GENERAL ELECTRIC COMPANY v TAS ENERGY INC.

Patent Trial and Appeal Board

May 13, 2014

10206856 (P.T.A.B. May. 13, 2014)

Trials@uspto.gov Paper 11
Tel: 571-272-7822 Entered: May 13, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
GENERAL ELECTRIC COMPANY
Petitioner
v.
TAS ENERGY INC.
Patent Owner
_______________

Case IPR2014-00163
Patent 6,769,258 B2
_______________

Before JOSIAH C. COCKS, BARRY L. GROSSMAN, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
A. Background
Petitioner filed a Corrected Petition to institute an inter partes review of
claims 1–15 and 22–27 of U.S. Patent No. 6,769,258 B2. Paper 5 (“Pet.”); Ex.
1001 (“the ’258 Patent”). Patent Owner filed a Preliminary Response. Paper 10
(“Prelim. Resp.”). The Board has jurisdiction under 35 U.S.C. § 314.
The standard for instituting an inter partes review is set forth in 35 U.S.C.
§ 314(a), which provides as follows:
THRESHOLD.—The Director may not authorize an inter
partes review to be instituted unless the Director
determines that the information presented in the petition
filed under section 311 and any response filed under
section 313 shows that there is a reasonable likelihood
that the petitioner would prevail with respect to at least 1
of the claims challenged in the petition.
On this record, we find that Petitioner does not establish a reasonable
likelihood of prevailing with respect to at least one challenged claim of the ’258
Patent. Accordingly, the Board denies the Petition and declines to institute an inter
partes review of the ’258 Patent.
B. Related Proceedings
Petitioner filed a Petition requesting review of U.S. Patent No. 6,318,065 B1
(“the ’065 Patent”) in IPR2014-00161. Petitioner filed a Petition requesting
review of U.S. Patent No. 6,470,686 B2 (“the ’686 Patent”) in IPR2014-00162.
Petitioner filed a Petition requesting review of U.S. Patent No. RE44,079 E (“the
’079 Patent”) in IPR2014-00342. The ’686 Patent claims continuity to the ’065
Patent. The ’258 Patent claims continuity to the ’686 Patent and the ’065 Patent.
The ’079 Patent claims continuity to the ’686 Patent, the ’065 Patent, and the ’258
Patent.
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Each of the ’065 Patent, the ’686 Patent, the ’258 Patent, and the ’079 Patent
is asserted against San Diego Gas & Electric, who is a customer of Petitioner, in
TAS Energy, Inc. v. San Diego Gas & Electric Co., No. 3:12-cv-2777-GPC (S.D.
Cal., filed Nov. 16, 2012). See Pet. 5–6; see Ex. 2002.
C. The ’258 Patent
The invention recited in the challenged claims is a method of cooling inlet
air to a gas turbine. Ex. 1001, col. 1, ll. 15–16. The method includes passing inlet
air through an air chiller operably connected to a gas turbine power plant that
includes the gas turbine. Id. at col. 28, ll. 6-10. Liquid water passes, at a first flow
rate, through sequentially positioned water chillers to cool the liquid water. Id. at
col. 28, ll. 11–15. The cooled liquid water passes through the air chiller to cool the
inlet air. Id. at col. 28, ll. 16–18. The liquid water passes, at a second flow rate
lower than the first flow rate, through the sequentially positioned water chillers to
cool the liquid water. Id. at col. 28, ll. 19–24. The cooled liquid water passes
through the air chiller to cool the inlet air. Id. at col. 28, ll. 25–27.
Independent claim 1 of the ’258 Patent, which is illustrative of the claims
under consideration, follows:
1. A method of chilling inlet air for a gas turbine
power plant, compromise [sic]:
(a) passing inlet air through an air chiller that
includes an opening for receiving the inlet air and that is
operable [sic] connected to a gas turbine power plant that
includes at least one gas turbine, and at least one gas
turbine inlet which receives the inlet air;
(b) passing liquid water through two or more
sequentially positioned water chillers at a first flow rate
to reduce the temperature of the liquid water, each water
chiller including a conduit through which the liquid water
is capable of passing;
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(c) passing the liquid water having the first flow
rate through the air chiller in an amount sufficient to
lower the temperature of the inlet air;
(d) reducing the flow rate of the liquid water
passing through the water chillers;
(e) passing the liquid water through the water
chillers at a second flow rate to reduce the temperature of
the liquid water, the second flow rate being lower than
the flow rate; and
(f) passing the liquid water having the second flow
rate through the air chiller in an amount sufficient to
lower the temperature of the inlet air.

D. References
Petitioner relies upon the following references in the Petition:
Turbine Inlet Chilling Systems (hereinafter “the TAS Website”) (Ex. 1004),
Internet Archive Wayback Machine,
http://web.archive.org/web/20001017171450/http:/www.turbineairsystems.com/
tic_systems.htm

CoolTools™ Chilled Water Plant Design and Specification Guide, CoolTools™
Report #CT-016, Pacific Gas and Electric Company, May 2000 (hereinafter
“CoolTools”) (Ex. 1005).

1995 ASHRAE1 Handbook – Heating, Ventilating, and Air-Conditioning
APPLICATIONS, Chapter 40 THERMAL STORAGE, American Society of
Heating, Refrigerating and Air-Conditioning Engineers, Inc., 1995 (hereinafter
“ASHRAE Thermal Storage”) (Ex. 1006).

Sanjeev Jolly, et al., Inlet Air Cooling for a Frame 7EA based Combined Cycle
Power Plant, presented at the Power-Gen International, Dallas, Texas, December
1997 (hereinafter “Jolly”) (Ex. 1007).

1 ASHRAE is the acronym for the American Society of Heating, Refrigerating and
Air-Conditioning Engineers, Inc.
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TRANE®, Applications Engineering Manual, Multiple-Chiller-System Design and
Control, SYS-APM001-EN, American Standard Inc., March 2001 (hereinafter “the
Trane Manual”) (Ex. 1008).

Charles E. Dorgan, et al., DESIGN GUIDE FOR COOL THERMAL STORAGE,
American Society of Heating, Refrigerating and Air-Conditioning Engineers, Inc.,
1993 (hereinafter “ASHRAE Cool Storage Guide”) (Ex. 1009).

Thomas B. Hartman, Design Issues of Variable Chilled-Water Flow Through
Chillers, SA-96-12-2, date unknown2 (hereinafter “Hartman”) (Ex. 1010).

1996 ASHRAE Handbook – Heating, Ventilating, and Air-Conditioning SYSTEMS
AND EQUIPMENT, Chapter 21 AIR-COOLING AND DEHUMIDIFYING
COILS, American Society of Heating, Refrigerating and Air-Conditioning
Engineers, Inc., 1996 (hereinafter “ASHRAE Coils”) (Ex. 1011).
See Pet. 9–13.
E. Asserted Grounds of Unpatentability
Petitioner asserts the unpatentability of the claims as follows:
References Basis Under 35 U.S.C. Claims Challenged
The TAS Website and
CoolTools
§ 103 1–8, 12–15, and 22–27
The TAS Website, CoolTools,
and ASHRAE Coils
§ 103 9–11
ASHRAE Thermal Storage and
CoolTools
§ 103 1–8, 12–15, and 22–27
ASHRAE Thermal Storage,
CoolTools, and ASHRAE
Coils
§ 103 9–11
Jolly and the Trane Manual § 103 1–8, 12–15, and 22–27
Jolly, the Trane Manual, and
ASHRAE Coils
§ 103 9–11
ASHRAE Thermal Storage,
ASHRAE Cool Storage Guide,
and Hartman
§ 103 1–8 and 12–15

2 Asserted by Petitioner to be dated June, 1996. See Pet. v.
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References Basis Under 35 U.S.C. Claims Challenged
ASHRAE Thermal Storage,
ASHRAE Cool Storage Guide,
Hartman, and ASHRAE Coils
§ 103 9–11
See Pet. 14–15.

II. DISCUSSION
A. Claim Construction
Consistent with the statute and the legislative history of the Leahy-Smith
America Invents Act (“AIA”), the Patent Trial and Appeal Board construes the
claims of an unexpired patent using the broadest reasonable interpretation in light
of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
Claim terms carry their ordinary and customary meaning, as would be understood
by one of ordinary skill in the art in question and in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
Any special definition for a claim term must be set forth in the specification with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475,
1480 (Fed. Cir. 1994). We construe the following claim terms in accordance with
the above.
1. Gas turbine power plant
Petitioner proposes that we should construe the claim term “gas turbine
power plant” to mean “any gas turbine system driven by combustion gas.” Pet.
15–16. Patent Owner asserts that Petitioner’s proposed construction is “too broad
to be reasonable.” Prelim. Resp. 12. Patent Owner proposes that we construe the
term “gas turbine power plant” in accord with its “plain and ordinary meaning,”
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which Patent Owner asserts is “an electric utility generating station that utilizes
one or more gas turbines.” Id. (citing Ex. 2003, p. 3).
The Specification does not provide any special definition for the term “gas
turbine power plant.” Petitioner cites to a passage from the Specification, which
describes a conventional “gas turbine system” as one including a power turbine
that is driven by “combustion gas, thereby producing an exhaust gas and useful
power.” Pet. 16-17 (citing Ex. 1001, col. 1, ll. 13–18). Patent Owner does not
refer to the Specification in proposing a definition for this term. Prelim. Resp. 12.
Instead, Patent Owner relies on a dictionary definition of the phrase “power plant”
to support Patent Owner’s proposed definition. Id. (citing Ex. 2003, p. 3). The
dictionary definition provided by Patent Owner provides two definitions, one is
specific, and the other is more generic. Ex. 2003, p. 3. The specific definition is
“an electric utility generating station.” Id. The broader, more generic definition is
“an engine and related parts supplying the motive power of a self-propelled object
(as a rocket or automobile).” Id. Patent Owner’s “Summary of the Patented
Technology” states “natural gas power plants generate electricity using turbines
(similar to those used in jet engines).” Prelim. Resp. at 5.
Based on the evidence before us at this stage of the proceeding and for
purposes of this Decision, the broadest reasonable construction in light of the
Specification of the claim term “gas turbine power plant” is a “gas turbine power
source driven by combustion gas, thereby producing an exhaust gas and useful
power.” See Ex. 1001, col. 1, ll. 18–23.
2. Two or more sequentially positioned water chillers
Petitioner proposes that we should construe the claim term “two or more
sequentially positioned water chillers” to mean “two or more water chillers
arranged in series or at least one duplex chiller.” Pet. 15–16. Patent Owner does
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not propose a construction, but instead “reserves judgment on [Petitioner’s]
construction” and states it will “propose a construction . . . after it has had the
opportunity to depose GE’s expert and to determine what issue [Petitioner’s]
proposed construction was intended to address, if any.” Prelim. Resp. 12–13.
Patent Owner further states the term “needs no construction beyond the plain and
ordinary meaning.” Id. at 13.
Neither Petitioner nor Patent Owner points to anywhere in the Specification
that provides a special definition for the term “sequentially positioned water
chillers.” Petitioner cites to a passage from the Specification describing an
embodiment of the invention and which states in part, “the circulating water is
passed through at least two water chillers, which can form part of a single ‘duplex
chiller.’” Pet. 17 (citing Ex. 1001, col. 22, ll. 49–52). The Specification does not
define “duplex chiller,” and Petitioner does not offer a definition. Petitioner does
not explain whether a duplex chiller always includes two sequentially positioned
water chillers. Further, in the above passage, the ’258 Patent only states that two
or more chillers may form part of a duplex chiller, not that every duplex chiller has
at least two sequentially positioned water chillers, for example.
Based on the evidence before us at this at this stage of the proceeding and
for purposes of this Decision, we agree with Patent Owner that the term should be
given its plain and ordinary meaning. To that end, we agree with Petitioner that
the claim term “two or more sequentially positioned water chillers” encompasses
“two or more water chillers arranged in series.” We do not agree with Petitioner,
however, that the claim term necessarily encompasses “at least one duplex [water]
chiller” for the reasons discussed above.

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B. Asserted Grounds of Unpatentability – Obviousness
1. The TAS Website and CoolTools, and
The TAS Website, CoolTools, and ASHRAE Coils
Petitioner contends that the combination of the TAS Website (Ex. 1004) and
CoolTools (Ex. 1005) renders obvious claims 1–8, 12–15, and 22–27. Pet. 23–26,
32–43, and 44–57. Petitioner further contends that the combination of the TAS
Website, CoolTools, and ASHRAE Coils (Ex. 1011) renders obvious claims 9-11,
which depend from independent claim 1. Id. at 43–44. In particular, Petitioner
asserts that the TAS Website teaches all the limitations of independent claim 1
except passing liquid water through sequentially positioned water chillers at a first
flow rate and a second flow rate lower than the first flow rate. Id. at 23–25 (citing
Ex. 1004). Petitioner asserts that CoolTools teaches passing liquid water at first
and second flow rates. Id. at 23, 25–26 (citing Ex. 1005).
Assuming arguendo that Petitioner’s above-characterizations of the TAS
Website and CoolTools are correct, Petitioner still does not establish that it would
have been obvious to combine the TAS Website with CoolTools as Petitioner
proposes. In KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)), the Supreme Court held
that “rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” As discussed below,
we find that none of Petitioner’s proffered reasons for combining CoolTools with
the TAS Website is sufficient to support a conclusion of obviousness.
First, Petitioner asserts, “one of ordinary skill in the art would know that
variable flow [i.e., passing liquid water through sequentially positioned water
chillers at first and second flow rates] was an available design option.” Pet. 23
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(emphasis added). However, this statement is conclusory and does not present
evidence establishing that “variable flow” is, or was ever, a “know[n] . . . design
option.” Further, even if Petitioner’s statement is correct, the statement does not
address what one of ordinary skill in the art would have known at the time of filing
the application issuing as the ’258 Patent, and thus is not relevant to the
determination of obviousness.
Petitioner then asserts the following:
Although the TAS Website does not specifically
discuss variable flow, it describes the ability to
“modulate the quantity of chilled water” in a chilled
water system to maintain desired leaving air
temperatures[ ] (p. 6 [of the TAS Website]). Thus, the
TAS Website discloses that flow rates can vary in the
system.

Id. at 25 (citing Ex. 1004).

Even if this statement is correct that the TAS Website discusses some type of
“variable flow,” however, Petitioner does not establish that the TAS Website
teaches or suggests that water passing through sequentially positioned water
chillers, as opposed to water passing through an air chiller for example, may pass
at “flow rates [that] can vary in the system.” See Prelim. Resp. 17–18. Further,
based on our review of the TAS Website, it appears more likely that the portion of
the TAS Website cited by Petitioner refers to varying the flow rate of water
through the air chiller as asserted by Patent Owner, and not the quantity of water
flowing through the water chillers as alleged by Petitioner. For example, the TAS
Website states that, “the chilled water is pumped from the chiller to a . . . chilled
water coil . . . [that] is mounted in the turbine inlet filter section.” Ex. 1004, 5
(emphasis added). The portion of the TAS Website cited in the Petition states that
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“[t]he controls system for the chilled water coil . . . [may] modulat[e] the quantity
of chilled water.” Id. at 6. Thus, it appears when we read these two portions of the
TAS Website together, the TAS Website is discussing varying water flow through
the air chiller.
Petitioner then asserts that “[v]ariable flow systems were a common
pumping strategy in use long before the [’]258 Patent was filed,” referencing
paragraph 41 of the Hydeman Declaration. Pet. 25 (citing Ex. 1014). However,
the cited portion of the Hydeman Declaration includes only conclusory statements,
such as “variable flow systems and the control systems for providing variable flow
were conventional, commercially-available systems,” but does not provide any
evidence establishing such a system was conventional. Ex. 1014, 24. Further, this
statement does not address whether the allegedly “conventional, commercially-
available [variable flow] systems” were used to vary water flow rates through
sequentially positioned water chillers as claimed in the ’258 Patent, as opposed to
varying water flow rates through an air chiller as described on the TAS Website.
The cited portion of the Hydeman Declaration also includes general
statements regarding alleged advantages that “variable flow systems” would
provide, such as “cost savings and energy savings (from reduction of pumping
energy at lower flows),” and “advantages [that] were readily discussed in the
literature at the time the [’]258 Patent was filed.” Ex. 1014, 24. To the extent that
the Declaration relies on documents other than CoolTools (discussed below) to
establish that such advantages would result, we note that the Declaration does not
disclose sufficiently the underlying facts or data forming the basis for the opinion,
and thus, we give these statements little weight. See 37 C.F.R. § 42.65. Further,
the Declaration does not establish that such purported advantages would be
provided by varying water flow through sequentially positioned water chillers as
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claimed in the ’258 Patent, as opposed to varying water flow through the air chiller
as described in the TAS Website.
With respect to the disclosure of CoolTools, Petitioner points out that
CoolTools does, in fact, teach passing water through sequentially positioned
chillers at first and second flow rates. See Pet. 25 (citing Ex. 1005). We note,
however, that Petitioner does not assert that CoolTools is concerned with, or
relevant to, cooling inlet air that is received by a gas turbine of a gas turbine power
plant as claimed in the ’258 Patent. See Prelim. Resp. 20–21. Further, although
CoolTools describes six chilled water distribution system applications, CoolTools
only shows one instance of variable primary flow (i.e., water flow through a water
chiller at first and second flow rates different from one another). See Ex. 1005,
Table 6-1, 146. However, neither the Petition nor the Hydeman Declaration
presents evidence or information establishing why the conditions related to this one
instance of variable flow through sequentially positioned chillers would be relevant
to the system described in the TAS Website. “A statement that modifications of
the prior art to meet the claimed invention would have been ‘well within the
ordinary skill of the art at the time the claimed invention was made’ because the
references relied upon teach that all aspects of the claimed invention were
individually known in the art is not sufficient to establish a prima facie case of
obviousness without some objective reason to combine the teachings of the
references.” Ex parte Levengood, 28 USPQ2d 1300 (BPAI 1993); see KSR, 550
U.S. at 418, (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Thus, when taken as a whole and without additional evidence, we are not
persuaded that one with ordinary skill in the art would have applied CoolTools’
flow varying teachings to the system described in the TAS Website to arrive at the
claimed invention.
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Petitioner’s further statements regarding the combination of the TAS
Website and CoolTools are similarly unpersuasive. Neither the Petition nor the
Hydeman Declaration presents evidence or information establishing that
combining the TAS Website with CoolTools would result in the alleged advantage
(i.e., “that [s]ignificant pumping energy can be saved”). Pet. 25 (citing Ex. 1005,
80-82). Petitioner references a statement in CoolTools regarding the use of series
chillers when desiring a high delta-T. Id. (citing Ex. 1005). Assuming Petitioner’s
characterization of CoolTools is correct, the significance of this statement is not
understood, as neither the Petition nor the Hydeman Declaration adequately
explains why a “high delta-T” is relevant to the system of TAS Website or the
claims of the ’258 Patent.
As discussed above, we agree with Petitioner that, “CoolTools provides a
specific example of a chilled water system with variable flow and series chillers”
(Pet. 25 (citing Ex. 1005)) (emphasis by Petitioner). For the above reasons,
however, we find that CoolTools does not provide adequate reasons why one of
ordinary skill would have incorporated variable flow through sequentially
positioned chillers into the system of the TAS Website.
Finally, Petitioner asserts the following:
It would be obvious to one of ordinary skill in the
art at the time the [’]258 Patent was filed to modify the
inlet air cooling systems described in [the] TAS Website
(including series chillers) to use variable flow to obtain
the well-known advantages of those systems. (Hydeman
Decl., ¶56). Not only were the advantages of variable
flow well known to those of ordinary skill in the art,
these advantages were specifically discussed in
CoolTools.
Pet. 26 (citing Ex. 1014). These statements, however, are also conclusory, and
lack the required evidence necessary to establish, for example, that it was known to
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vary flow rates through sequentially positioned water chillers as opposed to an air
chiller, or that by doing so, the advantages discussed in CoolTools would, in fact,
result.
Based on the foregoing, we determine that Petitioner has not demonstrated a
reasonable likelihood that claim 1 is unpatentable over the TAS Website and
CoolTools. Petitioner relies on the TAS Website and CoolTools to teach similar
limitations of independent claims 22–27, as well as limitations of claims 2–8 and
12–15 that depend from independent claim 1. Pet. 32–43, 44–57. Thus, we
determine that Petitioner has not demonstrated a reasonable likelihood that any of
claims 2–8, 12–15, and 22–27 are unpatentable over the TAS Website and
CoolTools.
With respect to claims 9–11 that depend from claim 1, Petitioner relies on
ASHRAE Coils to teach limitations of the dependent claims. Pet. 43–44.
Petitioner does not rely on ASHRAE Coils to remedy the above-discussed
deficiencies with respect to claim 1. Thus, based on the foregoing, we determine
that Petitioner has not demonstrated a reasonable likelihood that any of claims 9–
11 are unpatentable over the TAS Website, CoolTools, and ASHRAE Coils.
2. ASHRAE Thermal Storage and CoolTools, and
ASHRAE Thermal Storage, CoolTools, and ASHRAE Coils
Petitioner contends that the combination of ASHRAE Thermal Storage (Ex.
1006) and CoolTools (Ex. 1005) renders obvious claims 1–8, 12–15, and 22–27.
Pet. 26–28, 32–43, and 44–57. Petitioner further contends that the combination of
ASHRAE Thermal Storage, CoolTools, and ASHRAE Coils (Ex. 1011) renders
obvious claims 9-11 that depend from independent claim 1. Id. at 43–44.
Specifically, Petitioner asserts that an obvious modification of ASHRAE Thermal
Storage teaches all the limitations of independent claim 1 except passing liquid
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water through sequentially positioned water chillers at first and second flow rates.
Id. at 26–27 (citing Ex. 1006 and Ex. 1014, 30). Petitioner again relies on
CoolTools to teach passing liquid water at first and second flow rates. Id. at 26, 28
(citing Ex. 1005).
Assuming arguendo that Petitioner’s above-characterizations of ASHRAE
Thermal Storage and CoolTools are correct, Petitioner still does not establish that it
would have been obvious to combine the modified ASHRAE Thermal Storage
with CoolTools as Petitioner proposes. Rather, for reasons similar to those
discussed above in section II.B.1., none of Petitioner’s proffered reasons for
combining variable flow from CoolTools with the modified system from ASHRAE
Thermal Storage is sufficient to support a conclusion of obviousness.
Thus, we determine that Petitioner has not demonstrated a reasonable
likelihood that claim 1 is unpatentable over the combination of ASHRAE Thermal
Storage and CoolTools. Petitioner relies on the combination of ASHRAE Thermal
Storage and CoolTools to teach similar limitations of independent claims 22–27, as
well as limitations of claims 2–8 and 12–15, which depend from independent claim
1. Pet. 32–43, 44–57. Therefore, we determine that Petitioner has not
demonstrated a reasonable likelihood that any of claims 2–8, 12–15, and 22–27 are
unpatentable over an obvious modification to ASHRAE Thermal Storage and
CoolTools.
With respect to claims 9–11, which depend from claim 1, Petitioner relies on
ASHRAE Coils to teach limitations of the dependent claims. Pet. 43–44.
Petitioner does not rely on ASHRAE Coils to remedy the above-discussed
deficiencies with respect to claim 1. Thus, we determine that Petitioner has not
demonstrated a reasonable likelihood that any of claims 9–11 are unpatentable over
the combination of ASHRAE Thermal Storage, CoolTools, and ASHRAE Coils.
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3. Jolly and the Trane Manual, and
Jolly, the Trane Manual, and ASHRAE Coils
Petitioner contends that the combination of Jolly (Ex. 1007) and the Trane
Manual (Ex. 1008) renders obvious claims 1–8, 12–15, and 22–27. Pet. 29–31,
32–43, and 44–57. Petitioner further contends that the combination of Jolly, the
Trane Manual, and ASHRAE Coils (Ex. 1011) renders obvious claims 9-11, which
depend from independent claim 1. Id. at 43–44. In particular, Petitioner asserts
that Jolly teaches all the limitations of independent claim 1 except i) sequentially
positioned water chillers, and ii) passing liquid water through the water chillers at
first and second flow rates. Id. at 29 (citing Ex. 1007). Petitioner asserts that the
Trane Manual teaches i) sequentially positioned water chillers, and ii) passing
liquid water through the chiller at first and second flow rates. Id. at 29–31 (citing
Ex. 1008).
Assuming arguendo that Petitioner’s above-characterizations of Jolly and
the Trane Manual are correct, Petitioner still does not establish that it would have
been obvious to combine Jolly with the Trane Manual as Petitioner proposes. As
discussed below, we find that none of Petitioner’s proffered reasons for combining
the Trane Manual with Jolly provide the necessary rational underpinning, see KSR
Int’l Co., 550 U.S. at 418, to support a conclusion of obviousness.
First, Petitioner asserts, “[a]lthough Jolly does not specifically describe
series chillers and variable flow systems, it would be obvious to combine these
well-known design choices for chilled water systems—as taught by the Trane
Manual—with inlet air cooling systems disclosed in Jolly.” Pet. 29 (emphasis
added). However, this statement is conclusory and does not present evidence
establishing that the Trane manual teaches “series chillers” or “variable flow
systems.” Further, even if this statement correctly characterizes the teachings of
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Jolly and the Trane Manual, the statement does not even address what one of
ordinary skill would have known at the time of filing the application issuing as the
’258 Patent, and thus, is not relevant at all to our determination of obviousness.
With respect to the modification of Jolly to include “variable flow” (i.e.,
passing liquid water through a water chiller at first and second flow rates),
Petitioner asserts the following:
The Trane Manual also describes variable-
primary-flow systems in which “water flow varies
throughout the entire system[—]through the evaporator
of each operating chiller as well as through the cooling
coils.” (p. 48).
Variable primary flow systems have some well-
known advantages over constant flow systems.
(Hydeman Decl., ¶¶41, 73). For example, by reducing
flow rates when possible, the energy required to drive the
pumps in the system can be reduced. (Id.). Some of
these advantages are also described in the Trane Manual
at pp. 40-41.

Pet. 30-31 (emphasis by Petitioner).

Even assuming the Trane Manual teaches passing liquid water through water
chillers at first and second flow rates (i.e., “variable flow” as characterized by
Petitioner), Petitioner does not assert that the Trane Manual is concerned with or
relevant to cooling inlet air that is received by a gas turbine of a gas turbine power
plant as claimed in the ’258 Patent. See Prelim. Resp. 23–24. Further, to the
extent that the Trane Manual separately teaches sequentially positioned chillers,
and passing liquid water through water chillers at first and second flow rates,
Petitioner has not established that the Trane Manual teaches or suggests passing
liquid water through sequentially positioned water chillers at first and second flow
rates. Rather, we note that the Trane Manual acknowledges, “[s]eries flow
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presents a new set of temperature and flow control challenges.” Ex. 1008, 37. The
Trane Manual also separately identifies challenges associated with variable flow
systems. Id. at 49. Further, we note that the section of the Trane Manual entitled
“Variable-Primary-Flow Systems” appears to show water chillers arranged in
parallel, not in series. Id. at 48. Thus, we agree with Patent Owner that Petitioner
does not establish sufficiently that the Trane Manual teaches or suggests variable
flow through sequentially positioned water chillers. See Prelim. Resp. 25.
Further, the above-referenced portions of the Hydeman Declaration do not
present evidence establishing that it would have been obvious to modify Jolly to
include passing liquid water through sequentially positioned water chillers at first
and second flow rates. For example, the Declaration states, “variable flow systems
and the control systems for providing variable flow were conventional,
commercially-available systems,” but does not provide any evidence of
conventionality, in view of our findings with respect to the teachings of the Trane
Manual. Ex. 1014, 25. The Declaration further states the following:
Variable primary flow systems (also referred to as
primary-only variable flow systems) have various
advantages over primary/secondary (decoupled) and
constant flow systems. For example, by reducing flow
rates when possible, the energy required to pump the
chilled water will be reduced. In addition, variable
primary flow systems have lower installed costs than
constant flow systems including savings for the coil
valves, coil bypass piping (which is not required for 2-
way valves) and the installation labor required in other
types of systems, such as those that have decoupled
secondary variable flow (i.e., variable flow only on the
chilled water distribution side). These advantages are
described in the Trane Manual at p. 48-49.

Id. at 34–35.
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We find, however, that the Declaration does not provide sufficient evidence
supporting the assertion that modifying Jolly to include passing liquid water
through sequentially positioned water chillers at first and second flow rates would
provide these advantages. As noted above, the advantages disclosed on pages 48
and 49 of the Trane Manual appear to be related to variable flow through water
chillers that are arranged in parallel. To the extent that the opinion in the
Declaration relies on documents other than Jolly, we note that the Declaration does
not disclose sufficiently any underlying facts or data forming the basis for the
opinion, and thus we assign little weight to the opinion. See 37 C.F.R. § 42.65.
Finally, Petitioner asserts:
In view of the well-known advantages of variable
flow systems, it would be obvious to apply the well-
known variable flow systems described in the Trane
Manual to the system described in Jolly—using either the
series or duplex chillers disclosed in Trane Manual—to
obtain the advantages of variable primary flow as taught
by Trane Manual. (Hydeman Decl., ¶74). Accordingly,
all the elements of claim 1 are disclosed in Jolly and
Trane Manual and it would be obvious to one of ordinary
skill in the art to combine these elements in the manner
recited in claim 1.

Pet. 31 (citing Ex. 1014).

These statements, however, are also conclusory, and lack the required
evidence necessary to establish, for example, that it was known to vary flow rates
through sequentially positioned water chillers, as opposed to water chillers
arranged in parallel, or that by doing so the advantages discussed in the Trane
Manual would result.
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Based on the foregoing, we determine that Petitioner has not demonstrated a
reasonable likelihood that claim 1 is unpatentable over Jolly and the Trane Manual.
Petitioner relies on Jolly and the Trane Manual to teach similar limitations of
independent claims 22–27, as well as limitations of claims 2–8 and 12–15, which
depend from independent claim 1. Pet. 32–43, 44–57. Thus, we determine that
Petitioner has not demonstrated a reasonable likelihood that any of claims 1–8, 12–
15, and 22–27 are unpatentable over Jolly and the Trane Manual.
With respect to claims 9–11, which depend from claim 1, Petitioner relies on
ASHRAE Coils to teach limitations of the dependent claims. Pet. 43–44. Based
on the foregoing, we determine that Petitioner has not demonstrated a reasonable
likelihood that any of claims 9–11 are unpatentable over Jolly, the Trane Manual,
and ASHRAE Coils.
4. ASHRAE Thermal Storage, ASHRAE Cool Storage Guide, and Hartman,
and
ASHRAE Thermal Storage, ASHRAE Cool Storage Guide, Hartman, and
ASHRAE Coils

Petitioner contends that the combination of ASHRAE Thermal Storage (Ex.
1006), ASHRAE Cool Storage Guide (Ex. 1009), and Hartman (Ex. 1010) renders
obvious claims 1–8 and 12–15. Pet. 31–32, 32–43, and 44–47. Petitioner further
contends that the combination of ASHRAE Thermal Storage, ASHRAE Cool
Storage Guide, Hartman, and ASHRAE Coils (Ex. 1011) renders obvious claims 9-
11 that depend from independent claim 1. Id. at 43–44. In particular, Petitioner
asserts that ASHRAE Thermal Storage and ASHRAE Cool Storage Guide teach all
the limitations of independent claim 1 except passing liquid water through
sequentially positioned water chillers at first and second flow rates. Id. at 31–32
(citing Ex. 1006 and Ex. 1009). Petitioner asserts that Hartman teaches passing
liquid water at first and second flow rates. Id. at 32 (citing Ex. 1010).
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Assuming arguendo that Petitioner’s above-characterizations of ASHRAE
Thermal Storage, ASHRAE Cool Storage Guide, and Hartman are correct,
Petitioner still does not establish that it would have been obvious to combine the
references as Petitioner proposes. As discussed below, we find that none of
Petitioner’s proffered reasons for combining Hartman with ASHRAE Thermal
Storage and ASHRAE Cool Storage Guide provides the necessary rational
underpinning, see KSR Int’l Co., 550 U.S. at 418, to support a conclusion of
obviousness.
With respect to the modification of ASHRAE Thermal Storage and
ASHRAE Cool Storage Guide to include variable flow, Petitioner asserts the
following:
The ASHRAE references do not describe variable
flow; however, it was a well-known, available design
choice. (Hydeman Decl., ¶¶80-81). Hartman
specifically recommends the use of variable flow to
reduce pumping requirements and provide other energy
efficiencies. (p. 1).
It would be obvious to one of ordinary skill in the
art at the time the [’]258 Patent was filed to use series
chillers for inlet air cooling as taught by the ASHRAE
references in combination with variable flow as taught by
Hartman. One of ordinary skill in the art would have
understood that these choices were simply design choices
that were well-known options in chilled water systems.
(Hydeman Decl., ¶¶81-82).

Pet. 32 (citing Ex. 1014).
Paragraphs 80 and 81 of the Hydeman Declaration also refer to page 1 of
Hartman, reiterate the alleged advantage provided by Hartman, and reiterate the
reasons for combining Hartman with ASHRAE Thermal Storage and ASHRAE
Cool Storage Guide. See Ex. 1014. Even assuming Hartman teaches passing
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liquid water through water chillers at first and second flow rates (i.e., “variable
flow” as characterized by Petitioner), Petitioner does not assert that Hartman is
concerned with, or relevant to, cooling inlet air that is received by a gas turbine of
a gas turbine power plant as claimed in the ’258 Patent. See Prelim. Resp. 29.
Further, to the extent that Hartman teaches passing liquid water through water
chillers at first and second flow rates, Petitioner has not established that Hartman
teaches or suggests passing liquid water through sequentially positioned water
chillers at first and second flow rates. Petitioner does not direct our attention to
anywhere in Hartman that discusses water chillers positioned sequentially. Indeed,
we note that Figures 1 and 2 of Hartman each appear to show a single water chiller
rather than multiple chillers arranged sequentially. See Ex. 1010, 2. Further,
Hartman acknowledges that a variable flow system will not necessarily work under
all operating conditions. Id. at 2-3.
Thus, based on our review of Hartman, Petitioner does not establish that
Hartman demonstrates variable flow through sequentially positioned water chillers
was “simply [a] design choice[]” and a “well-known option[] in chilled water
systems.” Pet. 32. Petitioner also does not present evidence establishing that the
“reduce[d] pumping requirements and . . . other energy efficiencies” purportedly
provided by Hartman would result from combining the references as proposed by
Petitioner.
Based on the foregoing, we determine that Petitioner has not demonstrated a
reasonable likelihood that claim 1 is unpatentable over ASHRAE Thermal Storage,
ASHRAE Cool Storage Guide, and Hartman. Petitioner relies on ASHRAE
Thermal Storage, ASHRAE Cool Storage Guide, and Hartman to teach limitations
of claims 2–8 and 12–15 that depend from independent claim 1. Pet. 32–43, 44–
47. Thus, we determine that Petitioner has not demonstrated a reasonable
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likelihood that any of claims 1–8 and 12–15 are unpatentable over ASHRAE
Thermal Storage, ASHRAE Cool Storage Guide, and Hartman.
With respect to claims 9–11, which depend from claim 1, Petitioner relies on
ASHRAE Coils to teach limitations of the dependent claims. Pet. 43–44.
Petitioner does not rely on ASHRAE Coils to remedy the above-discussed
deficiencies with respect to claim 1. Based on the foregoing, we determine that
Petitioner has not demonstrated a reasonable likelihood that any of claims 9–11 are
unpatentable over ASHRAE Thermal Storage, ASHRAE Cool Storage Guide,
Hartman, and ASHRAE Coils.
III. CONCLUSION
For the foregoing reasons, Petitioner has not demonstrated that there is a
reasonable likelihood that it would prevail in showing unpatentability of at least
one claim of the ’258 Patent.
IV. ORDER
For the reasons given, it is
ORDERED that the Petition challenging the patentability of the claims of
U.S. Patent No. 6,769,258 B2 is denied.

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For PETITIONER:
Deakin T. Lauer
Klarquist Sparkman LLP
One World Trade Center, Suite 1600
121 S.W. Salmon Street
Portland, Oregon 97204
Telephone: (503) 595-5300
Facsimile: (503) 595-5301
E-mail: deakin.lauer@klarquist.com

Joseph Jakubek
Klarquist Sparkman LLP
One World Trade Center, Suite 1600
121 S.W. Salmon Street
Portland, Oregon 97204
Telephone: (503) 595-5300
Facsimile: (503) 595-5301
E-mail: joseph.jakubek@klarquist.com

For PATENT OWNER:
Thomas B. King
HAYNES AND BOONE, LLP
18100 Von Karman Avenue, Suite 750
Irvine, CA 92612
Phone: 949-202-3059
Fax: 949-202-3159
E-Mail: thomas.king@haynesboone.com

Kenneth G. Parker
HAYNES AND BOONE, LLP
18100 Von Karman Avenue, Suite 750
Irvine, CA 92612
Phone: 949-202-3014
Fax: 949-202-3114
E-mail: kenneth.parker@haynesboone.com