to beneficially raise the temperature
` of the fuel to a level that approaches pyrolysis,
` which is about 900 degrees or higher. And that is
` exactly what Spadaccini teaches as we show in
` slide 20 here. There's a disclosure that reducing
` the oxygen concentration allows the fuel to be
` heated to a higher temperature before
` decomposition or pyrolysis occurs.
` So very clearly we think that this step
` is disclosed in Spadaccini, certainly at a minimum
` with an obvious view of Spadaccini. And
` therefore, Claim 27 is also invalid. And this
` analysis with respect to the temperature ranges,
` we believe it applies to all of the ranges that
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` are in the various claims. So I won't repeat
` that.
` If there are no questions about Claim 27
` or the temperature range, I'll jump to the next
` claim, which is Claim 13. So going back.
` So now Claim 13, the only difference in
` this claim from Claim 1 and Claim 27 is the
` limitation of the fuel stabilization unit. So
` here, Judge Tornquist, this is where the claim is
` not broad enough to cover any type of fuel
` deoxygenation under the sun. It's limited to a
` fuel stabilization unit. So we have a dispute
` about what that means, and I've summarized that on
` slide 22.
` Our construction, petitioner's
` construction, is simply a fuel deoxygenator. And
` we believe that UTC is plainly here trying to read
` a specific embodiment from the specification into
` the claim. Now --
` JUDGE TORNQUIST: Are they reading an
` embodiment into the claim or are they just defining
` what's -- I think it seems to be understood that
` this word has no meaning in the art.
` MR. FERGUSON: It's a good question, Your
` Honor. We did not dispute. We did not dispute.
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` Our expert said so, too. The term fuel
` stabilization unit as it's used, is not a term that
` was really well known in the art.
` But if we look at what the patent says,
` '392 on slide 23, it says specifically that the
` fuel stabilization unit is a fuel deoxygenating
` device.
` Now, fuel deoxygenators were known in
` the art. So persons of ordinary skill would have
` clearly understood that, oh, a fuel stabilization
` unit is a fuel deoxygenator. I can use known fuel
` deoxygenators to perform this step.
` JUDGE CRUMBLEY: But aren't you
` cherrypicking one statement about what the FSU is
` from the specification and ignoring other statements
` that mirror that formulation of what the FSU is and
` then gives you some other things that the FSU has.
` MR. FERGUSON: Judge Crumbley, I do not
` take issue with the fact that there's only one fuel
` stabilization unit embodiment disclosed in the patent.
` I would agree with that. There is the single
` embodiment, that is the flow plates, membranes,
` substrates. I do agree with that. But again, we
` think that we are looking at the broadest reasonable
` interpretation of course.
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` JUDGE CRUMBLEY: In light of the
` specification.
` MR. FERGUSON: Agreed. This is not
` Phillips, however. And we believe that a person of
` ordinary skill in the art would have understood
` that, in context of specification, a fuel
` stabilization unit is a fuel deoxygenator, and there
` were known fuel deoxygenators in the art.
` The patent does not say that this is the
` only way you can deoxygenate the fuel. It says
` this is the way we say you should deoxygenate the
` fuel. But there are, as we've shown with
` Spadaccini, there are different ways to do it.
` JUDGE CRUMBLEY: Let me put it to you in a
` slightly different way. You could still be right
` that the FSU is a fuel deoxygenating device, pulling
` this from slide 23 of yours. That could still be
` correct if you adopt their construction as well,
` right? Because their construction is a fuel
` deoxygenating device that then has other features.
` So their construction is not
` inconsistent with that statement that you just
` showed us in the specification. And furthermore,
` it is further consistent with other statements in
` the specification as well. Whereas yours is
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` consistent with that first one. But maybe isn't
` limited to what the other one said.
` MR. FERGUSON: It's a good way to put it,
` although what I would say, Your Honor, that is our
` construction is not inconsistent with what's in the
` specification, right? Because under our
` construction, a fuel deoxygenator, the specific
` embodiment does fall within the scope of our
` construction for sure. But we believe that the
` construction, our construction, is consistent with
` the specification but is also the broadest
` reasonable construction. Our construction is not
` unreasonable, I don't believe, because, again, a
` person reading it would look at the patent and say I
` can use a fuel deoxygenating device. I can use a
` fuel deoxygenator to meet the limitation.
` JUDGE ABRAHAM: Why do you say that a
` person of skill in the art would look at the
` specification and say you can use any deoxygenating
` device. Is it because of the one line you showed
` us?
` MR. FERGUSON: It's because of that
` statement in the specification, Your Honor. That's
` right. And again, what's shown here, I've
` highlighted the FSU is a fuel deoxygenating device.
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` Yes. But if we go down further, it says upon
` operation of the FSU the amount of dissolved oxygen
` in the fuel is reduced to provide deoxygenated fuel.
` So I think a person there would say,
` okay, what -- the term "fuel stabilization unit"
` is being used to some extent in a functional sense
` to describe what it performs. It performs
` dissolving oxygen from the fuel. So we know the
` different ways that there may be to do that would
` include patent owner's construction. No doubt
` about that. But I think it would also include
` other ways as well.
` If patent owner had wanted to limit the
` FSU to the specific embodiment that's in the
` specification, then I don't think that they would
` have needed to include these claims, which are
` claims 32 and 37, which all depend from Claim
` 20 -- claim -- what was it -- Claim 29 I think
` that has the FSU limitation in it. Let me make
` sure I have that straight. Claim 31, which
` includes -- which depends on 27, which has the
` fuel stabilization unit.
` So these claims, I believe, would be
` rendered superfluous under patent owner's
` construction. I also think it's inconsistent with
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` Claim 42, where they've included a means for
` deoxygenating. There, clearly they are going to
` be limited to what's exposed in the specification
` obviously as well as the (inaudible).
` Now, if the Board adopts our
` construction of FSU, I don't believe there's any
` dispute that Claim 13 is met by Spadaccini.
` Patent owner did not make any argument other than
` Spadaccini did not disclose the specific fuel
` stabilization unit that's in the '392 patent.
` Again, Spadaccini shows all of the limitations,
` all the structural limitations of that claim,
` Claim 13. And then this is slide 27.
` And then when we look at slide 28, which
` is the last independent claim, Claim 49, we see
` that other than the fuel stabilization unit
` limitation, again, patent owner did not contest that the
` limitations of Claim 49 are present in Spadaccini
` as well.
` So I want to briefly discuss the pending
` claims that require the combination with Wilmot.
` So I'm going to jump ahead to slide 30. Now,
` first of all, we believe there's ample motivation
` to combine the teachings of Spadaccini and Wilmot.
` As we show on slide 30, it's very clear that they
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` are analogous devices. They both are directed
` towards the concept of using fuel to cool systems
` within an aircraft. That's clearly disclosed.
` They both discuss the same sort of
` problems. The problems are that there's the
` problem of coking, and then the ways in which were
` known in the art to deal with some of the
` coking -- to deal with the coking problems were
` not necessarily desirable.
` Wilmot says the presence of additives
` which it discloses are not desirable for all uses
` and can be expensive. Spadaccini teaches very
` much the same thing: The methods are impractical,
` they are costly, heavy, bulky dangerous.
` So we are all looking at the same
` problem. And then Spadaccini discloses the
` solution and teaches a cost effective,
` weight-efficient, and safe manner of removing
` dissolved oxygen from the liquid fuel.
` (Time indicator sound)
` JUDGE TORNQUIST: Sorry about that.
` MR. FERGUSON: That means I have eight
` minutes left, Your Honor?
` JUDGE TORNQUIST: Yes. If you'd like
` to --
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` MR. FERGUSON: I'll just take a couple
` more minutes then to wrap up.
` Therefore, as our expert discussed, a
` person of ordinary skill in the art would have
` understood and looked at Spadaccini as a known
` solution to the problems of coking and would have
` understood that they could combine Spadaccini with
` Wilmot because it would be an alternative to using
` the undesirable and costly fuel additives that
` Wilmot ultimately decides to use.
` JUDGE TORNQUIST: Well, what about their
` argument that Wilmot -- it might have been
` undesirable at some point, but Wilmot solved it with
` the recirculation.
` MR. FERGUSON: Yeah. So that is an
` argument they make. Now, I believe that, number
` one, we are talking -- that argument goes to a
` physical combination of putting Spadaccini into the
` Wilmot system. And our argument for obviousness was
` broader than that. It's combining the overall
` teachings. We say that in the petition at page 15.
` We cite the In Re Keller case that the test for
` obviousness is not whether the features of one
` reference may be bodily incorporated into the
` structures of the other. The test is what the
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` combined teachings disclose or suggest to a person.
` Here Spadaccini is a main reference, and
` Wilmot just shows what types of subsystems were
` known to exist on aircraft and could have been
` cooled by the fuel that passes through the fuel
` deoxygenator in Spadaccini.
` So with respect to the physical
` combination, even if we were to physically
` combine, we think that that is too narrow of a
` interpretation from patent owner's perspective
` because a person of ordinary skill in the art
` understands that there are disadvantages and
` advantages when you combine teachings. That's the
` Medichem case that we cited on page 13.
` JUDGE TORNQUIST: How do we deal with your
` statement in the petition that you would actually
` drop this into the fuel line of Wilmot.
` MR. FERGUSON: That is one of the ways in
` which we argued that there would be a combination of
` the references. But that is not the only argument
` we made. We did also argue that while -- this is
` again in the petition at 15 -- while Spadaccini
` discloses the key limitation -- that's the fuel
` deoxygenator -- it does not provide an exhaustive
` description of the various types of devices and
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` subsystem that might be cooled. But Wilmot does and
` discloses a wide range of devices and subsystems
` that might be cooled.
` So I look at it like you could have an
` obviousness combination where Spadaccini is the
` main reference. What Spadaccini discloses is --
` or what Wilmot does in terms of helping with that
` is that shows the person of ordinary skill would
` understand what types of various subsystems could
` by covered in use with Spadaccini. And that, as
` we have on slide 36, are those relatively small
` handful of dependent claims where the
` combination -- where we actually rely on Wilmot to
` disclose a specific limitation in those claims.
` And to be completely accurate, Your
` Honors, this is missing -- this slide, 36, is
` missing Claim 28. Claim 28 should have been there
` as well.
` THE WITNESS: I'll reserve the remainder
` of my time.
` JUDGE TORNQUIST: Thirty minutes is pretty
` tight, so we'll give you a couple more minutes. I
` just have a couple questions for you.
` MR. FERGUSON: Absolutely. Thank you,
` Your Honor.
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` JUDGE TORNQUIST: I just wanted to make
` sure of a couple questions. There was a question on
` claim construction at high temperature.
` MR. FERGUSON: Yes.
` JUDGE TORNQUIST: It does not appear that
` you are disputing that at this point; is that
` correct?
` MR. FERGUSON: That's correct. We do not
` dispute that, Your Honor. So that hits, I believe,
` claims 7 and 8 and 21 and 22.
` JUDGE TORNQUIST: We can figure that part
` out. I just want to make sure there's absolutely no
` dispute here.
` MR. FERGUSON: Yes.
` JUDGE TORNQUIST: Is there any dispute
` between the parties about of level of skill in the
` art.
` MR. FERGUSON: No. I believe that Dr.
` Yang -- I think he said I don't necessarily agree
` with petitioner's construction, but I'm going to
` adopt it for purposes of my analysis. And if I'm
` wrong, I'm sure Andy will correct me.
` JUDGE CRUMBLEY: Before you sit down.
` MR. FERGUSON: Yes, sir.
` JUDGE CRUMBLEY: You said that -- before
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` you got to the reason to combine, you said that
` there are certain dependent claims that depend on
` the combination of Spadaccini with Wilmot.
` MR. FERGUSON: Yes.
` JUDGE CRUMBLEY: Can you tell us what
` those are? Which dependent claims do you need to
` rely on Wilmot for versus ones that, as I asked you
` before, could be a single reference 103.
` MR. FERGUSON: It is those specific claims
` that I listed there on slide 36 as well as Claim 28.
` JUDGE CRUMBLEY: Does your petition
` separate out those particular claims that need
` Wilmot versus ones that don't.
` MR. FERGUSON: I believe we did that in
` our reply