CPLRG™ 0062 - Rolls-Royce, PLC v. United Technologies Corp. - May. 5, 2010

Rolls-Royce, PLC v. United Technologies Corp., 603 F.3d 1325, CPLRG 0062 (Fed. Cir. 2010) (RADER, Michel & Schall) RollsRoyaceUnitedTech05052010

MAJOR ISSUES:  obviousness; secondary considerations; commercial success; obvious to try; no motivation to combine; claim construction in PTO interference; broadest reasonable construction; unreasonable construction; interference-in-fact.

COMMENTS.  The operative issue in this case is “interference-in-fact,” a concept unique to interferences, that is, priority conflicts under the first-to-invent principle.  However, the underlying issues are of general importance to patent law: claim interpretation under the “broadest reasonable construction” rule applicable in PTO examinations and reexaminations as well as interferences, and the obviousness standard of patentability, which governs the interference-in-fact determination.
     Particularly significant is the case’s holding that, under post-KSR (2007) standards for obviousness, including “obvious to try,” an invention would not have been obvious because there was no motivation at all to alter or combine prior art structures and because the evidence showed commercial success of the claimed invention.

1. On obvious to try, see Chisum Patent Law Digest 1514.12; Chisum on Patents 5.04[1][f].
2. On secondary considerations and commercial success as evidence of unobviousness, see Chisum Patent Law Digest 1533; Chisum on Patents 5.05[2].
3. On interference-in-fact, see Chisum Patent Law Digest 1632; Chisum on Patents 10.09[4][c].


1. SWEPT FAN BLADES FOR JET ENGINES.  An interference between a senior party applicant, United Technologies, and a junior party patent owner, Rolls-Royce, concerned “swept fan blades” in jet engines.  See U.S. Pat. No. 6,071,077 USPatNo6071077; U.S. Patent No. 5,642,985 USPatNo5642985;  U.S. Pat. No. RE38040  USPatNoRE38040.

2. TECHNICAL BACKGROUND:  RADIATING FAN CASCADE.  The jet fan consisted of blades in a casing radially extending from a hub.
     a. THREE REGIONS OF FAN BLADES: OUTER, INNER, INTERMEDIATE.  The fan blades have three regions, inner (closest to hub), intermediate, and outer (farthest from hub and closest to casing).
     b. SHOCKWAVES; TWO TYPES.  Of concern were two types of shock waves, which bore “no relation” and arose “in different places.”
          i. ENDWALL.  Pressure waves reflecting off an engine’s casing caused “endwall” shock.
         ii. PASSAGE. Supersonic air flow over fan blades caused passage shock.
     c. REDUCING SHOCK:  FORWARD OR REARWARD “SWEEP.”  The prior art taught that blades could be bent toward the relative velocity vector (forward “sweep”) or away from the vector (rearward sweep).
          i. RELATIVE VELOCITY VECTOR: AXIAL AND CIRCUMFERENTIAL AIR FLOW.  The “relative velocity vector” combined the magnitude and direction of both axial (toward engine) and circumferential (blade rotation) air flow.
          ii. “SWEEP ANGLE” AT POINT ON BLADE.  The “sweep angle,” forward or backward, on a blade was a function of the relative velocity vector and the leading edge shape.

3. SENIOR PARTY’S PRIORITY: NOT CONTESTED; INTERFERENCE IN FACT?  Before the PTO Board, the patent owner did not contest priority but argued that there was no interference-in-fact.
     a. COUNT AND CLAIMS CORRESPONDING TO IT.  The PTO formulated an interference count based on the applicant’s claim 23.  It designated claim 23 and the patent owner’s claim 8 as corresponding to the count.
          i. COUNT: FAN BLADE WITH (1) INNER REGION: SWEPT FORWARD, (2) INTERMEDIATE REGION SWEPT:  REARWARD, AND (3) OUTER REGION: FORWARD-LEANING.  The count was to “a fan blade with a swept-forward inner region, a swept-rearward intermediate region, and forward-leaning outer region.”
          ii. FORWARD-LEANING OUTER REGION INTERCEPTS ENDWALL SHOCK AND CAUSES COINCIDENCE BETWEEN ENDWALL SHOCK AND PASSAGE SHOCK.  The blade’s forward-leaning outer region intercepted endwall shock.  Because the blade’s leading edge created passage shock, the configuration created a “coincidence between the endwall shock and the passage shock,” which “decreased the aerodynamic penalty of the two separate shocks.”
          iii. KEY ISSUE: OUTER REGION; DID BOTH PARTIES’ CLAIMED INVENTION ENCOMPASS OUTER REGION SWEPT FORWARD?  INTERPRETATION OF APPLICANT’S CLAIM 23.  A key issue in the interference concerned the outer region.  In particular, did both parties’ claimed inventions encompass an outer region that was swept forward?  That depended on whether the applicant’s claim encompassed a forward sweeping outer region, or, rather, merely an outer region that was “translated forward” of the rearward sweep of the intermediate region but not actually forward sweeping.
          iv. APPLICANT’S CLAIM 23: BLADE OUTER REGION BEING “TRANSLATED FORWARD” RELATIVE TO INTERMEDIATE REGION SWEEP ANGLE; CAUSING BLADE “TO INTERCEPT SHOCK.”  The count and the applicant’s claim 23 recited an “outer region being translated forward relative to a leading edge with the same sweep angle as an outward boundary of the intermediate region to provide a sweep angle that causes the blade to intercept the shock.”
          v. PATENT OWNER’S CLAIM 8: BLADE OUTER REGION WITH “FORWARD SWEEP ANGLE.”  The patent owner’s claim 8 recited, inter alia, an “outer region defining a forward sweep angle.”
     b. BOARD: BROAD CONSTRUCTION OF APPLICANT’S CLAIM 23 AS ENCOMPASSING BOTH FORWARD AND REARWARD SWEEP ANGLES.  The Board interpreted the applicant’s claim 23 as encompassing both rearward sweep angles and forward sweep angles, the latter being the subject of the patent owner’s claim 8.  Therefore, the Board ruled that the patent owner failed to demonstrate that its claim did not interfer with the applicant’s claim.
     c. SECTION 146 REVIEW ACTION IN DISTRICT COURT.  The junior party brought a 35 U.S.C. Section 146 review action in the Eastern Virginia district court.  Reversing the Board, the district court found the patent owner’s claims 8 was nonobvious in view of the applicant’s claim 23 and, therefore, that there was no interference-in-fact.

4. NO INTERFERENCE-IN-FACT:  the district court did not error in finding no interference-in-fact.
     a. STANDARD FOR INTERFERENCE-IN-FACT.  The court noted that “An interference-in-fact `exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa.’ 37 C.F.R. § 41.203(a); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1161 (Fed. Cir. 2006).”
     b. CLAIMS IN INTERFERENCES: BROAD CONSTRUCTION REASONABLE IN LIGHT OF SPECIFICATION.  The court also noted that claims in an interference are given “their broadest reasonable construction in light of the specification.”

5. INTERPRETATION OF “TRANSLATED FORWARD” IN APPLICANT’S CLAIM 23: MOVE FORWARD TOWARD AXIAL DIRECTION.  Construed in light of the applicant’s specification, “translated forward” in the applicant’s claim 23 meant moved forward toward the axial direction.
     a. The plain language, “translated forward,” meant move forward in a direction, but the language did not designate which direction.  “Translation” was not used in the industry as a term of art.  Consequently, a person of ordinary skill in the art would look to the supporting specification to determine the meaning of the patent claims.
     b. The specification discussed and illustrated only “the axial direction, which was parallel to the rotational axis of the fan and engine.”
     c. The senior party-applicant argued that “translated forward” meant moved “moved forward toward the direction of the relative velocity vector.”
          i. DIRECTIONS AT RIGHT ANGLE (90 DEGREES)? UNREASONABLE BROADENING.  The axial and circumferential directions were at a right angle (90 degrees).  Construing “translated forward” as including such directions would have “unreasonably broaden[ed] this claim limitation.”
          ii. EXCLUDING ONE EMBODIMENT SHOWING MOVEMENT IN CIRCUMFERENTIAL DIRECTION.  Construing “translated forward” as limited to axial movement excluded one embodiment, that in Figure 5, which showed movement of a blade’s outer region in a circumferential direction.  Generally, a court construes claim language to cover embodiments, but, here, the discussion of the Figure 5 did not use the “translated forward” language, and it “would be unreasonable” to construe the language to “encompass two directions at right angles to each other.”
          iii. SPECIFICATION STATEMENT: ANY BLADE THAT INTERCEPTS SHOCK; ONLY STATEMENT OF BENEFIT.  The senor party applicant pointed to the specification statement that the invention contemplated “any blade whose airfoil intercepts the endwall shock to bring the passage shock into coincidence with the endwall shock.”  That statement was merely an indication of the benefit of translating forward.
     d. PROSECUTION HISTORY; “TRANSLATED” RELATED TO BOTH AXIAL AND CIRCUMFERENTIAL EMBODIMENTS; AMBIGUOUS; QUESTIONABLE.  The senior party-applicant pointed to an argument during prosecution of the application in which the applicant stated that it had used “the term `translated’ in the exact same context”, citing both the Figure 2 axial embodiment and the Figure 5 circumferential embodiment.  However, the prosecution statement was unclear and was ambiguous as to what “context” meant and in using “translated” but not “forward.”  The “questionable” prosecution history could not support an unreasonable broadening of “translated forward” when the specification required a particular construction.

6. INTERPRETATION OF “SWEEP ANGLE THAT CAUSES THE BLADE TO INTERCEPT THE SHOCK”: CONSTANT OR DECREASING REARWARD SWEEP ANGLE; FORWARD SWEEP ANGLE EXCLUDED.  Construed in light of the specification, the phrase in applicant’ claim 23, “sweep angle that causes the blade to intercept the shock” meant a constant or decreasing rearward sweep angle, which excludes a forward sweep angle.  (The intercepted “shock” was endwall shock.)
     a. The specification stated that the sweep angle at the outer region should be “nonincreasing” or decreasing” with increasing radius.
     b. At the boundary between the intermediate and outer regions, the sweep angle was rearward.
     c. If the outer region translated forward from the rearward sweep toward zero sweep, the sweep angle decreased.  However, translating further forward to attain a forward sweep increased sweep angle, contrary to the specification disclosure.
     d. To a person of ordinary skill in the art, translating beyond a zero sweep to create a forward sweep would be a “total reversal of direction,” not, as the senior party-applicant argued, a “mere `decrease’ of the angle” to a negative angle.
     e. EXTRINSIC EVIDENCE; EXPERT.  To support a construction of application claim 23 as covering forward sweep, the senior party applicant presented “extrinsic evidence of computational fluid dynamics (CFD) simulations conducted by its expert.”  The extrinsic evidence was not persuasive and could not override the intrinsic evidence on claim meaning.
          i. The applicant argued that the expert’s simulations showed that a person of ordinary skill would have conducted a CFD analysis and seen that “at least some conditions, forward sweep in the outer region was required to intercept the shock.”
          ii. “Shock” in claim 23 meant endwall shock, which was not visible in CFD simulations.   Consequently, a person of ordinary skill would have had no motivation for reversing the sweep angle direction.
          iii. The expert’ CFD simulations translated the outer region toward the relative velocity direction, not toward the axial direction as the claim language required.  Also, the expert equated endwall shock and passage shock, contrary to the application’s teachings.

7.  OBVIOUSNESS; CLAIM 8 NOT OBVIOUS IN VIEW OF PROPERLY-CONSTRUED APPLICATION CLAIM 23.  Because the patent owner’s patent claim 8 would not have been obvious in view of the applicant’s application claim 23, properly construed, the record did “not show a cause of interference.”
     a. STANDARDS FOR OBVIOUSNESS.  Under KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417, 421 (2007), an invention is likely to have been obvious if an ordinarily skilled person would have found the invention “an easily predictable and achievable variation or combination of the prior art.”
          i. To preclude hindsight, the Federal Circuit “flexibly seeks evidence” that there was a teaching to make the variation or combination.
          ii. An invention may have been “obvious to try” and, therefore, obvious if there were a “known and finite” number of approaches to solve the problem.
          iii. Secondary considerations, including fulfilling an unresolved need, commercial success, and industry claim, can support a conclusion of nonobviousness.
     b. NO MOTIVATION TO SWEEP BLADE FORWARD.  There was no evidence that an ordinarily skilled artisan would have been motivated to sweep the blade forward.
          i. The accused infringer argued that the claim 8 variation that used a forward sweep was easily predictable and achievable by using the CFD simulations that its expert demonstrated.
          ii. The flaw in the senior party’s argument was that the CFD simulation would not detect endwall shock.  Without a way to detect reduced endwall shock, an ordinarily skilled person “would not reverse the direction of the sweep angle.”   Also, the CFD simulation translated the blade toward the relative velocity vector, not toward the axial direction as the applicant’s properly construed claim required.  Finally, there was evidence that the translation forward in the axial direction might have defeated the benefit the applicant’s specification heralded: coincidence of shocks.
     c. NOT OBVIOUS TO TRY; FORWARD SWEEP: NOT AN OPTION AT ALL.  The senior party argued that an ordinarily skilled person would have found it “obvious to try” reversing the sweep angle from rearward to forward in order to intercept endwall shock.  The argument lacked merit because the prior art presented only a “broad selection of choices,” to wit, any degree of sweep.  The record did not show any reason, design need or market pressure to try a forward sweep in a blade’s outer region.  The invention of the patent owner’s claim 8 “would not have presented itself as an option at all, let alone an option that would have been obvious to try.”

8. SECONDARY CONSIDERATIONS.  Secondary considerations, as found by the district court, cemented the conclusion of unobviousness.
     a. NEED FOR QUIETER, MORE EFFICIENT ENGINES.  As of the invention dates of both the application and the patent, there was a need for a quieter, more fuel efficient aircraft engine.
          i. At that time, swept blades were merely experimental and had never been included in a feasible, commercially-sold engine.  Swept blades “became unstable during operation, teaching away from their use.”
          ii. The patent owner build a physical embodiment of claim 8, the “SCRF blade.”  A computer analysis showed that it achieved a significant improvement in efficiency.
          iii. The first engine the patent owner produced with the claim 8 blades, the “Trent 8104,” was never sold but was acclaimed by the industry.  The Trent 8140 made the cover of an industry magazine.
          iv. The forward-rearward-forward sweeping blade design subsequently became standard in the industry.
     b. NEXUS BETWEEN COMMERCIAL SUCCESS AND PATENTABLY DISTINCT FEATURE.  To establish commercial success, a patent owner must establish a nexus between the success and an invention’s patentably distinct feature.  The patent owner “established the required nexus between engine sales and the invented fan blade design.”
          i.  Airlines “strongly marketed” the “highly swept fan blades feature.”
          ii. The district court found that the fan blade’s improved efficiency and noise characteristics were “a major driving force behind” the patent owner’s aircraft engine sales.

©2010 Donald S. Chisum - All Rights Reserved

Website design by Bluegrass Internet Services