SPG Dry Cooling USA LLC

Patent Trials and Appeals Board

Oct 26, 2021

IPR2021-00809 (P.T.A.B. Oct. 26, 2021)

Trials@uspto.gov Paper 9
571-272-7822 Entered: October 26, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

EVAPCO DRY COOLING, INC.,
Petitioner,

v.

SPG DRY COOLING USA LLC,
Patent Owner.
____________

IPR2021-00809
Patent 9,551,532 B2

____________

Before NEIL T. POWELL, GEORGE R. HOSKINS, and
SEAN P. O’HANLON, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
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I. INTRODUCTION
Evapco Dry Cooling, Inc. (“Petitioner”) filed a Petition (Paper 2,
“Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review
of all eleven claims of U.S. Patent No. 9,551,532 B2 (“the ’532 patent”).
SPG Dry Cooling USA LLC (“Patent Owner”) filed a Preliminary
Response (Paper 6, “Prelim. Resp.”) opposing institution of review. Patent
Owner asserts in part that the Petition rehashes positions taken by the
Examiner during prosecution of the ’532 patent, which were overcome by
the applicant, thereby meriting denial under 35 U.S.C. § 325(d).
We authorized additional briefing to address Patent Owner’s § 325(d)
argument. See Ex. 1021. Accordingly, Petitioner filed a Preliminary Reply
(Paper 7, “Reply”) to the Preliminary Response, and Patent Owner filed a
Preliminary Sur-reply (Paper 8, “Sur-reply”) to the Reply.
Institution of inter partes review requires Petitioner to demonstrate a
reasonable likelihood that Petitioner would prevail with respect to at least
one challenged claim. See 35 U.S.C. § 314(a). For reasons provided below,
we conclude on behalf of the Director (37 C.F.R. § 42.4(a)) that Petitioner
has not done that here. We, therefore, deny institution of review on the
merits, and we do not reach the § 325(d) issues presented by Patent Owner.
II. BACKGROUND
A. Real Parties in Interest and Related Matters
Petitioner identifies itself and Evapco, Inc. as the real parties in
interest for Petitioner. Pet. 106. Patent Owner identifies itself as the sole
real party in interest for Patent Owner. Paper 3, 2.
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The parties identify SPG Dry Cooling USA LLC v. Evapco Dry
Cooling, Inc., Case No. 3:20-cv-20131 (D.N.J.), as related to the
’532 patent. See Pet. 106; Paper 3, 2.
The parties also identify two earlier-filed IPR proceedings as related
to the present proceeding. See Pet. 106–07; Paper 3, 2. They are
IPR2021-00687 and IPR2021-00688, challenging two patents that issued as
continuations of the ’532 patent.
B. The ’532 Patent
The ’532 patent discloses “a mechanical draft cooling tower that
utilizes air cooled condenser modules.” Ex. 1001, 1:4–7. Figures 1 and 4
illustrate one condenser module, and are reproduced below.

Exhibit 1001 — The ’532 Patent, Figures 1 and 4.
Figure 1 is a perspective view of air cooled condenser module 10 including
five A-type geometry deltas 18, and Figure 4 is a perspective view of one
delta 18. Id. at 3:59–61, 4:1–3, 4:29–36. Each delta 18 comprises two tube
bundle assemblies 28, with each assembly 28 including a series of finned
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tubes 25 extending between a steam manifold 24 at the top and a condensate
header 27 at the bottom. Id. at 4:36–38, 4:50–5:1. Module 10 also includes
a fan disposed within shroud 14. Id. at 4:30–33.
Steam to be condensed within deltas 18 flows in through main steam
duct 22 and risers 20 to enter steam manifolds 24. Id. at 4:40–49. The fan
blows air across deltas 18 to cool the steam as it passes through tubes 25 and
thereby becomes condensate (i.e., water). Id. at 4:30–38, 4:50–53, 5:7–13,
5:30–40. Although not shown in the ’532 patent, the condensate is then
conveyed from condensate headers 27 to another location where it is heated
by an industrial process to become steam, and the steam is then conveyed
back to module 10 to be condensed again to water, in a recirculating
fashion.1 See id. at 1:16–22, 2:4–15.
C. The Claims of the ’532 Patent
The ’532 patent contains eleven claims. Ex. 1001, 6:46–8:50.
Claim 1 recites, with our emphases added:
1. A method for assembling a modular air cooled condenser
extending along a vertical axis away from horizontal,
comprising:
assembling a first condenser bundle having a first set of tubes
having first and second ends, a steam manifold connected to
the first ends of the tubes, and a condensate header connected
to the second ends of the tubes, wherein the first condenser
bundle includes a length and a width and a longitudinal axis
running along the length of the first condenser bundle, the
length of the first condenser bundle being about six times
longer than the width of the first condenser bundle, the steam

1 Other evidence of record contains pictures of real-world air cooled
condensers with A-type geometry deltas, which reflect the size of these
modules in actual use. See, e.g., Ex. 1013, 31 (Fig. 1.2.7), 33 (Fig. 1.2.10).
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manifold extending the length of the first condenser bundle
along a first side, the condensate header extending the length
of the first condenser bundle along a second side, each tube
of the first set of tubes extending perpendicularly across the
longitudinal axis of the first condenser bundle and straight
from the steam manifold to the condensate header;
assembling a second condenser bundle having a second set of
tubes having first and second ends, a steam manifold
connected to the first ends of the tubes, and a condensate
header connected to the second ends of the tubes;
placing the first and second condenser bundles in to a
container;
transporting the container to a location upon which the
modular air cooled condenser will be assembled;
assembling a heat exchange delta by using[2] the first
condenser bundle and the second condenser bundle; and
positioning the heat exchange delta on a modular tower
frame.
Id. at 6:47–7:12. Claims 2–10 each depend directly or indirectly from
claim 1. Id. at 7:13–8:14.
Claim 11 is an independent claim, and recites similar subject matter to
claim 1, with a few important differences discussed below. Id. at 8:15–49.
D. Prior Art and Asserted Grounds of Unpatentability
Petitioner relies on the following seven prior art references. See
Pet. 1–2.

2 Claim 1 of the ’532 patent was amended via a Certificate of Correction to
delete the term “placing” between “delta by” and “using.” See Ex. 1001,
pg. 12. Claims 8 and 11 were amended similarly. See id.
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Name Reference Date Exhibit
Elder US 2,401,918 June 11, 1946 1005
Schulenberg US 3,073,575 Jan. 15, 1963 1004
Schaefer US 2005/0167093 A1 Aug. 4, 2005 1006
Schabosky US 2009/0178279 A1 July 16, 2009 1010
Nobel US 2010/0263840 A1 Oct. 21, 2010 1007
O’Kane CA 2,444,475 Feb. 16, 2010 1009
Kröger Detlev G. Kröger, Air-Cooled
Heat Exchangers and Cooling
Towers: Thermal-Flow
Performance Evaluation and
Design, Vol. 1 (PennWell
Corp. ©2004)
2004 1013
Petitioner contends each reference qualifies as prior art to the ’532 patent
under 35 U.S.C. § 102(b). See Pet. 1–2. The Preliminary Response does not
dispute this contention.
Petitioner asserts the following seven grounds of unpatentability. See
Pet. 1.
Ground
Claim(s)
Challenged
35 U.S.C. § References
1A 1–7 103(a)3 Elder, Schabosky, O’Kane

3 The application resulting in the ’532 patent was filed prior to the effective
date of the amendments to 35 U.S.C. § 103 in the Leahy-Smith America
Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011). Thus, we
refer to the pre-AIA version of section 103.
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Ground
Claim(s)
Challenged
35 U.S.C. § References
1B 8–10 103(a)
Elder, Schulenberg,
Schabosky, O’Kane
2A 1–7 103(a)
Elder, Nobel,
Schabosky, O’Kane
2B 8–10 103(a)
Elder, Nobel, Schulenberg,
Schabosky, O’Kane
3 1–11 103(a)
Schulenberg, Schaefer,
Schabosky, O’Kane
4 1–11 103(a)
Schulenberg, Nobel, Schaefer,
Schabosky, O’Kane
5 11 103(a)
Nobel, Kröger,
Schabosky, O’Kane
E. Testimonial Evidence
Petitioner relies on the declaration testimony of Anthony M. Jacobi,
Ph.D. (Exhibit 1003). The Preliminary Response does not rely on opposing
witness testimony.
III. PETITIONER’S GROUNDS OF UNPATENTABILITY
A. Law of Obviousness
A patent claim is unpatentable under 35 U.S.C. § 103 if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness, if made available in the record.4 See Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966).
B. Level of Ordinary Skill in the Art
The level of ordinary skill in the art is “a prism or lens” through which
we view the prior art and the claimed invention. Okajima v. Bourdeau,
261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art
is a hypothetical person presumed to have known the relevant art at the time
of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In
determining the level of ordinary skill in the art, we may consider certain
factors, including the “type of problems encountered in the art; prior art
solutions to those problems; rapidity with which innovations are made;
sophistication of the technology; and educational level of active workers in
the field.” Id. (internal quotation marks and citation omitted).
Petitioner contends a person having ordinary skill in the art pertaining
to the ’532 patent at the time of the invention (“POSITA”) “would have had
at least a Bachelor’s degree in an academic area emphasizing chemical
engineering, mechanical engineering, or a similar discipline, and at least two
years of experience in the field working with heat exchangers.” Pet. 4
(citing Ex. 1003 ¶¶ 12–13).

4 The parties have not directed us to any such objective evidence.
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Patent Owner does not contest Petitioner’s proposed definition or
offer one of its own. See generally Prelim. Resp.
We find Petitioner’s description to be consistent with the problems
and solutions disclosed in the ’532 patent and the prior art of record, and
adopt it as our own for purposes of this Decision. See, e.g., GPAC, 57 F.3d
at 1579 (approving the determination of the level of ordinary skill in the art
by appeal to the references of record).
C. Claim Construction
We interpret the claims of the ’532 patent “using the same claim
construction standard that would be used to construe the claim in a civil
action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). This “includ[es]
construing the claim in accordance with the ordinary and customary
meaning of such claim as understood by one of ordinary skill in the art and
the prosecution history pertaining to the patent.” Id.
The present record raises two claim construction issues.
1. Whether the ’532 Patent Claims Are Product-By-Process Claims
The Petition initially states “no express constructions are required to
institute review and find [claims 1–11] unpatentable.” Pet. 4. However, the
Petition later states claims 1–11 “may be treated as product-by-process
claims whose scope should not be limited to particular manipulations of the
recited steps but rather by the final end product.” Id. at 9 (citing In re
Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985)). Petitioner does not offer any
analysis in support of this claim construction position. See id.
Patent Owner argues in opposition that claims 1–11 are not
product-by-process claims, as is demonstrated by the prosecution history of
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the ’532 patent. See Prelim. Resp. 14–15 & n.5 (citing Ex. 1002, 89,
125–26, 234, 259).
We agree with Patent Owner. First, the claims are directed to
“[a] method for assembling a modular air cooled condenser,” which is a
process, not a product. Ex. 1001, 6:47–49 (claim 1), 8:16–18 (claim 11)
(emphasis added); see also id. at 7:13–8:15 (claims 2–10 are each directed to
“[t]he method according to” a prior claim). The bodies of independent
claims 1 and 11 are both organized into several clauses, each of which
begins by specifying an action that must be taken as part of the claimed
process. Specifically, these claims recite “assembling” first and second
condenser bundles; “placing” the bundles into a container; “transporting the
container”; “assembling a heat exchange delta”; and “positioning the heat
exchange delta.” Ex. 1001, 6:47–7:12, 8:15–49. Therefore, the plain
language of the claims is directed to a process for assembling a condenser
product, not to the condenser product that results from the process.
This plain claim language distinguishes the ’532 patent claims from
the Thorpe decision cited by Petitioner. In Thorpe, the claim at issue
recited: “The product of the process of” a parent process claim. Thorpe,
777 F.2d at 696 (emphasis added). Thus, the rationale behind the Thorpe
decision that “[t]he patentability of a product does not depend on its method
of production” does not apply here. Id. at 697 (emphasis added, citations
omitted).
This understanding of the claims is supported by the ’532 patent
specification. It discusses how prior art condenser towers were “typically
very labor intensive in their assembly at the job site” and “therefore [could]
be costly.” Ex. 1001, 1:61–67. One of the aims of the ’532 patent’s
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invention, therefore, was to increase efficiency by assembling portions of the
condenser tower “at the manufacturing plant or facility, prior to shipping it
to the installation site.” Id. at 1:67–2:3, 2:9–19; see also id. at 5:41–6:31
(describing how Figures 5 and 6 illustrate a method of assembling a
condenser tower providing “a high ‘pre-fabrication’ level which equates to
reduced installation cost and reduced installation time”). Thus, the
’532 patent underscores the importance of how condenser towers may be
advantageously assembled partially at a manufacturing plant or facility, and
then shipped to the installation site, which is the kind of process recited in
claims 1–11.
Finally, the prosecution history of the ’532 patent also supports this
construction. Claim 1 of the application that issued as claim 1 in the
’532 patent is representative. As originally filed, claim 1 included the plain
language discussed above: “A method for assembling a modular air cooled
condenser” comprising the steps of “assembling” first and second condenser
bundles, “placing” the bundles into a container, “transporting the container,”
“assembling a heat exchange delta,” and “positioning the heat exchange
delta.” Ex. 1002, 18.
The Examiner initially took the position that claim 1 was a
product-by-process claim, so the Examiner’s burden was limited to showing
the prior art included a product that was substantially identical to the
claimed product, without regard to the recited method steps. See id. at 89,
125–26, 130–31 (citing Thorpe and MPEP § 2113). The applicant
disagreed, and argued claim 1 was a “process” claim “and not [a] product by
process” claim, and eventually filed an appeal to the Board that relied in part
on this argument. Id. at 113, 234.
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In response to the appeal brief, the Examiner allowed the claims. See
id. at 258. The allowance did not expressly address the product-by-process
claim construction issue. However, the Examiner provided the following
statement of reasons for allowance: “The prior art . . . does not show
a method of assembling a modular air cooled condenser, assembling two
condenser bundles, placing said bundles in a container, transporting said
container, then assembling a heat exchange delta with the two condenser
bundles and then placing said delta on a modular tower frame.” Id. at 259
(emphases added). Further: “The closest prior art of record . . . teaches a
modular air cooled condenser but fails to teach the specific method of
assembling” and “fails to [either] anticipate [or] render obvious the
applicants’ invention.” Id. (emphases added). Thus, the reasons for
allowance indicate the Examiner ultimately concluded claim 1 is a process
claim, not a product-by-process claim, and the prior art of record failed to
anticipate or render obvious the claimed process.5
For the foregoing reasons, we conclude claims 1–11 of the ’532 patent
are process claims, not product-by-process claims. Therefore, Petitioner’s
“[a]lternative[]” theory of obviousness (Pet. 9) relies on an overly broad
claim construction. As part of supporting the asserted unpatentability of
claims 1–11, Petitioner bears the burden to establish that the claimed process
steps are either disclosed by the prior art, or rendered obvious to a POSITA
in light of the prior art.

5 This understanding is bolstered by the contemporaneous cancellation of
claims 18–20, which were directed to a “condenser,” rather than a “method
for assembling” a condenser as in the allowed claims. See Ex. 1002, 22–23
(claims 18–20), 55 (restriction requirement), 259 (Examiner’s Amendment
cancelling claims 18–20).
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2. Assembling Condenser Bundles Before Placing Them into a Container
and Transporting the Container
a. Claims 1–10
Patent Owner contends claim 1 requires the first and second
condenser bundles to be “pre-assembled”—that is, assembled to have the
respective ends of the tubes connected to the steam manifold and to the
condensate header before the condenser bundles are placed into the
container and transported. See, e.g., Prelim. Resp. 2 (arguing “Schabosky
does not pre-assemble the bundles to have a steam manifold” and instead
“Schabosky explicitly discloses the opposite: connecting at least the steam
manifold to the tube bundle after transport” (emphases by Patent Owner));
id. at 2–3 (arguing claim 1 requires a “pre-assembled condenser bundle
[having] a connected steam manifold [and] condensate header prior to
transporting that bundle in a container”); id. at 22 (contending “the plain
claim language” requires “‘condenser bundles’ are assembled to have
attached steam manifolds 24 and condensate headers 27, and then placed in a
transport container 30”).
We agree with Patent Owner’s construction of claim 1. It is, first,
supported by the plain language of the claim. Claim 1 recites: “assembling a
first condenser bundle having a first set of tubes having first and second
ends, a steam manifold connected to the first ends of the tubes, and a
condensate header connected to the second ends of the tubes.” Ex. 1001,
6:50–53. The second condenser bundle is assembled in the same fashion.
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See id. at 6:66–7:3.6 Thus, claim 1 defines the term “condenser bundle” as
having tubes connected to a steam manifold and a condensate header; there
is no “condenser bundle” until at least those three components are connected
(i.e., bundled) together as specified in the claim. Claim 1 then requires
“placing the first and second condenser bundles in to a container” and
“transporting the container to a location upon which the modular air cooled
condenser will be assembled.” Id. at 7:4–7 (emphasis added). Thus, claim 1
requires the condenser bundles to be assembled before being placed into a
container for transport.
This understanding of the claim language is supported by the
’532 patent specification. The ’532 patent indicates one “drawback to the
current air cooled condenser towers is that they are typically very labor
intensive in their assembly at the job site . . . requiring a large amount of
time and therefore can be costly.” Ex. 1001, 1:61–67. One aim of the
’532 patent, therefore, was to provide a “more efficient” assembly process
including “assembl[ing] as much of the tower structure at the manufacturing
plant or facility, prior to shipping it to the installation site.” Id. at 1:67–2:19.
The specification identifies the invention of claim 1 as providing one such
assembly process. Id. at 2:26–43.
As one example, when describing Figure 4 (reproduced above), the
’532 patent states: “Each of the bundle assemblies 28 are assembled prior to
shipping wherein each comprises a riser to header transition piece 26, steam

6 Claim 1 as originally filed in the application that issued as the ’532 patent
recited assembling the first and second condenser bundles in an identical
fashion. See Ex. 1002, 18. The applicant later amended the first condenser
bundle assembly step to include additional requirements, in an attempt to
overcome a rejection. See id. at 108–09, 113–14.
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manifold 24, finned tubes 25, and steam condensate headers 27.” Id.
at 4:65–5:1 (emphasis added). This is illustrated in Figure 5 of the
’532 patent, which is reproduced below.

Exhibit 1001 — The ’532 Patent, Figure 5.
Figure 5 illustrates five condenser bundles 28, each including several tubes
that inter-connect a steam manifold 24 and a steam condensate header 27,
placed into transport container 30 “for shipping,” that is, “to transport the
bundles 28, from the factory to the job site.” Id. at 4:4–6, 5:41–50.
Also, Figure 6 of the ’532 patent is a flow chart illustrating one
method of assembling an air cooled condenser. Id. at 4:7–9, 5:64–66.
Figure 6 is reproduced below.
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Exhibit 1001 — The ’532 Patent, Figure 6.
Figure 6 illustrates how “individual tube bundles 28 are assembled prior to
shipment to the job site, as referenced by numeral 40.” Id. at 5:66–6:1
(emphasis added). In particular, “[e]ach individual bundle assembly 28
includes a plurality of finned tubes 25 along with a steam manifold 24 and
steam condensate header 27,” and the assemblies 28 “are pre-manufactured
at the factory prior to placing the individual bundle assemblies 28 in the
shipping container 30 as identified by numeral 42” prior to transporting
container 30 “to the erection field site.” Id. at 6:1–9. This provides “a high
‘pre-fabrication’ level which equates to reduced installation cost and reduced
installation time.” Id. at 6:28–29.
We acknowledge that the ’532 patent also states: “The progression of
processing steps described is an example; however, the sequence of steps is
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not limited to that set forth herein and may be changed as is known in the
art, with the exception of steps necessarily occurring in a certain order.” Id.
at 4:24–28. However, this generic disclosure as to the progressive ordering
of steps cannot overcome the plain language of claim 1, and the repeated and
specific discussion of the importance of assembling the tubes, the steam
manifold, and the condensate header into condenser bundles prior to placing
the condenser bundles into a container for transport, as discussed above.
Finally, in the statement of reasons for allowance of the ’532 patent
during prosecution, the Examiner appears to have applied the same
construction of claim 1 that we apply here. See Ex. 1002, 259 (referring to
“the combination set forth in the independent claims” as including
“a method of assembling a modular air cooled condenser, assembling two
condenser bundles, placing said bundles in a container, transporting said
container . . . ” (emphases added)).
Petitioner does not express a clear position as to the meaning of
claim 1 in this regard. See, e.g., Pet. 4 (stating “no express constructions are
required to institute review and find [claim 1] unpatentable”). Petitioner
states Schabosky discloses “pre-manufactured pipe bundles 2, 3, (i.e.,
condenser bundles).” Id. at 5–6, 7. To the extent Petitioner contends here
that the “condenser bundles” of claim 1 can be satisfied by a set of tubes,
without those tubes being connected to a steam manifold and a condensate
header, Petitioner’s contention is not supported by the claim language and
other intrinsic evidence.
Thus, in light of the foregoing, we construe claim 1 to require that the
two condenser bundles are assembled to include tubes connected at one end
to a steam manifold, and connected at the other end to a condensate header,
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before the condenser bundles are placed into a container for transport.
Claims 2–10 contain the same requirement because they each depend
directly or indirectly from claim 1. We will refer to this requirement as “the
condenser bundle preassembly limitation.”
b. Claim 11
Patent Owner contends claim 11 should be construed in the same
fashion as claim 1, discussed above. See, e.g., Prelim. Resp. 1–3 (discussing
the scope of “all claims” without differentiating between claim 1 and
claim 11); id. at 22, 26, 28 (discussing the scope of “[t]he claims” and
discussing claim 1 as representative). For the following reasons, we agree in
part, and we disagree in part.
Claim 11 pertinently recites:
11. A method for assembling a modular air cooled condenser
extending along a vertical axis away from horizontal,
comprising:
assembling a first condenser bundle having a first set of tubes
having first and second ends and a condensate header
connected to the second end of the tubes;
assembling a second condenser bundle having a second set
of tubes having first and second ends, and a condensate
header connected to the second end of the tubes;
attaching a steam manifold to the first ends of the . . . first
and second sets of tubes, wherein the steam manifold
provides steam to the first condenser bundle and the second
condenser bundle . . . ;
placing the first and second condenser bundles in to a
container;
transporting the container to a location upon which the
modular air cooled condenser will be assembled . . . .
Id. at 8:15–49.
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The ’532 patent specification describes the method of claim 11 as
“another embodiment of the present invention,” alternative to the method of
claim 1. Id. at 3:8–23, 5:51. The specification explains that, in this
alternative embodiment, the “bundles may not include a [steam] manifold
prior to shipping.” Id. at 5:51–57 (emphasis added). Thus, “the tube
bundles 28 may be assembled in field to form the A-type configuration,” but
“instead of employing two steam manifolds, this alternative embodiment
may employ a single steam manifold.” Id. at 5:57–63.
Claim 11 further specifies that one steam manifold feeds both of the
first and second condenser bundles. See Ex. 1001, 8:26–29 (claim 11 recites
“the steam manifold provides steam to the first condenser bundle and the
second condenser bundle”), 5:59–63 (“instead of employing two steam
manifolds, this alternative embodiment may employ a single steam
manifold”).
Thus, we construe claim 11 to require that: (a) the two condenser
bundles are assembled to include tubes connected at one end to a condensate
header, but not connected to a steam manifold at the other end, before the
condenser bundles are placed into a container for transport; and (b) one
steam manifold feeds both of the first and second condenser bundles when
the condenser is assembled on a modular tower frame.
3. Remaining Claim Terms
We determine no further explicit construction of any claim term is
needed to resolve the issues presented by the arguments and evidence
presently of record. See, e.g., Pet. 4; Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per
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curiam) (claim terms need to be construed “only to the extent necessary to
resolve the controversy”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
D. Ground 1A—Obviousness over Elder, Schabosky, and O’Kane
Petitioner contends claims 1–7 of the ’532 patent are unpatentable
under 35 U.S.C. § 103(a) as having been obvious over Elder, Schabosky,
and O’Kane. See Pet. 1, 5–30; Ex. 1003 ¶¶ 35, 39, 40, 43–77. Patent Owner
opposes the merits of this contention. See Prelim. Resp. 1–3, 20–26.
We first discuss Petitioner’s burden at the present institution stage,
then we summarize the pertinent disclosures of Elder, Schabosky, and
O’Kane, and finally we consider the parties’ competing contentions.
1. Petitioner’s Burden at the Institution Stage
A petition for inter partes review must “identif[y] . . . with
particularity . . . the grounds on which the challenge to each claim is based.”
35 U.S.C. § 312(a)(3). Therefore, a petition must include a detailed
explanation of the significance of the evidence. 37 C.F.R. § 42.22(a)(2). A
petition also must specify where each element of the claim is found in the
prior art patents or printed publications relied upon. Id. § 42.104(b)(4).
Additionally, a petition must identify “the relevance of the evidence to the
challenge raised,” including “identifying specific portions of the evidence
that support the challenge.” Id. § 42.104(b)(5).
2. Elder
Elder discloses an air cooled heat exchanger. See Ex. 1005, Title,
1:1–4. Figures 6 and 7 of Elder are reproduced below.
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Exhibit 1005 — Elder, Figures 6 and 7.
Figure 6 is a front view, and Figure 7 is an end view, of heat exchanger
apparatus 24. Id. at 1:36–40, 3:20–21. A fluid to be cooled is conveyed by
inlet headers 38 to front core unit 36 and to rear core unit 37, and is then
conveyed away from apparatus 24 by outlet headers 39. See id. at 3:20–30,
3:49–52. Figure 6 shows that each core unit 36 or 37 includes six inclined
cores, and Figures 6–9 together show that each core has several fin-tubes 35
to enhance cooling of the fluid conveyed within apparatus 24, with the aid of
an air flow generated by fan 12ʹ. See id. at 2:27–29, 3:23–28, 3:52–4:8.
As Petitioner and Dr. Jacobi recognize, “Elder does not explicitly
spell out how its condenser bundles are assembled, placed, transported,
and/or positioned.” Pet. 7; Ex. 1003 ¶ 43.
3. Schabosky
Schabosky discloses a “[m]ethod for setting up a condenser plant.”
Ex. 1010, code (57), ¶ 1. Figures 1 and 2 of Schabosky are reproduced
below.
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Exhibit 1010 — Schabosky, Figures 1 and 2.7
Figure 1 shows two tube bundles 2 and 3 placed on roof-shaped preassembly
frame 1 and welded to each other at an apex of frame 1. See id. at code (57),
¶¶ 2, 7–9. Figure 2 “shows a heat exchanger delta in the installation
position,” “welded to the steam distribution line 4 on [a] roof ridge.” Id.
¶¶ 21, 25.
This preassembly of tube bundles 2 and 3 on frame 1, according to
Schabosky, advantageously permits the bundles to be “welded together by
means of a root seam, before the preassembled roof-shaped tube bundle
delta” created by this welding “is lifted from the preassembly frame and
moved into the installation position” on a roof with a crane. Id. at code (57),
¶¶ 9–12, 17, 25. In particular, this “preassembly of the pipe bundles” 2
and 3 to join them with a root weld is “much less time-consuming than the
previously used approach,” which “is important, because setup of the pipe

7 We have modified these figures by rearranging the designations “Fig. 1”
and “Fig. 2” to magnify the illustrations.
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bundle deltas requires a crane” and “[t]he expenses for cranes are typically
very high.” Id. ¶ 17.
4. O’Kane
O’Kane discloses a method for transporting a set of large longitudinal
items, such as wind turbine vanes and towers. Ex. 1009, codes (54)
and (57). Petitioner and Dr. Jacobi rely principally on the following
disclosure in O’Kane:
Until now, transport of large longitudinal items such as
wind turbine blades and wind turbine towers primarily takes
place either by ship or by truck, alternatively by railway. Often,
transport of these items takes place utilising two or more of
these transportation means successively. Accordingly, during
transport the items will initially be loaded from the
manufacturing plant onto one kind of said transportation means.
Subsequently, the items may be reloaded onto other means of
transportation. This puts forward a demand for the package,
which the items are transported in, to be adaptable to different
kinds of transport means. Therefore, the most convenient
package means will be standard containers which may be
transported at least by truck, by railway and by ship without
having to change from one kind of package means to another.
Alternatively only one kind of transportation means will be
selected, which may raise the costs of transportation.
Id. at 1:24–34 (emphasis added); see Pet. 6–9; Ex. 1003 ¶¶ 40, 43–46.
Petitioner and Dr. Jacobi also cite O’Kane’s disclosure that “a standard
freight container” has a length of 40 feet, a width of 8 feet, and a height of
8 feet, so the transport package should fit within that spatial envelope.
Pet. 6–7 (citing Ex. 1009, 9:5–18); Ex. 1003 ¶¶ 40, 43–46.
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5. Claim 1
Petitioner provides arguments and evidence in support of contending
claim 1 is unpatentable as having been obvious over Elder, Schabosky, and
O’Kane. See Pet. 5–20; Ex. 1003 ¶¶ 35, 39, 40, 43–63. The Preliminary
Response presents arguments in opposition. See Prelim. Resp. 1–3, 20–26.
Upon consideration of these arguments and evidence, we conclude Petitioner
has not demonstrated a reasonable likelihood of prevailing with respect to
this challenge to claim 1, for the following reasons.
a. Petitioner’s Contentions
Petitioner cites Elder as disclosing a modular air cooled condenser
structure comprising the components recited in claim 1, with the components
being connected to each other in the fashion recited in claim 1. See Pet. 5, 7,
9–20; Ex. 1003 ¶¶ 35, 43–63. To illustrate this contention, Petitioner
annotates Elder’s Figures 6 and 7, as reproduced below:

Petition (pg. 13) — Annotating Elder’s Figures 6 and 7.
Figure 6 is a front view, and Figure 7 is an end view, of Elder’s heat
exchanger apparatus 24. Ex. 1005, 1:36–40, 3:20–21. According to
Petitioner, Elder discloses the “first condenser bundle” of claim 1 as front
core unit 36 with tubes 35 (orange) connected: (a) at their top ends to a
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steam manifold (green) comprising inlet header 38, header member 24ʹ, and
nozzle 25ʹ; and (b) at their bottom ends to a condensate header (blue)
comprising outlet header 39. See Pet. 10–13; Ex. 1003 ¶¶ 48–51. Petitioner
contends Elder discloses the “second condenser bundle” of claim 1 as a
similar collection of components associated with rear core unit 37. See
Pet. 17–18; Ex. 1003 ¶ 58. Patent Owner does not challenge these
contentions, and for purposes of the present decision, we assume they are
supported by the evidence of record.
Petitioner states “Elder does not explicitly spell out how its condenser
bundles are assembled, placed, transported, and/or positioned.” Pet. 7;
Ex. 1003 ¶ 43. Petitioner then contends “a POSITA would have recognized
and/or found it obvious that the process of manufacturing ACC [air cooled
condenser] components, such as those found in Elder, in a factory and then
finishing assembly at the final job site is an exceedingly well-known and
well-established manufacturing method.” Pet. 7; Ex. 1003 ¶ 43. Petitioner
cites Schabosky, O’Kane, and Modine8 as establishing that “typically for
large systems such as ACC systems, parts of the system are manufactured at
the factory, transported to the job site (e.g., in shipping containers), and then
finally assembled/installed.” Pet. 7 (citing Ex. 1010 ¶¶ 2, 25; Ex. 1009,
1:24–34; Ex. 1008, 3:3–7); Ex. 1003 ¶ 43. Petitioner therefore concludes the
“steps of assembling/placing/transporting/positioning the ACC structure”
recited in claim 1 would have been obvious to implement in erecting Elder’s
ACC “in view of Schabosky and O’Kane.” Pet. 7; Ex. 1003 ¶ 44.

8 Ex. 1008 (US 3,707,185, iss. Dec. 26, 1972).
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Petitioner cites Schabosky as “teach[ing] assembling two,
pre-manufactured pipe bundles 2, 3, (i.e., condenser bundles) into ‘a heat
exchanger delta’ at the job site by using a preassembly frame 1,” and then
lifting the delta by a crane and moving it to the installation position. Pet.
7–8 (emphasis added) (citing Ex. 1010, Figs. 1–2, ¶ 25); id. at 5–6 (further
citing Ex. 1010, Abstract, ¶¶ 25–28, claim 5); Ex. 1003 ¶ 44. Petitioner
concludes “Schabosky explicitly describes a manner of assembling and
positioning the heat exchanger delta in a manner similar to” claim 1. Pet. 8
(emphasis added) (citing Ex. 1010, Figs. 1–2, ¶ 25); Ex. 1003 ¶ 44.
Further according to Petitioner: “A POSITA would have also found it
obvious that the pre-assembled components as in Elder and Schabosky,
which can be quite large in the order of several meters or more, would have
been transported to the installation site using industry-standard shipping
methods.” Pet. 8 (emphasis added); Ex. 1003 ¶ 45. Dr. Jacobi cites Modine
in support of this contention, where Modine states “modular units may be
fabricated in the factory with dimensional limits so that the units can be
easily shipped by rail to any part of the United States.” Ex. 1008, 3:3–7;
Ex. 1003 ¶ 45; Pet. 8. Dr. Jacobi also cites O’Kane as teaching “that ‘the
most convenient package means’ for transporting large items ‘will be
standard containers which may be transported at least by truck, by railway
and by ship without having to change from one kind of package means to
another.’” Ex. 1009, 1:24–34; Ex. 1003 ¶ 45; Pet. 8. In Dr. Jacobi’s view,
O’Kane thereby “explicitly discloses the concept of placing large items, such
as pre-manufactured condenser bundles, into a container and transporting
them.” Ex. 1003 ¶ 45 (emphases added); Pet. 8.
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Petitioner next asserts: “A POSITA would have understood that
Schabosky’s assembling/positioning disclosure . . . as well as O’Kane’s
placing/transporting disclosure . . . would be equally applicable to Elder’s
ACC system as all three references are directed to the assembly of large
ACC systems at the installation site using smaller (but still relatively large)
pre-manufactured components.” Pet. 8–9; Ex. 1003 ¶¶ 45–46. In particular,
according to Petitioner, it would have been obvious “to transport the first
and second condenser bundles of Elder, which are large longitudinal items,
by placing them into a container for ease of shipping to a job site,” “where
the modular air cooled condenser will be assembled” by combining Elder’s
first and second condenser bundles to form a heat exchange delta. Pet. 18–
20; id. at 20 (annotating Elder’s Figure 7 to identify the heat exchange delta
in red); Ex. 1003 ¶¶ 60–63.
b. Patent Owner’s Contentions
Patent Owner argues in opposition that Petitioner’s contentions ignore
the condenser bundle preassembly limitation of claim 1. See Prelim.
Resp. 22; supra § III.C.2.a (claim construction). According to Patent
Owner, Petitioner “never addresses how” Elder, Schabosky, and O’Kane
combine to lead to the condenser bundle preassembly limitation, and the
Petition “[a]t best . . . glosses over” this limitation, which is a “fatal defect.”
Prelim. Resp. 22; see also id. at 1–3, 22–26 (argument in support of
contention). Patent Owner particularly argues Petitioner errs in relying on
Schabosky in relation to this limitation, because “Schabosky does not
pre-assemble the bundles to have a steam manifold before transport” and
instead “Schabosky explicitly discloses the opposite: connecting at least the
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steam manifold to the tube bundle after transport.” Id. at 2–3, 23–24
(emphases by Patent Owner, citing Ex. 2010 ¶ 25).
c. Analysis and Conclusion
Upon review of the foregoing, we conclude Petitioner has not
demonstrated a reasonable likelihood of prevailing in the challenge to
claim 1 as having been obvious over Elder, Schabosky, and O’Kane. We
focus here on the condenser bundle preassembly limitation of claim 1. This
limitation requires that two condenser bundles are assembled to include
tubes connected at one end to a steam manifold, and connected at the other
end to a condensate header, before the condenser bundles are placed into a
container for transport. See supra § III.C.2.a (claim construction).
We initially conclude Petitioner has demonstrated sufficiently for
institution that Elder discloses an installed condenser apparatus 24 having
first and second condenser bundles, with each bundle comprising tubes, a
steam manifold, and a condensate header. See, e.g., Pet. 13 (annotating
Elder’s Figures 6 and 7 to identify the tubes in orange, the steam manifolds
in green, and the condensate headers in blue); Ex. 1003 ¶ 51. However, as
Petitioner acknowledges, Elder is silent concerning the process of how the
various components of condenser apparatus 24 are manufactured,
transported to the installation site, and then assembled into the completed
apparatus at the installation site—including, most importantly, the two
condenser bundles. See, e.g., Pet. 7 (“Elder does not explicitly spell out how
its condenser bundles are assembled, placed, transported, and/or
positioned.”); Ex. 1003 ¶ 43. Thus, Elder’s express disclosure does not aid
Petitioner in attempting to establish the obviousness of implementing the
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condenser bundle preassembly limitation of claim 1 as part of assembling
Elder’s completed apparatus 24. And, Dr. Jacobi does not explain how
Elder’s express disclosure might support reaching a conclusion of such
obviousness, apart from the fact that Elder’s apparatus includes two
condenser bundles comprising tubes, a steam manifold, and a condensate
header. See Ex. 1003 ¶¶ 35, 43–46, 60–63.
Next, we largely agree with Patent Owner that Petitioner overstates
the relevance of Schabosky’s disclosure to the condenser bundle
preassembly limitation of claim 1. First, Schabosky is silent concerning the
process of how the various components of Schabosky’s condenser apparatus
are manufactured and transported to the installation site. Schabosky does
discuss the advantages of preassembling tube bundles 2 and 3 into a delta
configuration. See Ex. 1010, code (57), ¶¶ 2, 7–9, 17, 25. However, this
delta preassembly is performed entirely at the installation site—it is a
preassembly in the sense that tube bundles 2 and 3 are welded together into a
delta before they are lifted up onto a roof by a crane, rather than after such
lifting, which reduces the amount of time that the crane must be used. See
id. By contrast, the condenser bundle preassembly limitation of claim 1
requires that the two condenser bundles are assembled before being placed
into a container for transport to the installation site. See supra § III.C.2.a
(claim construction).
Second, Schabosky does not disclose any sort of preassembly of
“condenser bundles,” as that term is defined in claim 1, whether before or
after transport to the installation site. Specifically, the condenser bundles of
claim 1 must include tubes, a steam manifold, and a condensate header, with
the respective ends of the tubes being connected to the steam manifold and
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the condensate header. See supra § III.C.2.a (claim construction). Thus,
Petitioner errs in relying on Schabosky’s tube bundles 2 and 3, without any
steam manifold or condensate header, as corresponding to the condenser
bundles of claim 1. See, e.g., Pet. 5–6 (referring to Schabosky’s “pipe
bundles 2, 3 (i.e., condenser bundles)”), 7 (same); Ex. 1003 ¶¶ 39, 44.
Petitioner does not cite any disclosure in Schabosky that might suggest tube
bundles 2 and 3 are connected to a steam manifold and to a condensate
header prior to those structures being gathered together on the roof
installation site. See Pet. 5–6, 7–9; Ex. 1003 ¶¶ 39, 43–46. Indeed,
Schabosky appears to disclose the steam manifold connection is made after
the tubes and the steam manifold are gathered together on the roof
installation site. See, e.g., Ex. 1010, Figs. 1–2, ¶¶ 20–21, 25 (“In the
installation position, the preassembled heat exchanger delta is welded to the
steam distribution line 4 on roof ridge.” (emphasis added)). Concerning the
condensate header connection, Schabosky appears to be entirely silent as to
the structure(s) that gather the steam condensate that forms in tube bundles 2
and 3; instead, Schabosky focuses on how the tube bundles are welded
together at their apex where the steam manifold is located.
Next, O’Kane addresses the packaging and transport of wind turbine
vanes and towers, rather than condenser components such as are recited in
claim 1. See Ex. 1009, codes (54) and (57), 1:24–25. Petitioner errs in
asserting that “O’Kane explicitly discloses the concept of placing large
items, such as pre-manufactured condenser bundles, into a container and
transporting them.” Pet. 8 (emphases added, citing Ex. 1009, 1:24–34);
Ex. 1003 ¶ 45. No doubt, condensers and condenser bundles can be large
items, as are wind turbine vanes and towers. See, e.g., Ex. 1013, 31
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(Fig. 1.2.7), 33 (Fig. 1.2.10). But, O’Kane—like Schabosky—does not
disclose any sort of preassembly of “condenser bundles,” as that term is
defined in claim 1 to include tubes, a steam manifold, and a condensate
header, with the respective ends of the tubes being connected to the steam
manifold and the condensate header.
Further, the O’Kane disclosures cited by Petitioner do not discuss the
preassembly of smaller structures (e.g., the vanes or tower of a wind turbine)
into sub-assemblies to be packed and transported to an installation site for
final assembly into a larger structure (e.g., a wind turbine). See Ex. 1009,
1:24–34, 9:5–18; Pet. 6–9; Ex. 1003 ¶¶ 40, 43–46. These disclosures instead
are directed to the “transport of large items” by multiple means of
transportation such as ship, truck and railway, using “standard” containers
“without having to change from one kind of package means to another.”
Ex. 1009, 1:24–34, 9:5–18. There is a brief reference to “a first package”
and “a second package” (id. at 9:5–7), but there is no discussion in the cited
disclosures to indicate these two packages contain smaller sub-assembly
structures to be transported separately to an installation site for final
assembly into a larger structure.
Turning then to Modine, Petitioner cites this reference in support of
broad assertions that “the process of manufacturing ACC components, such
as those found in Elder, in a factory and then finishing assembly at the final
job site is an exceedingly well-known and well-established manufacturing
method” and “[a] POSITA would have also found it obvious that the
pre-assembled components as in Elder and Schabosky . . . would have been
transported to the installation site using industry-standard shipping
methods.” Pet. 7, 8 (emphases added, citing Ex. 1008, 3:3–7). However,
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these broad assertions are unaccompanied by any meaningful discussion of
how Modine might support the assertions, from either Petitioner or
Dr. Jacobi. See id.; Ex. 1003 ¶¶ 43, 45.
Moreover, Modine does not disclose, as Petitioner would have it,
manufacturing ACC components in a factory and then finishing assembly at
the final job site. Petitioner here cites one sentence from Modine, which
states: “Another very important advantage of the condenser apparatus of this
invention is that the modular units may be fabricated in the factory with
dimensional limits so that the units can be easily shipped by rail” via
“a standard railroad flatcar.” Ex. 1008, 3:2–11; Pet. 8; Ex. 1003 ¶ 45. This
sentence does not state that the “modular units” are ACC components that
are manufactured in a factory and then finally assembled at the job site.
Indeed, the referenced “modular units” appear to correspond to Modine’s
modular units 39, which are completely assembled condenser units
comprising: two condenser cores 17 arranged in a V-shaped configuration
on top of an inlet / outlet steam manifold 10 (Ex. 1008, 1:45–1:62, 2:39–56,
Figs. 3 and 4); a fan and its motor (id. at 1:63–2:7); and a rigid frame (id.
at 2:8–31).
Petitioner’s cited art (Elder, Schabosky, O’Kane, and Modine) taken
as a whole establishes, at best, two factual points. First, Elder establishes
that air cooled condensers can include condenser bundles including tubes,
a steam manifold, and a condensate header, with the respective ends of the
tubes being connected to the steam manifold and the condensate header.
Second, Schabosky, O’Kane, and Modine together might be sufficient to
establish that air cooled condensers can be large structures that are
assembled in portions leading up to a final assembly of the portions into a
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completed structure (Schabosky), and a POSITA would have known that
cost and efficiency benefits can be achieved by pre-assembling portions of
such a large structure in a factory setting, and then separately packaging and
shipping the pre-assembled portions to the installation site for final assembly
there (O’Kane and Modine).
Nonetheless, claim 1 is much more specific than that. The condenser
bundle preassembly limitation specifically requires that two condenser
bundles are assembled to include tubes connected at one end to a steam
manifold, and connected at the other end to a condensate header, before the
condenser bundles are placed into a container for transport. See supra
§ III.C.2.a (claim construction). The fact that the cited prior art would have
allowed for the claimed invention, or possibly could be combined to reach
the claimed invention, is not a sufficient reasoning to support obviousness.
Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 991–92 & 993–94
(Fed. Cir. 2017) (obviousness requires “a motivation to pick out those two
references and combine them to arrive at the claimed invention,” and “the
amount of explanation needed will vary from case to case, depending on the
complexity of the matter and the issues raised in the record” (citations
omitted)); InTouch Techs., Inc. v. VGo Comms., Inc., 751 F.3d 1327,
1351–52 (Fed. Cir. 2014).
Petitioner’s obviousness analysis and Dr. Jacobi’s testimony in
support fall short in the requisite explanation to establish a motivation for
combining Elder, Schabosky, O’Kane, and Modine with regard to the
condenser bundle preassembly limitation of claim 1. As discussed in detail
above, only Schabosky contains an express disclosure concerning
preassembling components of a condenser structure as part of an overall
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assembly of the condenser structure. Schabosky falls well short of the
claimed process because Schabosky preassembles the components at the
installation site (whereas claim 1 requires preassembly before placement into
a container for transport to the installation site), and because Schabosky
preassembles only tubes (whereas claim 1 requires preassembly of
condenser bundles comprising tubes, a steam manifold, and a condenser
header connected to each other). Petitioner and Dr. Jacobi do not explain
how or why the additional consideration of O’Kane and Modine would have
led a POSITA to the specific invention of claim 1, without the benefit of
hindsight.
There is no explanation for why a POSITA would have been
motivated to preassemble Elder’s condenser bundles—that is, tubes
connected at one end to a steam manifold, and connected at the other end to
a condensate header—before the condenser bundles are placed into a
container for transport. See Pet. 5–9, 18–20; Ex. 1003 ¶¶ 39–40, 43–46,
60–63. We therefore determine Petitioner’s case for obviousness in this
regard is tainted by a hindsight desire to reach the invention of claim 1. See,
e.g., InTouch, 751 F.3d at 1348–49 (“Dr. Yanco’s testimony was nothing
more than impermissible hindsight; she opined that all of the elements of the
claims disparately existed in the prior art, but failed to provide the glue to
combine these references.”).
For the foregoing reasons, we conclude Petitioner has not
demonstrated a reasonable likelihood of prevailing in the challenge to
claim 1 as having been obvious over Elder, Schabosky, and O’Kane.
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6. Claims 2–7
Petitioner provides argument and evidence in support of contending
claims 2–7, each of which depends directly or indirectly from claim 1, are
unpatentable as having been obvious over Elder, Schabosky, and O’Kane.
See Pet. 21–30; Ex. 1003 ¶¶ 64–78. The Preliminary Response does not
address these contentions, apart from arguments raised in the context of
claim 1, which we have considered above.
For the reasons provided above in Section III.D.5, Petitioner’s case
for the obviousness of the parent claim 1 is deficient. We, therefore,
conclude Petitioner has not demonstrated a reasonable likelihood of
prevailing in the challenge to claims 2–7 as having been obvious over Elder,
Schabosky, and O’Kane.
E. Ground 1B—Obviousness over Elder, Schulenberg, Schabosky, and
O’Kane
In Ground 1B, Petitioner contends claims 8–10 of the ’532 patent,
each of which depends directly or indirectly from claim 1, are unpatentable
under 35 U.S.C. § 103(a) as having been obvious over Elder, Schulenberg,
Schabosky, and O’Kane. See Pet. 1, 30–39; Ex. 1003 ¶¶ 79–94. Ground 1B
differs from Ground 1A in only two ways. First, Ground 1B cites
Schulenberg as disclosing “multiple heat exchange deltas arranged in
parallel rows” to establish the obviousness of using “additional heat
exchange deltas/rows” with Elder’s single row of deltas, to support the
obviousness of claim 8. Pet. 31–34. Second, Ground 1B cites Schulenberg
as disclosing “a single plenum that surrounds the multiple deltas/rows,” to
support the obviousness of claim 9. Id. at 34–38. This reliance on
Schulenberg does not cure the deficiency of Petitioner’s reliance on
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Schabosky and O’Kane for the obviousness of claim 1, discussed above in
Section III.D.5. Therefore, we conclude Petitioner has not demonstrated a
reasonable likelihood of prevailing with Ground 1B.
F. Ground 2A—Obviousness over Elder, Nobel, Schabosky, and O’Kane
In Ground 2A, Petitioner contends claims 1–7 of the ’532 patent are
unpatentable under 35 U.S.C. § 103(a) as having been obvious over Elder,
Nobel, Schabosky, and O’Kane. See Pet. 1, 39–42; Ex. 1003 ¶¶ 95–96.
Ground 2A differs from Ground 1A only in citing Nobel for the obviousness
of modifying Elder’s tubes 35 to extend “straight from the steam manifold to
the condensate header,” in the event Elder’s tubes 35 are found not to satisfy
this requirement of claim 1. Ex. 1001, 6:62–65 (emphasis added); see
Pet. 39–42. This reliance on Nobel does not cure the deficiency of
Petitioner’s reliance on Schabosky and O’Kane for the obviousness of
claim 1, discussed above in Section III.D.5. Therefore, we conclude
Petitioner has not demonstrated a reasonable likelihood of prevailing with
Ground 2A.
G. Ground 2B—Obviousness over Elder, Nobel, Schulenberg, Schabosky,
and O’Kane
In Ground 2B, Petitioner contends claims 8–10 of the ’532 patent are
unpatentable under 35 U.S.C. § 103(a) as having been obvious over Elder,
Nobel, Schulenberg, Schabosky, and O’Kane. See Pet. 1, 43; Ex. 1003 ¶ 97.
Ground 2B is a combination of Ground 1B (relying on Schulenberg for
multiple heat exchange deltas arranged in parallel rows and for a single
plenum surrounding the deltas) and Ground 2A (relying on Nobel for
straight tubes). See Pet. 43. This reliance on Schulenberg and Nobel does
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not cure the deficiency of Petitioner’s reliance on Schabosky and O’Kane for
the obviousness of claim 1, discussed above in Section III.D.5. Therefore,
we conclude Petitioner has not demonstrated a reasonable likelihood of
prevailing with Ground 2B.
H. Ground 3—Obviousness over Schulenberg, Schaefer,
Schabosky, and O’Kane
Petitioner contends claims 1–11 of the ’532 patent are unpatentable
under 35 U.S.C. § 103(a) as having been obvious over Schulenberg,
Schaefer, Schabosky, and O’Kane. See Pet. 1, 43–85; Ex. 1003 ¶¶ 36, 42,
98–160. Patent Owner opposes the merits of this contention. See Prelim.
Resp. 1–3, 26–28.
We summarize the pertinent disclosures of Schulenberg and Schaefer,
then we consider the parties’ competing contentions.
1. Schulenberg
Schulenberg discloses an air cooled surface condenser. Ex. 1004,
1:9–17. Figure 3 of Schulenberg is reproduced below.

Exhibit 1004 — Schulenberg, Figure 3.
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Figure 3 is a vertical section view of the condenser. Id. at 3:29–30. Steam
from an electric generator enters the condenser via steam distribution
conduits 6 and passes into the upper ends of condenser elements 7 and 7a,
each of which is composed of several ribbed tubes. Id. at 3:49–67 (Fig. 1),
4:43–51 (Figs. 4–5). The lower ends of condenser elements 7 and 7a are
connected to respective condenser collecting conduits 8 and 8a. Id. at
3:68–74. Blowers 9 generate an air flow to aid cooling of the steam in
condenser elements 7 and 7a. See id. at 4:22–27.
2. Schaefer
Schaefer discloses a steam condenser. Ex. 1006, code (57). Figures 1
and 2 of Schaefer are reproduced below.

Exhibit 1006 — Schaefer, Figures 1 and 2.
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Figures 1 and 2 illustrate two variants of steam condenser 1. Id. ¶¶ 14–15,
18, 24. Both variants include two steam inlets 4A and 4B leading to
respective sets of cooling tubes 5A and 5B. Id. ¶ 18. The Figure 1 variant
has a single exhaust chamber 6 for both sets of tubes and leading to
pump 13, whereas the Figure 2 variant has separate steam exhaust
chambers 6A and 6B for the respective sets of tubes. Id. ¶¶ 9–10, 18–19, 22,
24. Fan(s) 7 generate an air flow to aid cooling of the steam in tubes 5A
and 5B. Id. ¶ 18. Steam condensate 10 flows down the tubes to be
discharged from the lowermost point of the condenser. Id. ¶¶ 3, 18.
3. Claims 1–10
In relation to claim 1, Petitioner contends Schulenberg and Schaefer
combine to disclose a modular air cooled condenser structure comprising the
claimed components being connected to each other in the fashion claimed.
See Pet. 44–65; Ex. 1003 ¶¶ 98–119. In particular, according to Petitioner,
Schulenberg’s Figure 3 discloses a condenser comprising most of this
structure. See Pet. 49–61; Ex. 1003 ¶¶ 104–113. For example, Petitioner
asserts Schulenberg’s condenser has a first condenser bundle composed of
the tubes of condenser element 7, steam distribution conduit 6, and
condenser collecting conduit 8. See Pet. 44–45, 49–52, 58–59; Ex. 1003
¶¶ 98, 104–106, 112. Petitioner asserts Schulenberg also discloses a second
condenser bundle composed of the tubes of opposing condenser element 7a,
the same steam distribution conduit 6 as the first condenser bundle, and
condenser collecting conduit 8a. See Pet. 60–61; Ex. 1003 ¶ 113. Petitioner
then asserts it would have been obvious, in view of Schaefer, to modify
Schulenberg to include separate steam distribution conduits for each
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condenser element 7 and 7a, if claim 1 is construed to require separate steam
manifolds for the two condenser bundles. See Pet. 44–48; id. at 48
(modifying Schulenberg’s Figure 3 to replace the single conduit 6 with two
separate conduits); Ex. 1003 ¶¶ 98–102.
Petitioner then relies on Schabosky and O’Kane to assert that it would
have been obvious to assemble the condenser of Schulenberg and Schaefer
according to the method recited in claim 1. See Pet. 48–49, 61–65; Ex. 1003
¶¶ 103, 114–119. Petitioner does not cite any disclosure in Schulenberg or
Schaefer as relating to the obviousness of the claimed assembling steps,
including the condenser bundle preassembly limitation. Thus, Ground 3 in
relation to claim 1 suffers from the same deficiency identified above in
Section III.D.5 in relation to Ground 1A and claim 1. See, e.g., Prelim.
Resp. 1–3, 26–28. We conclude Petitioner has not demonstrated a
reasonable likelihood of prevailing with Ground 3 as to claim 1 and its
dependent claims 2–10.
4. Claim 11
As discussed above in Section III.C.2.b (claim construction), claim 11
differs from claim 1 in requiring that: (a) the two condenser bundles are
assembled to include tubes connected at one end to a condensate header, but
not connected to a steam manifold at the other end, before the condenser
bundles are placed into a container for transport; and (b) one steam manifold
feeds both of the first and second condenser bundles when the condenser is
assembled on a modular tower frame.
Petitioner recognizes difference (b), and correspondingly contends in
relation to claim 11 that “Schulenberg discloses attaching first ends of both
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the first and [second] sets of tubes [7 and 7a] (condenser bundles) to a
single, shared steam manifold [6].” Pet. 82–84 (annotating Schulenberg’s
Figure 3 to illustrate Petitioner’s contention); Ex. 1003 ¶¶ 150–151.
Therefore, in relation to claim 11, Petitioner need not rely on Schaefer to
modify Schulenberg to include separate steam distribution conduits for each
condenser element 7 and 7a.
Petitioner does not expressly address difference (a). Nor does Patent
Owner. See, e.g., Prelim. Resp. 1–3, 26–28. For example, the Preliminary
Response’s focus on Schabosky as failing to disclose connecting tubes to a
steam manifold before being packaged for transport in a container is not a
persuasive reason to deny the Petition’s challenge to claim 11. See id.
Nonetheless, Petitioner here relies on the same analysis of Schabosky
and O’Kane, discussed in Section III.D.5 above in Ground 1A in connection
with claim 1, to assert that it would have been obvious to assemble the
condenser of Schulenberg according to the method recited in claim 11. See
Pet. 48–49, 61–65, 84–85; Ex. 1003 ¶¶ 103, 114–119, 157–160. Petitioner
does not cite any disclosure in Schulenberg or Schaefer as relating to the
obviousness of the claimed assembling steps. Thus, Ground 3 in relation to
claim 11 suffers from a similar deficiency as identified above in
Section III.D.5 concerning Ground 1A in connection with claim 1.
Specifically, Petitioner and Dr. Jacobi do not explain why a POSITA would
have been motivated to preassemble Schulenberg’s condenser bundles—that
is, in claim 11, tubes connected at one end to a condensate header—before
the condenser bundles are placed into a container for transport. See
Pet. 48–49, 61–65, 84–85; Ex. 1003 ¶¶ 103, 114–119, 157–160. We
therefore determine Petitioner’s case for obviousness in this regard is tainted
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by a hindsight desire to reach the invention of claim 11. See, e.g., InTouch,
751 F.3d at 1348–49.
We conclude Petitioner has not demonstrated a reasonable likelihood
of prevailing with Ground 3 as to claim 11.
I. Ground 4—Obviousness over Schulenberg, Nobel, Schaefer,
Schabosky, and O’Kane
In Ground 4, Petitioner contends claims 1–11 of the ’532 patent are
unpatentable under 35 U.S.C. § 103(a) as having been obvious over
Schulenberg, Nobel, Schaefer, Schabosky, and O’Kane. See Pet. 1, 85–87;
Ex. 1003 ¶¶ 161–162. Ground 4 differs from Ground 3 only in citing Nobel
for the obviousness of modifying the tubes of Schulenberg’s condenser
elements 7 and 7a to extend “straight from the steam manifold to the
condensate header,” in the event Schulenberg’s tubes are found not to
exhibit this requirement of claims 1 and 11. Ex. 1001, 6:62–65, 8:37–41
(emphasis added); see Pet. 85–87. This reliance on Nobel does not cure the
deficiency of Petitioner’s reliance on Schabosky and O’Kane for the
obviousness of claims 1 and 11, as discussed above in Section III.H.
Therefore, we conclude Petitioner has not demonstrated a reasonable
likelihood of prevailing with Ground 4.
J. Ground 5—Obviousness over Nobel, Kröger, Schabosky, and O’Kane
Petitioner contends claim 11 of the ’532 patent is unpatentable under
35 U.S.C. § 103(a) as having been obvious over Nobel, Kröger, Schabosky,
and O’Kane. See Pet. 1, 87–103; Ex. 1003 ¶¶ 37–38, 41, 163–179. Patent
Owner opposes the merits of this contention. See Prelim. Resp. 1–3, 28–30.
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We summarize the pertinent disclosures of Nobel and Kröger, then we
consider the parties’ competing contentions.
1. Nobel
Nobel discloses an air cooled steam condenser. Ex. 1007, code (57).
Figure 1 of Nobel is reproduced below.

Exhibit 1007 — Nobel, Figure 1.
Figure 1 is a side elevation view of condenser 20. Id. ¶¶ 10, 14.
Condenser 20 includes steam delivery manifold 22 connected to the top ends
of two sets of condenser tubes 24 and 26. Id. ¶ 14. The bottom ends of
tubes 24 are connected to one condensate collection manifold 38, and the
bottom ends of tubes 26 are connected to another condensate collection
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manifold 38. Id. Fan 30 generates an air flow to aid cooling of the steam in
tubes 24 and 26. Id.
2. Kröger
Kröger is a handbook intended “to provide modern analytical and
empirical tools for evaluation of the thermal-flow performance or design of
air-cooled heat exchangers and cooling towers.” Ex. 1013, 10. Petitioner
particularly cites various diagrams and photographs of condenser systems
provided in Kröger. See Pet. 92 (annotating Kröger’s Figures 1.2.7 and
1.2.9 to identify the relative dimensions of air cooled condensers shown
therein); Ex. 1013, 31 (Fig. 1.2.7), 32 (Fig. 1.2.9).
3. Claim 11
Petitioner contends Nobel and Kröger combine to disclose a modular
air cooled condenser structure comprising the claimed components being
connected to each other in the fashion recited in claim 11. See Pet. 90–103;
Ex. 1003 ¶¶ 163–179. In particular, according to Petitioner, Nobel’s
Figure 1 discloses a condenser comprising most of this structure. See
Pet. 40, 94–101; Ex. 1003 ¶¶ 41, 168–175. For example, Petitioner asserts
Nobel’s condenser has a first condenser bundle composed of tubes 24 and
their associated condensate collection manifold 38. See Pet. 94–95;
Ex. 1003 ¶ 169. Petitioner asserts Nobel also discloses a second condenser
bundle composed of tubes 26 and their associated condensate collection
manifold 38. See Pet. 96–97; Ex. 1003 ¶ 170. Petitioner then asserts it
would have been obvious, in view of Kröger, to modify Nobel so that the
length of the first condenser bundle is “about six times longer than” its
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width, as recited in claim 11. Ex. 1001, 8:28–33; see Pet. 90–93, 99;
Ex. 1003 ¶¶ 163–166, 173.
Petitioner relies on Schabosky and O’Kane to assert that it would have
been obvious to assemble the condenser of Nobel and Kröger according to
the method recited in claim 11. See Pet. 93, 101–03; Ex. 1003 ¶¶ 167,
176–179. Petitioner does not cite any disclosure in Nobel or Kröger as
relating to the obviousness of the claimed assembling steps. Thus, Ground 5
suffers from a similar deficiency as identified above in Section III.H.4
concerning Ground 3. Specifically, Petitioner and Dr. Jacobi do not explain
why a POSITA would have been motivated to preassemble Nobel’s
condenser bundles—that is, in claim 11, tubes connected at one end to a
condensate header—before the condenser bundles are placed into a container
for transport. See Pet. 93, 101–03; Ex. 1003 ¶¶ 167, 176–179. We therefore
determine Petitioner’s case for obviousness in this regard is tainted by a
hindsight desire to reach the invention of claim 11. See, e.g., InTouch,
751 F.3d at 1348–49.
We conclude Petitioner has not demonstrated a reasonable likelihood
of prevailing with Ground 5.
IV. POTENTIAL DISCRETIONARY DENIAL
UNDER 35 U.S.C. § 325(d)
Patent Owner urges us to exercise our discretion under 35 U.S.C.
§ 325(d) to deny institution of review, on the basis that the arguments
presented in the Petition are substantially the same as arguments considered
and then rejected by the Examiner during prosecution of the ’532 patent.
See Prelim. Resp. 1, 7–20; Sur-reply. Petitioner provides opposing
arguments. See Reply.
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We have determined that the Petition falls short on the merits. See
supra Section III. Therefore, we do not reach the § 325(d) issues presented
by Patent Owner.
V. CONCLUSION
For the above reasons, we determine Petitioner has not established a
reasonable likelihood that Petitioner would prevail with respect to at least
one challenged claim of the ’532 patent. Therefore, we deny institution of
review on the merits. See 35 U.S.C. § 314(a). We do not reach the § 325(d)
issues presented by Patent Owner.
VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED, pursuant to 35 U.S.C. § 314(a), that institution of inter
partes review of the ’532 patent is denied.

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FOR PETITIONER:

Hyun Jin In
Timothy W. Riffe
FISH & RICHARDSON P.C.
in@fr.com
riffe@fr.com

FOR PATENT OWNER:

Timothy J. May
Houtan K. Esfahani
Joshua L. Goldberg
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
timothy.may@finnegan.com
houtan.esfahani@finnegan.com
joshua.goldberg@finnegan.com