United Technologies Corporation v. General Electric Company

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
UNITED TECHNOLOGIES CORPORATION,
Appellant
v.
GENERAL ELECTRIC COMPANY,
Appellee
______________________
2018-1600
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
01289.
______________________
Decided: January 25, 2019
______________________
L AUREN ANN D EGNAN , Fish & Richardson PC, Wash-
ington, DC, argued for appellant. Also represented by
CHRISTOPHER D RYER .
BRIAN E. F ERGUSON, Weil, Gotshal & Manges LLP,
Washington, DC, argued for appellee. Also represented
by STEPHEN BOSCO, CHRISTOPHER P EPE , MEGAN
WANTLAND; ANISH R. D ESAI, New York, NY.
______________________

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UNITED TECHNOLOGIES CORP . v. GENERAL ELECTRIC
COMPANY
2
Before P ROST , Chief Judge, L OURIE and STOLL ,
Circuit Judges.
P ROST , Chief Judge.
Appellant United Technologies Corp. (“UTC”) appeals
a final written decision of the U.S. Patent and Trademark
Office’s Patent Trial and Appeal Board (“Board”) in
IPR2016-01289. The Board concluded that appellee
General Electric Co. (“GE”) showed that claims 1–14 of
U.S. Patent No. 7,060,360 (the “’360 patent”) are un-
patentable. Because the Board based its conclusion on an
incorrect claim construction, we vacate the Board’s deci-
sion and remand for consideration under the proper
construction.
I
GE petitioned for inter partes review (“IPR”) of claims
1–14 of the ’360 patent, entitled “Bond Coat for Silicon
Based Substrates.” The ’360 patent generally relates to a
coating to protect a silicon-containing substrate. Such
substrates are used in high-temperature, aqueous envi-
ronments (e.g., combustors and turbines in gas turbine
engines). ’360 patent col. 1 ll. 7–18. The patent describes
a silicon substrate, a barrier layer, and a bond layer
between them. J.A. 3; see ’360 patent col. 1 ll. 19–24 &
Fig. 1a (describing prior art); id. at claim 1.
The Board treated claim 1 as illustrative. Claim 1
states:
1. An article comprising a silicon based substrate,
at least one environmental barrier layer selected
from the group consisting essentially of an alka-
line earth aluminosilicate based on barium and
strontium, and yttrium silicate, and a bond layer
between the substrate and the environmental bar-
rier layer, the bond layer comprises an alloy com-

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UNITED TECHNOLOGIES CORP. v. GENERAL ELECTRIC
COMPANY
3
prising a refractory metal disilicide/silicon eutec-
tic.
’360 patent claim 1 (emphasis added).
The parties disputed the construction of “bond layer.”
GE argued that “bond layer” should be defined with
reference to its location. See J.A. 58 (arguing that “bond
layer” should mean “any layer located between at least
two other layers or between the substrate and another
layer”). UTC argued that “bond layer” should be inter-
preted as having some adherence quality. J.A. 1361
(arguing that “bond layer” should mean “a layer designed
to adhere another layer to a substrate”). UTC argued
that the plain and ordinary meaning of “bond” compelled
such an interpretation. It also cited extrinsic evidence
indicating that a bond layer was commonly understood in
the pertinent art to mean a layer having an adherence
quality. J.A. 1356–61.
In its final written decision, the Board rejected UTC’s
proposed construction and construed “bond layer” as “any
layer located between at least two other layers or between
the substrate and another layer and which comprises an
alloy comprising a refractory metal disilicide/silicon
eutectic.” J.A. 9 (internal quotation marks and citation
omitted). With this construction, the Board proceeded to
find claims 1–14 unpatentable.
UTC appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
II
We review the ultimate question of claim construction
de novo, with any underlying fact findings reviewed for
substantial evidence. Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S. Ct. 831, 838 (2015); Praxair Distrib., Inc. v.
Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1031
(Fed. Cir. 2018) (citing HTC Corp. v. Cellular Commc’ns
Equip., LLC, 877 F.3d 1361, 1367 (Fed. Cir. 2017)).

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UNITED TECHNOLOGIES CORP . v. GENERAL ELECTRIC
COMPANY
4
Claim terms are generally given their ordinary and
customary meaning, which is “the meaning that the term
would have to a person of ordinary skill in the art in
question at the time of the invention.” Phillips v. AWH
Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).
In addition to the intrinsic evidence (i.e., the claims
themselves, the specification, and the prosecution histo-
ry), extrinsic evidence may be helpful in determining how
an ordinary artisan would have understood a claim term
at the time of the invention. Id. at 1317–18. These claim
construction principles are important even in an IPR like
this one, in which the claims are given the “broadest
reasonable interpretation” consistent with the specifica-
tion.1 See Realtime Data, LLC v. Iancu, __ F.3d __, 2019
WL 149835, at *5 (Fed. Cir. Jan. 10, 2019).
UTC argues that the Board erred by construing “bond
layer” to not require any adherence quality. UTC notes
that the plain and ordinary meaning of “bond” means
adherence. Appellant’s. Br. 29 (citing J.A. 1082 (general-
purpose dictionary defining “bond” as “an adhesive,
cementing material, or fusible ingredient that combines,
unites, or strengthens” and “to cause to adhere firmly”)).
It also cites extrinsic evidence to argue that this common
understanding was prevalent in the art. E.g., J.A. 405–06
(“A silicon bond layer further improved the EBC durabil-
ity by providing stronger bonding of the coating.”);
J.A. 878 (“Whatever the coating method may be, one of
the vital aspects is the surface state of substrate and the
1 This standard has recently changed. For IPR pe-
titions filed on or after November 13, 2018, the Board will
apply the Phillips claim-construction standard. See
Changes to the Claim Construction Standard for Inter-
preting Claims in Trial Proceedings Before the Patent
Trial and Appeal Board, 83 Fed. Reg. 51340 (Oct. 11,
2018) (to be codified at 37 C.F.R. pt. 42).

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UNITED TECHNOLOGIES CORP. v. GENERAL ELECTRIC
COMPANY
5
bond coat to ensure sound adhesion.”); J.A. 1733 (“The
mullite coating in the . . . system is somewhat analogous
to the bond coat in conventional TBC’s, in the sense that
it provides bonding as well as oxidation protection.”); see
Appellant’s Br. 29. We agree with UTC.
GE does not argue that the claims and specification
give any different meaning to the word “bond.” Rather, it
argues that the claims and specification “describe the
‘bond layer’ solely in terms of its location and material
composition.” Appellee’s Br. 29. But describing “bond
layer” in terms of its location and material composition
would not be inconsistent with that same “bond layer”
having an adherence quality. In other words, the claimed
“bond layer” may have additional requirements as to its
location or material composition. See ’360 patent claim 1.
But those additional requirements do not mean that the
“bond layer” does not also have to bond. The specifica-
tion’s description of “bond layer” with reference to its
location and material composition does not indicate an
intent to depart from the term’s plain and ordinary mean-
ing with respect to bonding. We have considered GE’s
other claim-construction arguments but find them unper-
suasive. For the foregoing reasons, we adopt UTC’s
proposed construction and construe “bond layer” as “a
layer of material designed to adhere another layer to a
substrate.”
Because the Board based its unpatentability conclu-
sion on an incorrect construction of “bond layer,” we
vacate the Board’s final written decision and remand for
consideration under the proper construction.
VACATED AND REMANDED
COSTS
Costs to Appellant.

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