RAYTHEON TECH. CORP. v. GENERAL ELECTRIC CO., Appeal No. 2020-1755 (Fed. Cir. April 16, 2021). Before Lourie, Chen, and Hughes. Appealed from the Patent Trial and Appeal Board. (Obviousness; Enablement)
General Electric (GE) petitioned for inter partes review of Raytheon’s patent (‘751 patent) directed to a gas turbine engine with an improved power density. GE argued that two of the claims of the ‘751 patent were obvious over a NASA technical memorandum (Knip). Knip discusses an imaginary advanced turbofan engine that incorporates revolutionary composite materials that reduced the weight of the turbofan engine and allow for the turbofan engine to achieve aggressive performance parameters. Knip acknowledges that the aggressive performance parameters were not yet achievable because no composite material existed that could allow the turbofan engine to operate under the aggressive performance parameters. GE argued in the Petition that one of the aggressive performance parameters is the power density recited in the claims of the ‘751 patent.
In response, Raytheon argued that Knip’s disclosure failed to enable a skilled artisan to make the claimed invention because the alleged power density was only achievable using materials that were unavailable at the time of the priority date of the ‘751 patent. GE did not directly challenge this argument by Raytheon. Instead, GE argued that Knip’s enablement is irrelevant, and the determination of obviousness is only based on whether a skilled artisan reviewing Knip could make the invention recited in the claims of the ‘751 patent without undue experimentation.
The Board found that Knip was enabling based on GE’s expert testimony explaining how a skilled artisan would have combined explicitly stated parameters in Knip with routine assumptions and estimates of engine operating conditions to achieve the claimed power density. Upon finding Knip enabling, the Board held obvious the claims of the ‘751 patent over Knip. Raytheon appealed.
Did the Board err in finding that Knip’s disclosure was sufficiently enabling to a skilled artisan to render obvious the claims of the ‘751 patent? (continue reading)
Summary by: Matt Stanford