EcoServices LLC v. Lufthansa Technik Ag

• Decision Date: 20 December 2018
• Docket Number: Patent Interference 106,053
• Parties: EcoServices, LLC, Junior Party (Patent 7, 445, 677 Inventor: Peter Asplund), v. Lufthansa Technik AG, Senior Party (Application 12/769, 514, Inventors: Sebastian Giljohann, Daniel Göbel, Michael Mensch, Joachim Heine, and Joachim Hacker), Lufthansa Claim 1 EcoServices Claim 1
• Court: Patent Trial and Appeal Board

EcoServices, LLC, Junior Party (Patent 7, 445, 677 Inventor: Peter Asplund), v. Lufthansa Technik AG, Senior Party (Application 12/769, 514, Inventors: Sebastian Giljohann, Daniel Göbel, Michael Mensch, Joachim Heine, and Joachim Hacker),

Patent Interference No. 106, 053

United States Patent and Trademark Office, Patent Trial and Appeal Board

December 20, 2018

Counsel for Lufthansa: Barry E. Bretschneider Michael E Anderson Charles C. Carson Baker & Hostetler LLP

Counsel for EcoServices: Barry J. Schindler Joshua Malino Elina Slavin Greenberg Traurig, LLP

Before SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH KATZ Administrative Patent Judges.

JUDGMENT - 37 C.F.R. § 41.127(A)

In light of the Decision on Motions (Paper 172), denying EcoServices Motions 1-3 (Papers 72, 73, and 74) and granting Lufthansa Motion 1 (Paper 31), for benefit of priority, the interference was redeclared with Lufthansa as the senior party. In addition, in light of the decision to grant Lufthansa Motion 2 (Paper 32), to designate EcoServices claims 1-20 as corresponding to the count, the interference was redeclared with all of EcoServices's claims corresponding to count 1. (See Redeclaration, Paper 173.)

EcoServices did not file a priority statement in the record of the interference. (See Lufthansa Reply 1, Paper 126 1:5-8.) Therefore, EcoServices cannot present evidence for a priority date earlier than 21 May 2008. See 37 C.F.R. § 41.204(a) ("Priority Statement. A party may not submit evidence of its priority in addition to its accorded benefit unless it files a statement setting forth all bases on which the party intends to establish its entitlement to judgment on priority.") Accordingly, EcoServices cannot present evidence of a priority date in regard to count 1 earlier than Lufthansa's benefit date. We enter judgment against EcoServices as to count 1.

It is ORDERED that claims 1-20 of EcoServices patent 7, 445, 677 are CANCELED;

It is also ORDERED that a copy of this judgment shall be entered into the administrative record of EcoServices patent 7, 445, 677 and Lufthansa application 12/769, 514;

It is further ORDERED that the parties are directed to 35 U.S.C. § 135(c) and to 37 C.F.R. § 41.205 regarding the filing of settlement agreements; and

It is further ORDERED that a party seeking judicial review timely serve notice on the Director of the United States Patent and Trademark Office; 37 C.F.R. §§ 90.1 and 104.2. See also 37 C.F.R. § 41.8(b). Attention is directed to Biogen Idec MA, Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648, 654-57 (Fed. Cir. 2015) (determining that pre-AIA § 146 review was eliminated for interference proceedings declared after September 15, 2012).

DECISION ON MOTION- 37 C.F.R. § 41.125(B)

KATZ, Administrative Patent Judge.

I. Introduction

Lufthansa is involved in this interference as junior party based on its application 12/769, 514 ("the '514 application"). Upon declaration, claims 1-7 and 9, but not claims 10-20, of the '514 application were designated as corresponding to the count, Count 1. (See Declaration ("Decl."), Paper 1, 4:15-5:6.) Also upon declaration, Lufthansa was accorded benefit of the filing date of its parent application 12/302, 682 filed 17 October 2009, but not any of its earlier applications. (See Decl., Paper 1, 5:11-12.)

EcoServices is involved as senior party based on its patent 7, 445, 677 ("the '677 patent"), which issued from an application filed 21 May 2008. Claims 1-9, but not claims 10-20, were designated as corresponding to Count 1. (See Decl., Paper 1, 4:15-5:6.) EcoServices was not accorded the filing date of any earlier application. (See Decl, Paper 1, 5:13-14.)

Both parties claim apparatuses for cleaning a gas turbine engine. They explain that the fan blades and other parts of such engines become soiled and coated in contaminants as the engine is used. (See '514 appl., Ex. 1002, 1:28-2:3; '677 patent, Ex. 1001, 1:15-24.) The parties' inventions are reported to effectively clean the core of a gas turbine engine by allowing cleaning medium to reach beyond the turbine blades while the engine is being cranked. (See '514 appl., Ex. 1002, 3:16-4:5; '677 patent, Ex. 1001, 1:66-2:3.)

Both EcoServices and Lufthansa present several motions in this preliminary phase of the interference.^[1] Each party bears the ultimate burden of persuading us it is entitled to the relief requested. See 37 C.F.R. §§ 41.121(b) and 41.208(b).

EcoServices presents three substantive motions: Motion 1 (Paper 72) for a determination of no interference-in-fact; Motion 2 (Paper 73) for judgment that Lufthansa's claims lack sufficient support under 35 U.S.C. § 112, first paragraph; and Motion 3 (Paper 74) for judgment based on 35 U.S.C. § 135(b)(1). Each of these motions presents a threshold issue and we consider them first. See 37 C.F.R. § 41.201 ("Threshold issues may include: (1) No interference-in-fact, and (2) In the case of an involved application claim first made after the publication of the movant's application or issuance of the movant's patent: (i) Repose under 35 U.S.C. 135(b) in view of the movant's patent or published application, or (ii) Unpatentability for lack of written description under 35 U.S.C. 112 of an involved application claim where the applicant suggested, or could have suggested, an interference under §41.202(a)."). We deny each of EcoServices's motions.

Lufthansa presents four substantive motions: Motion 1 (Paper 31) seeking the benefit of priority of the filing dates of its earlier applications; Motion 2 (Paper 32) arguing that claims 10-20 of EcoServices's involved '677 patent should be designated as corresponding to the Count; Motion 3 (Paper 33) arguing that EcoServices's currently involved claims are unpatentable under 35 U.S.C. § 102 and 103 over a Lufthansa publication; and Motion 4 (Paper 34), which is contingent on the grant of Lufthansa Motion 2, arguing that EcoServices's claims 10-20 are also unpatentable over the prior art. We grant Lufthansa Motion 1 and accord Lufthansa the benefit of the filing date of its earlier applications. We also grant Lufthansa Motion 2 and designate EcoServices's claims 10-20 as corresponding to Count 1. We do not decide Lufthansa's Motions 3 and 4 because the issues of patentability presented are moot in light of our other decisions.

Both parties are also involved in interference 106, 098. EcoServices is involved based on the '677 patent, specifically claims 10-20. (See Declaration in interference 106, 098, Paper 1, 4:5-15.) Lufthansa is involved based on application 15/218, 669, a division of the'514 application. Because we grant Lufthansa Motion 2 to designate claims 10-20 of the '677 patent as corresponding to Count 1 of the current interference and we enter judgment against EcoServices, canceling all claims of the '677 patent, we also enter an order in interference 106, 098 to show why that proceeding should continue.

II. EcoServices Motion 1 - No interference-in-fact

Senior Party EcoServices argues that there is no interference-in-fact between claims 1-9 of EcoServices's involved '677 patent and claims 1-7 and 9 of Lufthansa's involved '514 application. (See EcoServices Motion 1, Paper 72, 1:2- 5.)

Claims interfere when they anticipate or render obvious each other under a "two-way test." See 37 C.F.R. § 41.203(a) ("An interference 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."). Under this test, if none of EcoServices involved claims anticipates or renders obvious any of Lufthansa's involved claims and if none of Lufthansa's involved claims anticipates or renders obvious any of EcoServices's involved claims, there is no interference-in-fact and the proceeding should be terminated. EcoServices bears the burden and must present sufficient evidence to persuade us of this result.

We reproduce Lufthansa claim 1 and EcoServices claim 1 side-by-side for comparison.

                Lufthansa Claim 1
                                (Paper 9 (emphasis added))
                              
                EcoServices Claim 1
                                (Paper 14 (emphasis added))
                              
                

An apparatus for cleaning a gas turbine engine, said engine including an engine inlet portion having a fan hub and an array of fan blades connected to and extending radially outward from said fan hub, the apparatus comprising:

A apparatus for cleaning a gas turbine engine, said engine including an engine inlet portion having a fan hub and an array of fan blades connected to and extending radially outward from said fan hub, the apparatus comprising:

a mobile harness assembly adapted for injecting washing fluid between fan blades and directly into the gas turbine engine's core while the engine is being cranked, the harness assembly comprising:

a mobile harness assembly adapted for injecting washing fluid between fan blades and directly into the gas turbine engine's core while the engine is being cranked, the harness assembly comprising:

a coupling device for connecting one or more fluid supply lines to one or more fluid delivery lines, said coupling device comprising a first portion configured for rotating with the fan hub about the hub's central axis as the engine is cranked, and a second portion configured so that said first portion rotates relative to said second portion;

a coupling device for connecting one or more fluid supply lines to one or more fluid delivery lines, said coupling device comprising a first portion configured for rotating with the fan hub about the hub's central axis as the engine is cranked, and a second portion configured to remain static relative to said first portion;

one or more fluid delivery lines attached at one end to the coupling...