[00:00:00] Speaker 03:
This case is Raytheon Technologies versus General Electric, 2020, 1755.

[00:00:06] Speaker 03:
Please proceed.

[00:00:07] Speaker 03:
Thank you, Your Honor.

[00:00:10] Speaker 01:
I may please the court, Lauren Degnan for Raytheon Technologies, also referred to as Pratt in the brief.

[00:00:16] Speaker 01:
The board's error here is a legal one.

[00:00:18] Speaker 01:
It disregarded the undisputed evidence of non-enablement because it applied the wrong test for enablement, which is that the prior art must teach to make and use the claim convention.

[00:00:30] Speaker 01:
We should keep in mind that the claimed invention here is not power density in a vacuum, but a specific engine that has that power density.

[00:00:39] Speaker 03:
The board.

[00:00:41] Speaker 03:
Yes.

[00:00:42] Speaker 03:
Do I understand correctly that claims 1 and 15 were just claimed?

[00:00:53] Speaker 03:
And so what we're dealing with are 3 and 16, and 3 and 16

[00:00:59] Speaker 03:
deal only add minor changes, the number of fan blades being less than 18, and the second turbine having two stages.

[00:01:12] Speaker 03:
And I don't see that these limitations are especially argued as distinguishing.

[00:01:18] Speaker 03:
So why isn't this case easy?

[00:01:20] Speaker 03:
Because the independent claims were disclaimed.

[00:01:26] Speaker 01:
Your Honor, the independent claims were disclaimed as a way to streamline the issues.

[00:01:31] Speaker 01:
I'm sure you've noticed the briefing on the issues is substantial on the enablement issue, and the disclaimer was simply too narrow.

[00:01:39] Speaker 01:
The arguments are focused, claims three and 16 include all the limitations of the claims.

[00:01:46] Speaker 01:
And so we would not say this is a way to address the, by just focusing on the additional limitation of claim three,

[00:01:53] Speaker 01:
since it incorporates the power density limitations and the remainder of limitations that are in claims one and two.

[00:02:01] Speaker 03:
But whatever the reason for the disclaimers, they're gone.

[00:02:05] Speaker 03:
They're in the unpatentable category, aren't they?

[00:02:10] Speaker 01:
Your Honor, we would say that, yes, they are disclaimed and they are gone.

[00:02:14] Speaker 01:
That doesn't mean, it does not operate as any admission that those limitations are per se

[00:02:23] Speaker 01:
irrelevant in the dependent claims.

[00:02:25] Speaker 01:
And I will add that the dependent claims are not simply minor changes, because the number of stages has a major impact on turbine volume, which is one of the attributes in the power density limitation, as power density is a ratio of sea level takeoff thrust to turbine section volume.

[00:02:44] Speaker 02:
Ms.

[00:02:44] Speaker 02:
Degnan, this is Judge Chen.

[00:02:46] Speaker 02:
As I understand it, in GE's petition, they relied on a reference called GLEBE.

[00:02:53] Speaker 02:
in challenging claim one, but they, for whatever reason, did not rely on GLEBE in its challenge to claims three and 16.

[00:03:02] Speaker 02:
Is that right?

[00:03:04] Speaker 01:
That is correct, Your Honor.

[00:03:06] Speaker 02:
Does GLEBE teach a geared turbofan engine that has a power density greater than or equal to 1.5 and less than or equal to 5.5?

[00:03:21] Speaker 01:
So, Your Honor, before the board, we disputed that assertion.

[00:03:26] Speaker 01:
So our position is that GLEED does not include that, does not cheat that limitation.

[00:03:31] Speaker 02:
Where did you dispute that?

[00:03:34] Speaker 01:
It was in our preliminary patent owner's response, Your Honor.

[00:03:37] Speaker 01:
And if you give me a moment, I may be able to get the page for you.

[00:03:40] Speaker 02:
It doesn't matter.

[00:03:41] Speaker 02:
I just am trying to understand the order of things.

[00:03:43] Speaker 02:
They filed a petition.

[00:03:45] Speaker 02:
GE filed a petition.

[00:03:46] Speaker 02:
You filed a preliminary patent owner response.

[00:03:49] Speaker 02:
But then before the

[00:03:51] Speaker 02:
patent board decided whether to institute you in that intervening period filed your disclaimer?

[00:04:00] Speaker 01:
Is that right?

[00:04:03] Speaker 01:
Your Honor, the disclaimer was after institution.

[00:04:08] Speaker 02:
Okay, so the patent board in fact reached a conclusion that there was a reasonable likelihood that claim one

[00:04:19] Speaker 02:
It was unpatentable in light of glee.

[00:04:23] Speaker 02:
That's right.

[00:04:24] Speaker 02:
Okay.

[00:04:25] Speaker 02:
And then in response to that, you quote unquote streamlined the proceeding by disclaiming most of the claims of this patent.

[00:04:36] Speaker 01:
That's correct, Your Honor.

[00:04:39] Speaker 01:
Okay.

[00:04:42] Speaker 02:
Can I just ask, when it comes to claim one, I see a lot of,

[00:04:49] Speaker 02:
elements that would be generic to just about any geared turbofan engine, fan, compressor, combustor, compressor, turbine, speed change system.

[00:05:04] Speaker 02:
And it seems like the point of novelty is the power density limitation.

[00:05:09] Speaker 02:
Is that right?

[00:05:11] Speaker 01:
So, Your Honor, we would say that all the limitations, every aspect of the engine is interrelated.

[00:05:19] Speaker 01:
And to achieve the power density is a function of, you know, both the thrust and the turbine volume.

[00:05:26] Speaker 02:
I understand all that, but at this point I don't see anything about the other limitations that necessarily bring about the particular claimed power density property value that you have recited in the claim.

[00:05:45] Speaker 01:
So just to take us back to the Petitions Ground, the Petitions Ground relied on NIP's Advanced Engine of Figure 13 for each of the limitations.

[00:05:56] Speaker 01:
The baseline engine claims was in Figure 14, does not have at least a speed chain system.

[00:06:03] Speaker 01:
So in terms of what is the ground and what are the elements, we have to stay focused on what it was, and that was the Advanced Engine.

[00:06:12] Speaker 01:
And in terms of power density,

[00:06:14] Speaker 01:
These attributes within the claim, such as the ratio of fan blades to rotors, the number of stages in each of the turbines of the turbine section, they all relate to and impact the turbine volume.

[00:06:31] Speaker 01:
And so for that reason, you can't look at power density in a vacuum, and the claim, the elements together help contribute to the power density.

[00:06:42] Speaker 01:
And for that reason, the board

[00:06:44] Speaker 01:
you know, was required in the harvest enablement analysis to consider whether the engine of figure 13 of NIP was enabled because that is the engine on which DE and the board relied.

[00:06:59] Speaker 02:
Okay, I see you want to talk about something else and that's fine.

[00:07:04] Speaker 02:
Why don't you go ahead to the heart of your argument?

[00:07:08] Speaker 01:
So the first part of our argument is to make sure we're focused on the board, in our view, made an error with respect to trying to reduce the invention down to the point of novelty.

[00:07:18] Speaker 01:
And in an obvious theory, all the limitations matter.

[00:07:24] Speaker 01:
And they matter particularly with respect to power of density, given how it is calculated.

[00:07:29] Speaker 01:
And so then the board made a second error in disregarding the evidence that NIPS Engine, Advanced Engine in Figure 13,

[00:07:38] Speaker 01:
was not enabled by disregarding the evidence that the futuristic material was irrelevant.

[00:07:47] Speaker 03:
It wasn't enabled because the advanced materials weren't available?

[00:07:53] Speaker 01:
That's exactly right, Your Honor.

[00:07:54] Speaker 01:
It was not available at the time of the 751 patent.

[00:07:57] Speaker 01:
And the performance character, the specific performance characteristics that the board looked at in NIP could not have been achieved with the materials available at the time of the 751 patent.

[00:08:11] Speaker 01:
And in fact, some of them, like the overall pressure ratio, the OPRA, could not be achieved, the record showed, even as of 2019.

[00:08:21] Speaker 03:
But NIP is an obviousness reference, right?

[00:08:25] Speaker 03:
Yes.

[00:08:26] Speaker 03:
Does NIP really have to be enabling with respect to what it teaches, with respect to the claimed invention, whether the claimed invention would have been obvious based on what NIP discloses, even if NIP isn't enabling itself?

[00:08:50] Speaker 03:
If I stated that accurately.

[00:08:52] Speaker 01:
Your Honor, this court's cases say that the portion of the reference on which one relies for obviousness does have to be enabled.

[00:09:04] Speaker 01:
So we are not saying that

[00:09:06] Speaker 01:
In all obviousness cases, single reference or otherwise, the entire reference needs to be enabled.

[00:09:13] Speaker 01:
We're saying it's important to look at the portion of that reference that's being relied on for the obviousness theory.

[00:09:19] Speaker 01:
Ashland Oil, we think, supports this very clearly.

[00:09:24] Speaker 01:
And because GE and the board... Sorry, Ms.

[00:09:26] Speaker 02:
Degnan, this is Judge Shen.

[00:09:27] Speaker 02:
Just to be specific about this, because I think this is really important to be precise.

[00:09:34] Speaker 02:
There's at least one example I can think of.

[00:09:37] Speaker 02:
I think it's called the Apple case, where what was being relied upon in a given prior art reference wasn't actually self-enabling, but it was some discussion that was a basis to provide a motivation to combine to do some other kind of modification to a different prior art reference.

[00:10:02] Speaker 02:
what was being relied on in that first reference itself was not self-enabling, I don't think.

[00:10:08] Speaker 02:
Is that a fair characterization of that?

[00:10:11] Speaker 01:
So I think in the application referring to Judge Chen, I think that that was in fact the issue.

[00:10:17] Speaker 01:
And I think it was remanded to see that when you made the combination, the prior art combined as a whole would have enabling disclosure for each of the limitations.

[00:10:28] Speaker 02:
I think the point is that we have to be careful when we or when I heard you say that whatever we rely upon in a given prior art reference, that portion always has to be self-enabling.

[00:10:45] Speaker 02:
And I'm not sure that's correct because as you pointed out right before I cut you off, the question is the prior art as a whole has to enable

[00:10:56] Speaker 02:
a skilled artisan to make the claimed invention.

[00:11:00] Speaker 02:
And so you can take different pieces here and there.

[00:11:02] Speaker 02:
It's not such a rigid requirement that whatever little piece you take from an individual prior art reference, that prior art reference must self-enable that particular portion on which you're borrowing from that reference.

[00:11:19] Speaker 02:
Is that a fair statement?

[00:11:21] Speaker 01:
So Your Honor, I think we agree with that as a fair statement, but that is why the grounded issue here is so important.

[00:11:29] Speaker 01:
Here, GE's ground and the board relies on these futuristic, unavailable materials in order to do the analysis

[00:11:39] Speaker 01:
to say that the power density limitation is met.

[00:11:43] Speaker 01:
And because they are relying on that portion, that engine needs a figure 13.

[00:11:49] Speaker 01:
It needs the unavailable materials.

[00:11:51] Speaker 01:
That engine itself has to be enabled.

[00:11:54] Speaker 01:
If there was a different case where they were combining it with another piece of prior art that did, in fact, have enabling disclosure of all these materials to be able to achieve the weight requirements, the temperature operation, and the overall pressure ratio, if that secondary reference was enabled, we'd have a very different case than we have here.

[00:12:14] Speaker 01:
The only thing they pointed to is that engine of Figure 13 that is absolutely reliant upon

[00:12:21] Speaker 01:
these unavailable materials, which is why we are not advancing a massive change in the law.

[00:12:27] Speaker 01:
We're asking this court to apply the law of Ashland Oil and those other cases that says you have to enable the portions on which you rely and GE defined the scope of what it was relying upon.

[00:12:40] Speaker 03:
Ms.

[00:12:40] Speaker 03:
Tegnan, I haven't heard the warning sign, but I know you're well into your butthole time.

[00:12:47] Speaker 03:
So why don't we hear from Mr. Ferguson and we'll

[00:12:50] Speaker 03:
We'll save five minutes for you.

[00:12:53] Speaker 01:
Thank you, Your Honor.

[00:12:57] Speaker 00:
Thank you, Your Honor.

[00:12:58] Speaker 00:
May it please the court, Brian Ferguson for General Electric.

[00:13:02] Speaker 00:
The board's decision here should be affirmed.

[00:13:05] Speaker 00:
With respect to the point Judge Lorry made, the only claims at issue here are claims three and 16.

[00:13:12] Speaker 00:
And the record shows that Pratt never argued

[00:13:17] Speaker 00:
independently for the patentability of those claims as at Appendix 64 to 65.

[00:13:23] Speaker 00:
They made no argument before the Board as to those claims.

[00:13:28] Speaker 00:
They've made no argument here before this Court.

[00:13:32] Speaker 00:
With respect to the issue of enablement and the NIF reference, the Board carefully weighed the evidence

[00:13:41] Speaker 00:
and found that NIP sufficiently enables the claims of the 751 patent.

[00:13:48] Speaker 00:
And that is the correct standard.

[00:13:51] Speaker 00:
And the court and the board further found that the claims were obvious in view of NIP.

[00:13:56] Speaker 00:
Those factual findings regarding NIP and regarding obviousness are all supported by substantial evidence here.

[00:14:05] Speaker 02:
Mr. Ferguson, this is Judge Chen.

[00:14:11] Speaker 02:
case comes down to whether a skilled artisan could make the claimed engine based on the information in NIP's disclosure.

[00:14:23] Speaker 02:
And what I saw the board doing was analyzing the question of whether there was sufficient information in NIP's disclosure in order to calculate a power density value that, based on the parameters disclosed in NIP,

[00:14:41] Speaker 02:
would meet the power density claim limitation in claim one.

[00:14:48] Speaker 02:
I did not see the board ever confront the question of whether a skilled artisan based on whatever disclosures provided in NIP could actually make the claimed invention, the claimed geared turbofan engine.

[00:15:09] Speaker 02:
What would be your best

[00:15:11] Speaker 02:
quote and page of the board opinion that would show me that, that I think was missing, and perhaps I overlooked it, but where would you point me to in the board's opinion?

[00:15:24] Speaker 00:
Certainly, Your Honor.

[00:15:25] Speaker 00:
There's two places where I would point you to that.

[00:15:29] Speaker 00:
The first would be pages 25 to 26 of the appendix, the board's decision, which has a reference to that NIF

[00:15:41] Speaker 00:
that a person with skill in the art would be motivated based on NIP to, first of all, calculate the power density.

[00:15:48] Speaker 02:
And then they said... I'm sorry.

[00:15:49] Speaker 02:
Can you... I'm a little lost.

[00:15:52] Speaker 02:
You could slow down and point me more where on your 825.

[00:15:59] Speaker 00:
So, on Appendix Page 26.

[00:16:01] Speaker 00:
Oh, 26.

[00:16:05] Speaker 00:
Which is the board's opinion at the very top.

[00:16:08] Speaker 00:
The board concludes, and this is after an 11-page analysis based on the evidence, taking in totality the Wands Factor support the conclusion that NIP is an enabling reference.

[00:16:22] Speaker 02:
Okay, so that's the conclusion.

[00:16:24] Speaker 02:
I'm looking for the analysis of what is it about NIP's disclosure that convinced the board that a skilled artisan could make

[00:16:37] Speaker 02:
the claimed engine with the claimed power density.

[00:16:41] Speaker 02:
Sure.

[00:16:42] Speaker 02:
So there's two things on that, Your Honor.

[00:16:45] Speaker 02:
Because the real concern I have is that NIP is discussing a futuristic aspirational engine that did not exist then and could not exist then because the so-called advanced materials did not exist at that time, and they still do not exist.

[00:17:07] Speaker 02:
And so one could imagine that all that was being discussed and disclosed in NIP was something almost like a science fiction novel.

[00:17:18] Speaker 02:
Like, wow, wouldn't it be great if we had materials that were so light and resilient that we could make a much more efficient engine, fuel efficient engine.

[00:17:32] Speaker 02:
OK, that would be great.

[00:17:36] Speaker 02:
those dreamlike materials don't exist.

[00:17:38] Speaker 02:
So I'm concerned right now, what is it about NIPS disclosure beyond those dreamlike advanced materials could convince a fact finder that a skilled artisan would be able to rely on those hypothetical materials to make a claimed invention with these power density values.

[00:18:08] Speaker 00:
Yes, Your Honor.

[00:18:09] Speaker 00:
There's a lot to unpack there.

[00:18:10] Speaker 00:
But I would start with this.

[00:18:12] Speaker 00:
The NIP engine, the specific futuristic materials of what you're describing and on which Pratt relies, are not required for purposes of building of whether a person of ordinary skill in the art looking at NIP

[00:18:33] Speaker 00:
would understand that the claimed invention in the 751 patent would be easily and readily achievable.

[00:18:42] Speaker 00:
And I'll start with, first of all, all of the structural elements of claim one and claim three were well-known standard components, and Pratt did not contest that below.

[00:18:57] Speaker 00:
The board found at page 27 of the opinion

[00:19:01] Speaker 00:
UTC does not dispute that these claim elements are either known components of gas turbine engines or disclosed in NIP.

[00:19:11] Speaker 00:
Then the board went on with respect to the main, as you, as it was described, point of novelty.

[00:19:20] Speaker 00:
The main point is whether NIP would render obvious to a person of skill that a standard engine having all the components, which Pratt did not dispute,

[00:19:31] Speaker 00:
would have a power density within the claimed range.

[00:19:36] Speaker 00:
And the board's analysis on that spanned upwards of 25 pages, beginning at page 27, looking carefully at the evidence, seeing that, first of all, the power density is simply a known byproduct of geared turbofan engines.

[00:19:59] Speaker 00:
The evidence was very clear.

[00:20:01] Speaker 00:
that because you used a geared engine, you would end up with a smaller turbine section because you did not need as many stages in the turbine section to do the same amount of work.

[00:20:17] Speaker 00:
The evidence on that was overwhelming.

[00:20:19] Speaker 00:
And the board cited it, appendix 22 to 23, appendix 60 to 62.

[00:20:26] Speaker 00:
Pratt never contested that.

[00:20:28] Speaker 02:
Well, that's fine that using a geared

[00:20:31] Speaker 02:
turbo fan engine as opposed to a non-geared turbo fan engine will increase the overall engine efficiency on a conceptual qualitative level.

[00:20:42] Speaker 02:
Fine.

[00:20:43] Speaker 02:
But now we're talking about something different, aren't we?

[00:20:45] Speaker 02:
We're talking about how do you get to be super high levels of power density that are recited in the claim.

[00:20:54] Speaker 02:
And the only thing I saw where the board tied anything in the prior art

[00:21:00] Speaker 02:
or anything within the knowledge of a skilled artisan, to reach that level of a power density was purely based on whatever NIP's futuristic design would yield, assuming that we could ever build NIP's futuristic design.

[00:21:18] Speaker 00:
I would respectfully disagree, Your Honor.

[00:21:20] Speaker 02:
So where can we find that in the board decision?

[00:21:24] Speaker 00:
With respect, okay, first of all,

[00:21:27] Speaker 00:
Back to the issue of the power density.

[00:21:33] Speaker 00:
The board again, the board found the power density is known in what was a results effective variable.

[00:21:41] Speaker 00:
And that's a point that Pratt did not contest in its briefing.

[00:21:45] Speaker 00:
And that starts at page 54 of the board's analysis.

[00:21:51] Speaker 00:
With respect to the other evidence that was before the board, as we showed,

[00:21:58] Speaker 00:
Glebe teaches a power density directly square in the middle of the range.

[00:22:05] Speaker 00:
That was in our- I'm sorry.

[00:22:06] Speaker 02:
Mr. Ferguson, I just want to give you another chance because this, my question that I asked before to me is absolutely pivotal to how I think about this case and how I ultimately choose to vote on this case.

[00:22:20] Speaker 02:
And as I understand it, it all comes down to whether a skilled artist can make the claimed invention

[00:22:29] Speaker 02:
And the evidence you put forth for purposes of challenging claims three and 16 were NIPS disclosure.

[00:22:39] Speaker 02:
And in fact, the board relied solely on NIPS disclosure, at least based on how I saw the board opinion.

[00:22:47] Speaker 02:
And so I'm asking you, what was it about NIPS disclosure that can show me that I can feel satisfied that it was reasonable to find that NIPS disclosure

[00:22:59] Speaker 02:
is good enough to enable a skilled artisan to make your claimed invention?

[00:23:03] Speaker 02:
Or alternatively, to what extent did the board rely on anything else other than NIPP's disclosure to support and supplement NIPP's disclosure to reach the finding that a skilled artisan could make this claimed invention with the super high power density value?

[00:23:23] Speaker 00:
Got it, Your Honor.

[00:23:24] Speaker 00:
First of all, I don't think it's a super high power density because, again, Glebe was right in the middle and the Glebe reference was... Glebe is not part of this particular challenge to claims three and 16, right?

[00:23:36] Speaker 00:
Correct.

[00:23:36] Speaker 00:
That's right, Your Honor.

[00:23:37] Speaker 00:
Okay.

[00:23:37] Speaker 00:
So let me say this, then, with respect to your question.

[00:23:41] Speaker 00:
What GE put forward below and what the Board relied on was that when you look at, when persons of ordinary skill look at a reference like NIT,

[00:23:52] Speaker 00:
They use simulation software to design the engine and to test the engine.

[00:24:00] Speaker 00:
And that's what we relied on, which is called the gas-turb design software.

[00:24:07] Speaker 00:
Now, the reason you do this is because, as our expert testified, it's prohibitively expensive to try to build prototypes to cut metal, so to speak.

[00:24:19] Speaker 00:
in order to, you know, try to construct an engine that meets what's in the prior art.

[00:24:25] Speaker 00:
That's at appendix 4977.

[00:24:29] Speaker 00:
Using Gas-Turb, our expert, Dr. Attia, was able to successfully construct a working model of the NIF engine

[00:24:41] Speaker 00:
that does not rely on these futuristic materials.

[00:24:45] Speaker 00:
That's not needed because the claims here don't require any specific materials.

[00:24:51] Speaker 00:
What Dr. Atiyah showed is that a person with ordinary skill in the art would realize by building what's constructed in Figure 13 of NEP that you would get with all of the materials that are disclosed in NEP, not the structural materials but the operating parameters,

[00:25:09] Speaker 00:
You would get, what he testified was, it's a well-behaved engine with thermodynamic properties that are well within expectations.

[00:25:18] Speaker 00:
That's at Appendix 781.

[00:25:21] Speaker 00:
And he specifically also said that his simulation.

[00:25:26] Speaker 00:
I'm sorry, what page was that?

[00:25:30] Speaker 00:
Appendix 781, which is Dr. Atiyah's analysis.

[00:25:33] Speaker 00:
And I'll provide more data on that.

[00:25:36] Speaker 00:
He testified that sufficient data was provided in Nip's paper to construct a model of his engine.

[00:25:43] Speaker 00:
He used the gas turbine software to do that.

[00:25:48] Speaker 00:
He showed that his inputs met Nip's stated performance goals, quote, nearly perfectly.

[00:25:55] Speaker 00:
and that the result was, quote, well consistent with expectations of high bypass turbofan engines and that the results showed a well behaved engine with thermodynamic properties that are well within expectations.

[00:26:11] Speaker 00:
The board relied on Dr. Atiyah's findings that an engine, a person of oriented skill in the art could construct an engine that would meet claim one regardless of whether

[00:26:26] Speaker 00:
these alleged futuristic materials were needed or not.

[00:26:32] Speaker 02:
And where did the board say that?

[00:26:34] Speaker 02:
What you just said and relied on A781.

[00:26:36] Speaker 02:
That's what I've been looking for.

[00:26:38] Speaker 00:
OK.

[00:26:51] Speaker 02:
And I would assume you're also, there's something probably in your petitioner reply that cited to and relied on A781 for why that a skilled artisan would be able to make the claimed engine based on NIPP's disclosure?

[00:27:07] Speaker 00:
Absolutely, Your Honor.

[00:27:08] Speaker 00:
It's Appendix 781, which is, that's Dr. Attia's analysis

[00:27:18] Speaker 02:
I got that.

[00:27:19] Speaker 02:
I'm talking about your petition or reply and the board's decision.

[00:27:23] Speaker 02:
Okay.

[00:27:23] Speaker 00:
That was relying on this passage from Dr. Atiyah.

[00:27:27] Speaker 00:
So, for example, Your Honor, I'm looking at page 42 of the opinion, page 42, 43, and 44 of the board's opinion, and you'll see that

[00:27:45] Speaker 00:
The board is analyzing, and the board is citing to Dr. Atiyah.

[00:27:50] Speaker 00:
That's exhibit 1003, which is what the board is studying to.

[00:27:54] Speaker 00:
That's the declaration.

[00:27:58] Speaker 00:
And then you'll see references to appendix A, which is, for example, on page 43.

[00:28:07] Speaker 03:
Can I ask you a thought, Mr. Ferguson?

[00:28:10] Speaker 00:
Yes.

[00:28:12] Speaker 00:
Cites in the board's opinion to dr. Attia's declaration and in particular the appendix a paragraphs like paragraphs 2 and 11 which are at page 43 of the opinion That is the board relying on the factual findings from dr. Attia as I cited at appendix 781 that nips engine could be simulated and successfully constructed

[00:28:40] Speaker 00:
and therefore is enabled with respect to the claimed invention.

[00:28:49] Speaker 03:
Any further?

[00:28:51] Speaker 03:
No.

[00:28:53] Speaker 03:
All right.

[00:28:54] Speaker 03:
Thank you, Mr. Ferguson.

[00:28:56] Speaker 03:
Ms.

[00:28:56] Speaker 03:
Dignan has five minutes for a bottle.

[00:29:00] Speaker 01:
Thank you, Your Honor.

[00:29:01] Speaker 01:
I'm going to jump in and talk about these appendix sites that council just referenced.

[00:29:06] Speaker 01:
So an appendix 781,

[00:29:09] Speaker 01:
Dr. Atiyah talks about specific thrust values.

[00:29:12] Speaker 01:
They're roughly, you know, 28,000 and 30,000 town force that he used in his model.

[00:29:18] Speaker 01:
And then if you flip back to appendix page,

[00:29:23] Speaker 01:
Again, there's more data about his model.

[00:29:27] Speaker 01:
If you look at the four in a circle, that's the OPER, overall pressure ratio of 87.

[00:29:33] Speaker 01:
His model adopts the attributes in NIP that can be achieved only because NIP is using futuristic materials.

[00:29:41] Speaker 01:
I refer the court to appendix 902 to 04 of NIP, where it specifically says that the OPER is able to be achieved.

[00:29:53] Speaker 01:
due to the use of advanced composite materials and the temperature as well.

[00:30:01] Speaker 01:
The board on the same page as council cited, 42 through 44, rejected the argument that Pratt made that Dr. Ortiz thrust values were too low.

[00:30:12] Speaker 01:
It rejected that argument because it said, look, this futuristic engine of figure 13 is lighter and more efficient.

[00:30:19] Speaker 01:
But those same pages, appendix 902 to 04,

[00:30:23] Speaker 01:
NIP teaches us the only reason it can be lighter and more efficient is because of the materials that are used, lighter materials and advanced materials.

[00:30:33] Speaker 01:
So the entire model and the board's analysis of the launch factors and of the thrust and the volume calculation are all based on NIP teaching that these values can be achieved only by using these unavailable futuristic materials.

[00:30:49] Speaker 01:
Ms.

[00:30:50] Speaker 02:
Degnan, when Dr. Adia at A781 talked about how sufficient data is provided in NIPS paper to construct a model of his engine, when Dr. Adia said the word model, he's not talking about an actual physical model.

[00:31:07] Speaker 02:
He's talking about a computer software model.

[00:31:10] Speaker 01:
That's exactly right, Judge Chen.

[00:31:12] Speaker 01:
It is a computer model.

[00:31:15] Speaker 02:
And then an A42 to 44, the board's analysis.

[00:31:19] Speaker 02:
that relies on Dr. Atiya's testimony?

[00:31:23] Speaker 02:
Is this all directed to whether or not the skilled artisan could figure out how to calculate a power density value from NIP's disclosure as opposed to whether someone could make a claimed turbofan with the power density value based on NIP's disclosure?

[00:31:48] Speaker 01:
Judge Chen, you are exactly right.

[00:31:50] Speaker 01:
That's exactly what the board has done, and you're assessing that as correct.

[00:31:57] Speaker 01:
With respect to counsel's position that the materialers are not recited in the claim, it harkens back to this court's case law relating to really thought experiments.

[00:32:09] Speaker 01:
Thought experiments are not enabled prior art, and the cases that I think are most apropos are the chemical compound cases.

[00:32:16] Speaker 01:
where this court has held on many occasions that prior references that disclose the compound by chemical formula are not enabled unless a known or obvious method of synthesizing the compound existed.

[00:32:29] Speaker 01:
That method of synthesizing the compound is not always in the claims, but the claims nevertheless are not, the prior is nevertheless not enabled despite the nature of those claims not requiring the synthesization.

[00:32:44] Speaker 01:
So those would be the main points I want to make, Your Honor.

[00:32:49] Speaker 01:
And then I'll close with the idea just to bring this Court back to the burden shifting.

[00:32:54] Speaker 01:
It was GE bore the burden to bring in evidence.

[00:32:56] Speaker 01:
There's no question GE did not dispute that Pratt brought in the evidence to show robust presumption that NIP was enabled.

[00:33:04] Speaker 01:
It rested on its false and wrong impression that the law assembly didn't require it to provide any evidence because the claims didn't recite materials.

[00:33:14] Speaker 01:
and because enablement is not necessary to be proved with respect to obviousness.

[00:33:19] Speaker 02:
So on respect to... Ms.

[00:33:20] Speaker 02:
Stegnant, if... Let's say we agreed with you that there was a mistake by the board in how it analyzed the enablement question for the prior art.

[00:33:33] Speaker 02:
Would that require a remand?

[00:33:37] Speaker 02:
Because in our view, the board did an incomplete, insufficient legal analysis

[00:33:43] Speaker 02:
or would it be a reversal?

[00:33:46] Speaker 01:
So, Your Honor, we think in this case it would be a reversal, given the one-sided nature of the evidence.

[00:33:52] Speaker 01:
And Owens Corning supports the idea that, you know, given that DE never disputed that the materials were unavailable at the time of the 715 patent, never put in any evidence, we think this would be a case where remand would not be necessary and this court could reverse.

[00:34:11] Speaker 03:
Thank you, Ms.

[00:34:12] Speaker 03:
Degman.

[00:34:12] Speaker 03:
We appreciate the arguments of both of you and the case will be submitted.

[00:34:19] Speaker 01:
The Honorable Court is adjourned until tomorrow morning at 10 a.m.