General Electric Company v. Raytheon Technologies Corp.
983 F.3d 1334
| Fed. Cir. | 2020Background
- Raytheon’s U.S. Patent No. 8,695,920 claims a method of designing a geared high-bypass turbofan (claims 9–14), including a two-stage high-pressure turbine and various performance parameters.
- GE petitioned for inter partes review (IPR) challenging claims 9–14 as obvious over Wendus and Moxon; several other claims were disclaimed so the Board reviewed only dependent claims 10–14.
- The Board found Wendus taught away from a two-stage high-pressure turbine (favoring a one-stage design) and concluded GE had not shown motivation to combine Wendus and Moxon to render claim 10 obvious.
- Raytheon moved to dismiss GE’s appeal for lack of Article III standing; GE alleged concrete plans (2019 expenditures of $10–12 million, a preferred geared-turbofan design, and submission of that design to Airbus) creating a substantial risk of future infringement.
- The Federal Circuit held GE has standing (concrete plans and a substantial risk Raytheon would sue), concluded the Board lacked substantial evidence for its key factual findings (teaching away, lack of motivation to combine, and failure to show obviousness of claim 10 as a whole), vacated the Board’s decision, and remanded for further proceedings.
Issues
| Issue | GE’s Argument | Raytheon’s Argument | Held |
|---|---|---|---|
| Standing to appeal the Board’s IPR decision | GE alleged concrete, ongoing development and near-term marketing plans (10–12M investment; preferred geared-turbofan; submitted design to Airbus) creating substantial risk of suit | No past threats or suit; GE’s plans are speculative and like prior unsuccessful standing showing | GE has standing: allegations show concrete plans and substantial risk of future infringement suit |
| Whether Wendus “teaches away” from a two-stage high-pressure turbine | Wendus does not criticize or discourage two-stage turbines; it lists one-stage as a system benefit dependent on other enabling technologies | Wendus shows a strong preference for one-stage and discourages two-stage use (weight/cost benefits, engineered around one-stage) | Board lacked substantial evidence that Wendus teaches away; Wendus does not criticize or discredit two-stage designs |
| Whether a person of ordinary skill would be motivated to combine Wendus and Moxon | Known tradeoffs (efficiency, stress, reliability) and Wendus’s disclosure of virtually all claim elements provide motivation and reasonable expectation of success | Wendus’s preference for one-stage undermines any motivation to adopt a two-stage turbine | Board lacked substantial evidence to deny motivation to combine; known advantages of two-stage give a suitable motivation absent teaching away |
| Whether GE showed obviousness of claim 10 “as a whole” | Combining Wendus (all elements except two-stage) with Moxon (two-stage) reasonably yields claim 10; need not justify each Wendus parameter separately | GE failed to justify why other claimed parameters would be maintained when inserting two-stage turbine | Board erred by requiring separate motivation for each parameter; lacked substantial evidence to reject obviousness of claim 10 as a whole |
Key Cases Cited
- Spokeo, Inc. v. Robins, 136 S. Ct. 1540 (U.S. 2016) (injury-in-fact requirement for Article III standing)
- Lujan v. Defenders of Wildlife, 504 U.S. 555 (U.S. 1992) (constitutional standing standards)
- JTEKT Corp. v. GKN Auto. LTD., 898 F.3d 1217 (Fed. Cir. 2018) (future infringement risk requires concrete plans creating substantial risk)
- Adidas AG v. Nike, Inc., 963 F.3d 1355 (Fed. Cir. 2020) (showing engagement in or likely engagement in activity that could prompt suit suffices for standing in IPR appeals)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (U.S. 2007) (flexible approach to motivation to combine and obviousness)
- DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009) (standard for teaching away)
- PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186 (Fed. Cir. 2014) (reasonable expectation of success in combining references)
- Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015) (standard of review: legal issues de novo, factual findings for substantial evidence)