Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Raytheon Technologies Corporation v. General Electric Company, No. 2020-1755 (April 16, 2021). The Court reversed the Patent Trial and Appeal Board’s inter partes review (“IPR”) decision that Raytheon’s challenged patent claims would have been obvious.
In the IPR proceeding, GE successfully argued that challenged claims 3 and 16 of U.S. Patent No. 9,695,751 would have been obvious in view of the Knip reference. In particular, the Board found that Knip discloses the claimed power density limitation for a gas turbine engine. Knip is a 1987 NASA technical memorandum that envisions superior performance characteristics for an imagined engine using all composite materials. Although Knip discloses numerous performance parameters associated with its futuristic engine, it does not explicitly disclose thrust, turbine volume, or power density. GE did not dispute that Knip’s contemplated revolutionary materials were unavailable at the time the ’751 patent was filed. Nor did GE argue that the aggressive parameters it used to calculate power density were achievable through some other means.
On appeal, the Federal Circuit concluded that GE failed to provide an evidence-based case for how the turbofan engine having a particular power density, as claimed in the ’751 patent, is enabled by Knip’s disclosure. The Court explained, “if an obviousness case is based on a non-self-enabled reference, and no other prior art reference or evidence would have enabled a skilled artisan to make the claimed invention, then the invention cannot be said to have been obvious.” In finding for Raytheon, the Court noted that, in contrast to GE, Raytheon had presented extensive, unrebutted evidence of non-enablement including a declaration from a professor of materials science detailing the unavailability of the revolutionary composite material contemplated by Knip. Additionally, Raytheon submitted evidence that the exceptional temperature and pressure parameters cited in Knip had not been achieved through other means as of the priority date. In sum, the Court found Raytheon’s unrebutted evidence that Knip fails to enable a skilled artisan to physically make Knip’s advanced engine was conclusive because GE presented no evidence, other than Knip itself, for why a skilled artisan could achieve the claimed power density.