ASPLUNDv.GILJOHANN et al.

Patent Trial and Appeal Board

Dec 20, 2018

12769514 (P.T.A.B. Dec. 20, 2018)

BoxInterferences@uspto.gov Filed: 20 December 2018
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE 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

Judgment - 37 C.F.R. § 41.127(a)

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

KATZ, Administrative Patent Judge.

In light of the Decision on Motions (Paper 172), denying EcoServices 1
Motions 1–3 (Papers 72, 73, and 74) and granting Lufthansa Motion 1 (Paper 31), 2
for benefit of priority, the interference was redeclared with Lufthansa as the senior 3
party. In addition, in light of the decision to grant Lufthansa Motion 2 (Paper 32), 4
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to designate EcoServices claims 1—20 as corresponding to the count, the 1
interference was redeclared with all of EcoServices’s claims corresponding to 2
count 1. (See Redeclaration, Paper 173.) 3
EcoServices did not file a priority statement in the record of the interference. 4
(See Lufthansa Reply 1, Paper 126, 1:5–8.) Therefore, EcoServices cannot present 5
evidence for a priority date earlier than 21 May 2008. See 37 C.F.R. § 41.204(a) 6
(“Priority Statement. A party may not submit evidence of its priority in addition to 7
its accorded benefit unless it files a statement setting forth all bases on which the 8
party intends to establish its entitlement to judgment on priority.”) Accordingly, 9
EcoServices cannot present evidence of a priority date in regard to count 1 earlier 10
than Lufthansa’s benefit date. We enter judgment against EcoServices as to count 11
1. 12
It is ORDERED that claims 1–20 of EcoServices patent 7,445,677 are 13
CANCELED; 14
It is also ORDERED that a copy of this judgment shall be entered into the 15
administrative record of EcoServices patent 7,445,677 and Lufthansa application 16
12/769,514; 17
It is further ORDERED that the parties are directed to 35 U.S.C. § 135(c) 18
and to 37 C.F.R. § 41.205 regarding the filing of settlement agreements; and 19
It is further ORDERED that a party seeking judicial review timely serve 20
notice on the Director of the United States Patent and Trademark Office; 37 C.F.R. 21
§§ 90.1 and 104.2. See also 37 C.F.R. § 41.8(b). Attention is directed to Biogen 22
Idec MA, Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648, 654–57 23
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(Fed. Cir. 2015) (determining that pre-AIA § 146 review was eliminated for 1
interference proceedings declared after September 15, 2012). 2

cc (via e-mail):

Counsel for Lufthansa:

Barry E. Bretschneider
Michael E. Anderson
Charles C. Carson
Baker & Hostetler LLP
1050 Connecticut Avenue, N. W., Suite 1100
Washington, DC 20036-5304
Telephone: (202) 861-1500
Facsimile: (202) 861-1783
E-Mail: bbretschneider@bakerlaw.com
E-Mail: meanderson@bakerlaw.com
E-mail: ccarson@bakerlaw.com

Counsel for EcoServices:

Barry J. Schindler
Joshua Malino
Elina Slavin
Greenberg Traurig, LLP
500 Campus Drive, Suite 400
Florham Park, NJ 07932
Telephone: (973) 360-7900
Facsimile: (973) 301-8410
Email: SchindlerB@gtlaw.com
Email: MalinoJ@gtlaw.com
Email: SlavinE@gtlaw.com
BoxInterferences@uspto.gov Filed: 20 December 2018
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Lufthansa Technik AG,
Junior Party
(Application 12/769,514,
Inventors: Sebastian Giljohann, Daniel Göbel, Michael Mensch,
Joachim Heine, and Joachim Hacker),

v.

EcoServices, LLC,
Senior Party
(Patent 7,445,677
Inventor: Peter Asplund).

Patent Interference No. 106,053

Decision on Motion- 37 C.F.R. § 41.125(b)

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

KATZ, Administrative Patent Judge.
I. Introduction 1
Lufthansa is involved in this interference as junior party based on its 2
application 12/769,514 (“the ’514 application”). Upon declaration, claims 1–7 and 3
9, but not claims 10–20, of the ’514 application were designated as corresponding 4
to the count, Count 1. (See Declaration (“Decl.”), Paper 1, 4:15–5:6.) Also upon 5
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declaration, Lufthansa was accorded benefit of the filing date of its parent 1
application 12/302,682 filed 17 October 2009, but not any of its earlier 2
applications. (See Decl., Paper 1, 5:11–12.) 3
EcoServices is involved as senior party based on its patent 7,445,677 (“the 4
’677 patent”), which issued from an application filed 21 May 2008. Claims 1–9, 5
but not claims 10–20, were designated as corresponding to Count 1. (See Decl., 6
Paper 1, 4:15–5:6.) EcoServices was not accorded the filing date of any earlier 7
application. (See Decl, Paper 1, 5:13–14.) 8
Both parties claim apparatuses for cleaning a gas turbine engine. They 9
explain that the fan blades and other parts of such engines become soiled and 10
coated in contaminants as the engine is used. (See ’514 appl., Ex. 1002, 1:28–2:3; 11
’677 patent, Ex. 1001, 1:15–24.) The parties’ inventions are reported to effectively 12
clean the core of a gas turbine engine by allowing cleaning medium to reach 13
beyond the turbine blades while the engine is being cranked. (See ’514 appl., Ex. 14
1002, 3:16–4:5; ’677 patent, Ex. 1001, 1:66–2:3.) 15
Both EcoServices and Lufthansa present several motions in this preliminary 16
phase of the interference.1 Each party bears the ultimate burden of persuading us it 17
is entitled to the relief requested. See 37 C.F.R. §§ 41.121(b) and 41.208(b). 18
EcoServices presents three substantive motions: Motion 1 (Paper 72) for a 19
determination of no interference-in-fact; Motion 2 (Paper 73) for judgment that 20

1 The parties requested oral argument. (See Papers 130 and 136.) After review of
the parties’ briefs and evidence, oral argument was not considered to be necessary.
Accordingly, as is our discretion, no oral argument was held. See 37 C.F.R.
§ 41.124(c)(“If a request for oral argument is granted . . . .”).
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Lufthansa’s claims lack sufficient support under 35 U.S.C. § 112, first paragraph; 1
and Motion 3 (Paper 74) for judgment based on 35 U.S.C. § 135(b)(1). Each of 2
these motions presents a threshold issue and we consider them first. See 37 C.F.R. 3
§ 41.201 (“Threshold issues may include: (1) No interference-in-fact, and (2) In 4
the case of an involved application claim first made after the publication of the 5
movant’s application or issuance of the movant's patent: (i) Repose under 35 6
U.S.C. 135(b) in view of the movant's patent or published application, or (ii) 7
Unpatentability for lack of written description under 35 U.S.C. 112 of an involved 8
application claim where the applicant suggested, or could have suggested, an 9
interference under §41.202(a).”). We deny each of EcoServices’s motions. 10
Lufthansa presents four substantive motions: Motion 1 (Paper 31) seeking 11
the benefit of priority of the filing dates of its earlier applications; Motion 2 (Paper 12
32) arguing that claims 10–20 of EcoServices’s involved ’677 patent should be 13
designated as corresponding to the Count; Motion 3 (Paper 33) arguing that 14
EcoServices’s currently involved claims are unpatentable under 35 U.S.C. § 102 15
and 103 over a Lufthansa publication; and Motion 4 (Paper 34), which is 16
contingent on the grant of Lufthansa Motion 2, arguing that EcoServices’s claims 17
10–20 are also unpatentable over the prior art. We grant Lufthansa Motion 1 and 18
accord Lufthansa the benefit of the filing date of its earlier applications. We also 19
grant Lufthansa Motion 2 and designate EcoServices’s claims 10–20 as 20
corresponding to Count 1. We do not decide Lufthansa’s Motions 3 and 4 because 21
the issues of patentability presented are moot in light of our other decisions. 22
Both parties are also involved in interference 106,098. EcoServices is 23
involved based on the ’677 patent, specifically claims 10–20. (See Declaration in 24
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interference 106,098, Paper 1, 4:5–15.) Lufthansa is involved based on application 1
15/218,669, a division of the’514 application. Because we grant Lufthansa Motion 2
2 to designate claims 10–20 of the ’677 patent as corresponding to Count 1 of the 3
current interference and we enter judgment against EcoServices, canceling all 4
claims of the ’677 patent, we also enter an order in interference 106,098 to show 5
why that proceeding should continue. 6
II. EcoServices Motion 1 – No interference-in-fact 7
Senior Party EcoServices argues that there is no interference-in-fact between 8
claims 1–9 of EcoServices’s involved ’677 patent and claims 1–7 and 9 of 9
Lufthansa’s involved ’514 application. (See EcoServices Motion 1, Paper 72, 1:2–10
5.) 11
Claims interfere when they anticipate or render obvious each other under a 12
“two-way test.” See 37 C.F.R. § 41.203(a) (“An interference exists if the subject 13
matter of a claim of one party would, if prior art, have anticipated or rendered 14
obvious the subject matter of a claim of the opposing party and vice versa.”). 15
Under this test, if none of EcoServices involved claims anticipates or renders 16
obvious any of Lufthansa’s involved claims and if none of Lufthansa’s involved 17
claims anticipates or renders obvious any of EcoServices’s involved claims, there 18
is no interference-in-fact and the proceeding should be terminated. EcoServices 19
bears the burden and must present sufficient evidence to persuade us of this result. 20
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We reproduce Lufthansa claim 1 and EcoServices claim 1 side-by-side for 1
comparison. 2
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
device’s first portion and positioned for
delivering washing fluid directly into
one or more fluid delivery lines
removably attached at one end to the
coupling device's first portion and
positioned for delivering washing fluid
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the gas turbine engine core, said fluid
delivery lines rotating with the fan hub
about the hub’s central axis as the
engine is cranked;

directly into the gas turbine engine
core, said fluid delivery lines rotating
with the fan hub about the hub's central
axis as the engine is cranked;

one or more fluid supply lines attached
to the coupling device’s second portion
for supplying washing fluid to the
harness assembly, said fluid supply
lines remaining in a static position
relative to the rotating fluid delivery
lines;

one or more fluid supply lines
removably attached to the coupling
device's second portion for supplying
washing fluid to the harness assembly,
said fluid supply lines remaining in a
static position relative to the rotating
fluid delivery lines;

one or more harness rings attached to
the one or more fluid delivery lines for
spacing, stabilizing, and positioning the
fluid delivery lines relative to the fan
blades; and

one or more harness rings attached to
the one or more fluid delivery lines for
spacing, stabilizing, and positioning the
fluid delivery lines relative to the fan
blades; and

a connector for removably attaching
the harness assembly onto the fan hub.
a connector for removably attaching
the harness assembly directly onto the
fan hub.
1
EcoServices argues that none of its involved claims are anticipated by 2
Lufthansa’s involved claims 1–7 and 9. (See EcoServices Motion 1, Paper 72, at 3
12:15–13:9.) EcoServices argues that the “coupling device” recited in each 4
parties’ claims is different.2 5

2 The parties claims also differ in that the fluid delivery and fluid supply lines are
“removably” attached in EcoServices’s claim 1, but not specified as such in
Lufthansa’s claim 1. EcoServices does not argue that this difference indicates
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EcoServices’s claim 1 requires a coupling device with a first portion that 1
rotates with the fan hub as the engine is cranked and “a second portion configured 2
to remain static relative to said first portion.” (See EcoServices Clean Copy of 3
Claims, Paper 14 (emphasis added).) Lufthansa’s claim 1 also requires a coupling 4
device with a first portion that rotates with the fan hub as the engine is cranked, but 5
recites “a second portion configured so that said first portion rotates relative to said 6
second portion.” (See Lufthansa Clean Copy of Claims, Paper 9 (emphasis 7
added).) According to EcoServices, its claim 1 is properly interpreted to mean that 8
the second portion of the coupling device is configured to remain stationary 9
relative to the first portion, whereas claim 1 of Lufthansa’s ’514 application is 10
properly interpreted to mean that the second portion of the coupling is configured 11
to rotate relative to the first portion. (See EcoServices Motion 1, Paper 72, 12:20–12
23 and 6:16–22.) We are not persuaded that Lufthansa’s claims must be 13
interpreted as narrowly as EcoServices argues. 14
First, we are not persuaded that a plain reading Lufthansa’s claim 1 requires 15
the interpretation put forth by EcoServices. We do not agree that “a second portion 16
configured so that said first portion rotates relative to said second portion” 17
necessarily means that the second portion rotates relative to the first portion. The 18
plain language recites movement of the first portion only. It is silent about 19
movement of the second portion or the lack thereof. We agree with Lufthansa that 20
the plain reading of the claim language put forth by EcoServices incorrectly 21
requires language wherein “portion A rotates relative to portion B” to mean that 22

there is no interference-in-fact. (See Lufthansa Opp. 1, Paper 90, 4:3–5.)
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“portion B rotates relative to portion A.” (Lufthansa Opp. 1, Paper 90, 10:11–13.) 1
On its face, the term “portion A rotates relative to portion B” could mean either 2
that portion B rotates relative to portion A or that portion B remains static while 3
portion A rotates. Indeed, both could simultaneously rotate at different speeds. 4
We are similarly not persuaded by EcoServices’s interpretation of Lufthansa 5
claim 1 in light of the specification of Lufthansa’s ’514 application and 6
prosecution history. (See EcoServices Motion 1, Paper 72, 6:8–12:14.) Both 7
parties agree that the “coupling device” claimed by Lufthansa corresponds to the 8
“rotary joint” described in the ’514 application. (See id., 7:6–7; see Lufthansa 9
Opp. 1, Paper 90, 11:3–4 and response to EcoServices Statement of Fact 19.) 10
EcoServices argues that the ’514 application specification and prosecution history 11
require that a second portion of the rotary joint rotate around the first portion. (See 12
EcoServices Motion 1, Paper 72, 6:8–12:14.) EcoServices refers to Figure 2 and 13
the supporting text in Lufthansa’s ’514 application in regard to this rotary joint. 14
We reproduce Figure 2 below to illustrate the rotary joint. 15
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1
Figure 2 depicts a cross-section of the nozzle unit seated on the shaft hub of a fan. 2
(See ’514 appl., Ex. 1002, 9:18–19 (cross-hatching added to distinguish the shaft 3
hub 3 around which the claimed apparatus is placed).) The rotary joint (element 5) 4
depicted in Figure 2 is arranged at the point of the nozzle unit. (See id., 10:5–7.) 5
Figure 2 also depicts two pressure lines (elements 6), which extend radially 6
outward from the rotary joint (see ’514 appl., Ex. 1002, 10:7–8) and a connecting 7
line or feed line (element 10) attached to the other end of the rotary joint to supply 8
cleaning medium from a supply unit not depicted (see id., 10:8–11 and 10:31–9
11:1). 10
The ’514 application describes the relationship of the rotary joint with the 11
other elements of the apparatus, wherein 12
[t]he device according to the invention has [1] a supply unit which provides 13
cleaning medium, [2] a nozzle unit which is designed for introducing the 14
cleaning medium into the core engine, and also [3] a line connection 15
between the supply unit and the nozzle unit. According to the invention, it is 16
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provided that the nozzle unit has means for the rotationally fixed connection 1
to the shaft of the fan of the jet power plant, and that a rotary joint is 2
provided between the nozzle unit and the line connection. 3
4
(Id., 2:14–19 (bracketed numbers and emphasis added).) 5
EcoSerivces argues that Lufthansa’s ’514 application places the rotary joint 6
(the claimed “coupling device”) of Lufthansa’s ’514 application between a “nozzle 7
unit” and the line connection, and provides that the rotary joint/coupling device is a 8
“rotationally fixed connection to the shaft of a fan of the jet power plant.” (See 9
EcoServices Motion 1, Paper 72, 7:8–15, citing ’514 appl., Ex. 1002, 2:16–19.) 10
According to EcoServices, the rotary joint/coupling device of the ’514 application 11
is “a device of any kind which is suitable for creating a sufficiently stable, 12
preferably pressure-tight and fluid-tight connection between the stationary part of: 13
a) the line connection and b) the nozzle unit which co-rotates with the fan.” 14
(EcoServices Motion 1, Paper 72, 8:9–12.) EcoServices argues further that the 15
’514 application describes the nozzle unit as rotating with the hub of the jet power 16
plant (element 3 of Figure 2) at a speed of 50 to 1,500 rpm. (See id., 8:1–4, citing 17
’514 appl., Ex. 1002, 8:5–21.) According to EcoServices, the rotary joint “would 18
not maintain the line connection in a stationary position relative to the nozzle unit 19
rotating at a speed of 50 to 1,500 rpm.” (EcoServices Motion 1, Paper 72, 8:1–6.) 20
EcoServices’s arguments do not explain why a rotary joint with two 21
different portions, a first that rotates with the fan hub and a second that is static 22
relative to the first, would not meet the description in the ’514 application. As 23
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Lufthansa notes, EcoServices’s witness, Dr. Rice3 testifies that one of ordinary 1
skill in the art would have understood the rotary joint described in the ’514 2
application to have two portions, wherein one part rotates relative to the other. 3
(See Lufthansa Opp. 1, Paper 90, 11:3–6, citing Deposition of James G. Rice 4
(“Rice Depo.”), Ex. 2023, 30:17–31:8.) Specifically, Dr. Rice testifies: 5
Q How do you define rotary joint? 6
A Well, the more common term would be the rotary union. 7
Q But the term used in this case is rotary joint. 8
What does that mean? 9
A Well, you have two components that are joined together to 10
provide a pressure-tight, fluid-free connection and the two components are -- 11
may rotate one with respect to the other. 12
Q I see. In the rotary joint, do both parts of the -- both of those 13
two parts you referred to have to rotate? 14
A If one rotates -- I said one rotates with respect to the other. I 15
didn't say anything about the absolute rotation. In other words, when I say 16
absolute rotation, if I took a fixed reference frame like the room we're in is 17
that component rotating with respect to the room. I don't know. It may or 18
may not be. 19
Q So it could be -- one component could be stationary and the 20
other component rotating. It would still be okay? 21
A That could be, yes. I still call that a rotary joint. In a more 22
general sense, I don't know specifically how one is rotating with respect to 23
the other. 24
25

3 Dr. Rice testifies that he has a Ph.D. in Mechanical Engineering and over 40
years of professional experience in mechanical engineering design and analysis as
a consultant in both academic and industrial environments. (See Declaration of Dr.
James G. Rice (“Rice Decl.’), Ex. 1003, ¶ 1.) We find him qualified to testify
about the issues presented in this interterference.
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(Rice Depo, Ex. 2023, 30:11–31:15.) Thus, according to Dr. Rice’s testimony, 1
portion of the rotary joint described in the ’514 application could rotate with the 2
fan hub at 50 to 1,500 rpm, while the other portion remains static relative to this 3
first portion, providing a pressure-tight and fluid-tight connection with the line 4
connection. Because of the dual nature of the rotary joint described by Dr. Rice, 5
we disagree with EcoServices that it could not maintain the line connection in a 6
stationary position relative to the nozzle unit rotating at a speed of 50 to 1,500 rpm. 7
Similarly, we are unpersuaded by EcoServices’s argument that 8
since the nozzle unit of the ‘514 application rotates with the fan hub and the 9
rotary joint 5 does not maintain the line connection (not shown) in a 10
stationary position relative to the nozzle unit, the rotary joint 5 includes a 11
first portion that is configured for rotating with the fan hub about the hub’s 12
central axis as the engine is cranked and a second portion configured to 13
rotate relative to the first portion. 14
15
(EcoServices Motion 1, Paper 72, 9:3–7.) EcoServices does not cite to a 16
description in the specification of the ’514 application that limits the rotary joint 17
from having one portion that is stationary and another portion that rotates with fan 18
hub. (See EcoServices Motion 1, Paper 72, 8:7–17, citing ’514 appl., Ex. 1002, 19
3:14–24.) 20
The ’514 application provides that 21
[t]he supply unit and the nozzle unit are interconnected via a line connection. 22
This line connection especially serves for feed (preferably under pressure 23
and possibly heated) of the cleaning medium to the nozzles of the nozzle 24
unit. The line connection is preferably flexible and can especially have a 25
possibly pressure-tight hose. 26
27
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The line connection is connected to the nozzle unit by means of a rotary 1
joint. The term rotary joint is to be functionally understood and refers to a 2
device of any kind which is suitable for creating a sufficiently stable, 3
preferably pressure-tight and fluid-tight connection between the stationary 4
part of the line connection and the nozzle unit which co-rotates with the fan. 5
It is the purpose of the rotary joint to direct the cleaning medium from the 6
stationary supply unit to the co-rotating nozzle unit and then to allow the 7
cleaning fluid to discharge from the nozzles. 8
9
(’514 appl., Ex. 1002, 3:14–24 (emphasis added); see Lufthansa Opp. 1, Paper 90, 10
11:14–12:1.) This portion of the ’514 application does not exclude, and even 11
suggests, a rotary joint with two portions: one that rotates with the nozzle unit and 12
one that remains stationary with respect to the line connection. 13
EcoServices’s expert, Dr. Rice, testifies that the portion of the ’514 14
application cited above is “consistent with” the claim construction put forth by 15
EcoServices, wherein both portions of the rotary joint/coupling device rotate. (See 16
Declaration of Dr. James G. Rice (“Rice Decl.”), Ex. 1003, ¶ 24.) Although the 17
specification may be consistent with the claim interpretation, it is not inconsistent 18
with a claim interpretation where a portion of the rotary joint/coupling device is 19
static relative to the rotating fluid delivery lines. 20
We find nothing in the portion of the ’514 application specification that 21
excludes a rotary joint from having a portion that remains static relative to the first 22
portion that rotates with the nozzle unit. 23
EcoServices argues further that the prosecution history of the ’514 24
application demonstrates that the “coupling device” recited in Lufthansa’s claim 1 25
requires two rotating portions. (See EcoServices Motion 1, Paper 72, 10:1–20.) 26
EcoServices notes that Lufthansa copied the claims of EcoServices ’677 patent 27
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almost exactly, except for the limitation that the second portion of the coupling 1
device is “configured to remain static relative to said first portion.” According to 2
EcoServices, because Lufthansa changed this limitation to “a second portion 3
configured so that said first portion rotates relative to said second portion,” it 4
acknowledged that the second portion of the coupling device is not static relative to 5
said first portion, being configured instead to rotate relative to the first portion. 6
(See id., 10:17–20.) 7
We are not persuaded by this argument because, as explained above, the 8
limitation to the second portion of the coupling device in Lufthansa’s claim 1 does 9
not necessarily require the second portion to rotate relative to the first portion. 10
Although EcoServices relies on Dr. Rice’s testimony in support of its argument, 11
Dr. Rice merely reiterates the argument that changing the claim language was an 12
acknowledgment that the second portion of the coupling device claimed by 13
Lufthansa is not static relative to the first portion. (See Rice Decl., Ex. 1003, 14
¶¶ 32–34.) Because we do not agree with the premise of EcoServices’s argument, 15
we do not agree that Lufthansa’s intent in changing the claim language indicates 16
anything about its broadest reasonable interpretation. 17
EcoServices argues further that the ’514 application would not have 18
suggested to a person of ordinary skill in the art that the claimed coupling device 19
includes a stationary portion and a rotating portion because the ’514 application 20
fails to recognize the problem of having non-stationary supply lines. (See 21
EcoServices Motion 1, Paper 72, 11:1–6.) EcoServices argues that instead the 22
’514 application is directed to the problem of connecting fluid nozzles in a 23
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rotationally fixed manner to the shaft of the fan. (See id., 11:7–14.) EcoServices 1
bases this argument on the description in the ’514 application that 2
[a]ccording to the invention, it is therefore provided that these nozzles are 3
not arranged in a stationary manner in the region of the inlet of the jet power 4
plant, but are connected in a rotationally fixed manner to the shaft of the fan 5
and therefore during a slow rotation of the power plant can co-rotate with the 6
fan without injecting kerosene (the so-called dry-cranking). 7
8
(’514 appl., Ex. 1002, 3:9–12.) According to EcoServices, connection of the fluid 9
nozzle in a rotationally fixed manner to the fan shaft is downstream of the rotary 10
joint in the ’514 application and inconsistent with the problem addressed in 11
EcoServices’s ’677 patent – amelioration of entangled, damaged or otherwise 12
compromised fluid supply lines upstream of the coupling device. (See EcoServices 13
Motion 1, Paper 72, 11:7–14.) 14
We are not persuaded that the ’514 application and the ’677 patent address 15
different problems. We agree with Lufthansa that the problem addressed by both 16
is improving turbine engine washing systems and that both use methods of 17
attaching fluid delivery lines to a rotating fan hub so that the cleaning fluid can be 18
delivered beyond the fan and into the engine core. (See Lufthansa Opp. 1, Paper 19
90, 16:14–20.) EcoServices’s ’677 patent states that the apparatus of the invention 20
“includes a mobile harness assembly adapted for injecting washing fluid between 21
fan blades and directly into the gas turbine engine’s core while the engine is being 22
cranked.” (’677 patent, Ex. 1001, 1:66–2:3.) Similarly, Lufthansa’s ’514 23
application states that “the co-rotating arrangement of the nozzles allows a 24
purposeful introduction of the cleaning medium in the flow direction behind the 25
blades of the fan and therefore allows a direct sweeping of the core engine without 26
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impairment by the turbofan which is arranged upstream of it in the flow direction.” 1
(’514 appl., Ex. 1002, 3:28–31.) We agree with Lufthansa that even though there 2
is a difference in the language of their claims, EcoServices claim 1 and Lufthansa 3
claim 1 are virtually identical. (See Lufthansa Opp. 1, Paper 90, 2:24–4:11.) 4
EcoServices fails to explain why the problem of entangled fluid lines would not 5
have been present and necessarily addressed by both parties’ apparatuses. 6
Lufthansa argues that other portions of its claim 1 require the supply lines to 7
remain static relative to the rotating fluid delivery lines and that those fluid supply 8
lines are attached to the second portion of the coupling device, requiring that the 9
second portion of the coupling device is also static relative to the rotating fluid 10
delivery lines attached to the rotating first portion. (See Lufthansa Opp. 1, Paper 11
90, 8:18–9:4.) Specifically, Lufthansa argues that its claim 1 includes the 12
limitation: 13
one or more fluid supply lines attached to the coupling device’s second 14
portion for supplying washing fluid to the harness assembly, said fluid 15
supply lines remaining in a static position relative to the rotating fluid 16
delivery lines . . . . 17
18
(Lufthansa Opp. 1, Paper 90, 8:19–23.) Lufthansa argues that under EcoServices’s 19
construction, the second portion rotates relative to the first portion, but that this 20
construction cannot be explained in light of the recitation of a fluid supply line 21
remaining in a static position relative to the first, rotating portion of the coupling 22
device. 23
Lufthansa argues further that its claim 7 reinforces the error in EcoServices’s 24
claim interpretation. (See id., 9:5–10.) Lufthansa claim 7 depends, ultimately on 25
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claim 1 and refers to two delivery lines attached to “the rotating first portion of the 1
coupling device” as well as “one fluid supply line attached to the static second 2
portion of the coupling device.” (Lufthansa Clean Copy of Claims, Paper 9, 2:7–3
11 (emphasis added).) According to Lufthansa, the use of the antecedent “the” for 4
the second portion indicates that it is static in claim 1. (See Lufthansa Opp. 1, 5
Paper 90, 9:5–10.) 6
EcoServices counters that Lufthansa’s argument is meritless because the 7
limitation to a static second portion of the coupling device lacks antecedent basis, 8
rendering the claim unapatentable under 35 U.S.C. § 112, second paragraph. (See 9
EcoServices Reply 1, Paper 120, 6:12–7:2.) 10
Because we are not persuaded that Lufthansa’s claim 1 excludes a second 11
portion of the claimed coupling device configured to remain static relative to the 12
first portion, we are not persuaded that Lufthansa’s claim 7 is necessarily 13
unpatentable. EcoServices did not file a motion challenging the patentability of 14
Lufthansa claim 7 under 35 U.S.C. § 112, second paragraph. Accordingly, we 15
make no determination of whether claim 7 is indefinite. 16
EcoServices fails to persuade us that Lufthansa’s claims do not disclose a 17
second portion of the claimed coupling device that is configured to remain static 18
relative to the first portion. (See EcoServices Motion 1, Paper 72, 13:5–9.) 19
Accordingly, EcoServices has not persuaded us that its involved claims are not 20
anticipated by Lufthansa’s involved claims. Accordingly, we turn to 21
EcoServices’s argument that the parties’ claims do not render each other obvious. 22
(See id., 13:10–15:13.) We are similarly unpersuaded by these arguments. 23
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EcoServices argues that one of ordinary skill in the art would not have been 1
motivated to modify the apparatus claimed by Lufthansa to have a coupling device 2
with a stationary second portion based on the ’514 application because the 3
application does not recognize the problem of entangled or damaged fluid supply 4
lines. (See EcoServices Motion 1, Paper 72, 14:11–20, citing Rice Decl., Ex. 1003, 5
¶¶ 21, 27, and 31.) We are not persuaded by this argument. The proper inquiry is 6
whether one of ordinary skill in the art would have considered the apparatus 7
claimed by EcoServices to have been obvious, given the apparatus claimed by 8
Lufthansa and what was known in the prior art. 9
Furthermore, in the portion of Dr. Rice’s testimony cited by EcoServices 10
merely reiterates the narrow interpretation of Lufthansa’s claims and EcoServices’s 11
argument regarding the problem addressed in Lufthansa’s specification, which are 12
both unpersuasive, as discussed above. (See Rice Decl., Ex. 1003, ¶ 31.) Dr. Rice 13
testifies that he reviewed the prosecution history of EcoServices’s ’677 patent and 14
Lufthansa’s ’415 application, but none of the prior art references cited therein. 15
(See Rice Depo, Ex. 2023, 7:10–9:3 (“Q Now, in the -- to prepare your declaration, 16
Exhibit 1003, did you review any of the prior art references cited on the front of 17
Exhibit 1001? A No, I don't believe so. Q And on the second page of Exhibit 18
1001, there are more documents listed. Did you consider any of these documents in 19
preparing your declaration? A Not that I recall, no.”).) We are unpersuaded by Dr. 20
Rice’s testimony because he fails to explain what an ordinarily skilled artisan 21
would have understood at the time, based either on the prior art or from his own 22
experience. Accordingly, we are unpersuaded that an ordinarily skilled artisan 23
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would not have considered the apparatus claimed by EcoServices to have been 1
obvious over the apparatus claimed by Lufthansa. 2
EcoServices argues further that modifying the Lufthansa apparatus to have a 3
coupling device with a stationary second portion would change the principle of 4
operation of the apparatus as claimed. (See EcoServices Motion 1, Paper 72, 5
14:21–15:6.) Because we disagree with EcoServices argument that the principle of 6
operative of the apparatus claimed by Lufthansa is limited to a coupling device 7
with a second portion configured to rotate relative to the first portion, we are not 8
persuaded that its principle of operation would be changed by modification 9
according to language of EcoServices claim 1. 10
EcoServices fails to persuade us that the parties’ claims are neither 11
anticipated nor rendered obvious by each other. The preponderance of the 12
evidence shows otherwise. Accordingly, we are not persuaded that they do not 13
interfere and we deny EcoServices Motion 1. 14
15
III. EcoServices Motion 2 – 35 U.S.C. § 112, first paragraph 16
EcoServices argues that the Lufthansa ’514 application fails to provide a 17
sufficient written description of an apparatus for cleaning a gas turbine engine with 18
“fluid supply lines remaining in a static position relative to the rotating fluid 19
delivery lines.” (See EcoServices Motion 2, Paper 73, 1:10–15.) To prevail, 20
EcoServices must show that those of ordinary skill in the art would not have 21
understood that the inventors were in possession of an apparatus with this 22
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limitation. See Ariad Pharm., Inc., v. Eli Lilly & Co., 598 F3d 1336, 1351 (Fed. 1
Cir. 2010). 2
EcoServices bases much of its argument on whether element 10 in 3
Lufthansa’s figures depicts “fluid supply lines.” (See EcoServices Motion 2, Paper 4
73, 7:9–8:9.) Although Lufthansa identifies element 10 of Figures 2–5 as 5
corresponding to this element in its Annotated Copy of Claims (Paper 19), 6
EcoServices argues that the ’514 application does not provide a clear 7
understanding of element 10. (See id., 8:3–4.) 8
The Lufthansa ’514 application identifies element 10 in Figure 4 as a “feed 9
line.” (See ’514 appl., Ex. 1002, 10:8–11.) In contrast, the ’514 application 10
identifies element 10 in Figures 2 and 3 as a “connecting line.” (See id., 10:29–11
11:2). According to EcoServices, these designations are confusing and do not 12
support Lufthansa’s assertion that element 10 corresponds to the “fluid supply 13
lines” recited in claim 1. (See EcoServices Motion 2, Paper 73, 8:3–4, citing Rice 14
Decl., Ex. 1003, ¶¶ 44–46.) 15
We reproduce Figures 2 and 3 of the ’514 application, below. 16
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1
Figures 2 and 3 depict different cross-sections of a nozzle unit seated on the shaft 2
hub of a fan. (See ’415 appl., Ex. 1002, 9:16–19.) We also reproduce Figures 4 3
and 5 of the ’514 application, below. 4
5

6
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Figures 4 and 5 depict a detail of the rotary joint (element 5) of Figures 2 and 3, 1
respectively. (See ’415 appl., Ex. 1002, 9:24–26.) In each figure, element 10 is 2
the element at the far left side of the apparatus. 3
We agree with EcoServices that the Lufthansa ’514 application is not clear 4
about the name for element 10. We are not persuaded that any confusion would be 5
so severe one of ordinary skill in the art would not have understood the parts of the 6
invention described in the ’514 application. We are not persuaded that the 7
different names given to element 10 would have indicated to one of ordinary skill 8
in the art that the Lufthansa inventors were not in possession of an apparatus for 9
cleaning a gas turbine engine with “supply lines remaining in a static position 10
relative to the rotating fluid delivery lines.” 11
Dr. Rice testifies on cross-examination that item 10 of Figure 4 is “[s]ome 12
sort of connection device for connecting the delivery lines to the rotary union.” 13
(Rice Depo., Ex. 2023, 58:20–21; see EcoServices Reply 2, Paper 121, 6:12–21, 14
citing Rice Depo., Ex. 2023, 59:10–61:8; see also Rice Depo. Ex. 2023, 59:10–21.) 15
Even though Dr. Rice testifies that element 10 is not a “feed line” because it is 16
square and not depicted as a tube or hose, he ultimately concludes that 17
“[s]omewhere, there's a feed line. They’re assuming somewhere is a feed line, but I 18
don’t see it as shown in figure 4.” (Rice Depo., Ex. 2023, 61:6–8.) Thus, Dr. Rice 19
testifies that even if element 10 is not clearly named or drawn, it would have been 20
understood that the apparatus includes a line to feed or supply cleaning fluid to the 21
nozzles. We are not persuaded that the express description of element 10 in the 22
’514 application as a “line” (either a “feed line” or a “connecting line”) can be 23
discounted merely because element 10 is given two different names. Instead, we 24
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consider Dr. Rice’s testimony that it would be understood that the apparatus 1
described in the ’514 application would include a feed line. 2
EcoServices argues further that the ’514 application fails to expressly or 3
inherently disclose that the line connection between the supply unit and the nozzle 4
unit is stationary relative to the “pressure lines 6.” (See EcoServices Motion 2, 5
Paper 73, 8:10–12:4.) According to EcoServices, the term “stationary” is used in 6
the ’514 application to describe a “part of the line connection” required to achieve 7
a “sufficiently stable, pressure-tight and fluid tight connection” with the rotary 8
joint. (See id., 10:17–23, quoting ’415 app., Ex. 1002, 3:19–24.) EcoServices 9
argues that the line connection would not necessarily be stationary, because the 10
pressure lines of the nozzle unit rotate around the fan hub. (See id., 10:7–9.) 11
To the extent we understand it, EcoServices’s argument appears to be that 12
because the ’514 application uses the term “line connection” instead of “line,” the 13
described connection with the rotary joint is not the “fluid supply lines” recited in 14
Lufthansa claim 1. EcoServices attempts to divide the “line connection” described 15
in the application into a stationary part that is distinguished from the claimed “fluid 16
supply lines” and that is connected to the rotary joint. (See EcoServices Motion 2, 17
Paper 73, 10:17–12:4.) 18
We are not persuaded by this argument because as Lufthansa argues, 19
EcoServices’s witness, Dr. Rice, testifies that one of ordinary skill in the art would 20
have understood a rotary joint to have two parts that are each joined together and 21
rotate with respect to each other. (See Lufthansa Opp. 2, Paper 91, 4:21–25, citing 22
Rice Depo., Ex. 2023, 30:11–31:15.) Dr. Rice testified that due to the perspective 23
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from which one is viewing a rotary joint, it may have one component that rotates 1
and another that is stationary. (See id.) 2
Furthermore, we are not persuaded by EcoServices’s argument because the 3
Lufthansa’s ’514 application describes the whole apparatus as follows: 4
The device according to the invention has a supply unit which provides 5
cleaning medium, a nozzle unit which is designed for introducing the 6
cleaning medium into the core engine, and also a line connection between 7
the supply unit and the nozzle unit. According to the invention, it is 8
provided that the nozzle unit has means for the rotationally fixed connection 9
to the shaft of the fan of the jet power plant, and that a rotary joint is 10
provided between the nozzle unit and the line connection. 11
12
(’514 appl., Ex. 1002, 2:14–19.) The ’514 application continues: 13
The line connection is connected to the nozzle unit by means of a rotary 14
joint. The term rotary joint is to be functionally understood and refers to a 15
device of any kind which is suitable for creating a sufficiently stable, 16
preferably pressure-tight and fluid-tight connection between the stationary 17
part of the line connection and the nozzle unit which co-rotates with the fan. 18
It is the purpose of the rotary joint to direct the cleaning medium from the 19
stationary supply unit to the co-rotating nozzle unit and then to allow the 20
cleaning fluid to discharge from the nozzles. 21
22
(Id., 3:19–24; see also 10:31–11:2 (emphasis added).) According to Dr. Rice, the 23
rotary joint would be understood to have two components: a rotating component 24
and a stationary component. The ’514 application describes a stationary supply 25
unit connected to a stationary line connection, which is in turn connected to a 26
rotary joint, which is then connected to a rotating nozzle unit. (See Lufthansa Opp. 27
2, Paper 91, 4:26–5:25.) EcoServices fails to persuade us that an ordinarily skilled 28
artisan would not understand the line connection from the stationary supply unit to 29
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the rotary joint to be a “fluid supply line” that remains stationary or “static” 1
relative to the rotating fluid delivery lines of the nozzle unit. 2
EcoServices argues that the ’514 application does not necessarily disclose 3
that the portion of the rotary joint secured to the fluid supply line is stationary with 4
respect to the rotating pressure lines, as required for an inherent description. (See 5
EcoServices Motion 2, Paper 73, 12:2–3.) But EcoServices fails to explain how 6
one of ordinary skill in the art would have understood the description provided in 7
the ’514 application to be of anything else. The ’514 application describes the 8
purpose of the rotary joint as directing the cleaning medium from the “stationary 9
supply unit” to the co-rotating nozzle unit. (See ’514 appl., Ex. 1002, 3:22–24.) 10
Even if the words “fluid supply lines remaining static” are not used in the 11
specification, the preponderance of the evidence does not indicate that one of 12
ordinary skill would have considered the fluid supply lines to rotate in regard to the 13
fluid delivery lines, when the fluid supply lines would draw from a stationary 14
supply unit. 15
EcoServices argues further that the specification of its ’677 patent expressly 16
provides for “fluid supply lines remaining in a static position relative to the 17
rotating fluid delivery lines.” (See EcoServices Motion 2, Paper 73, 12:5–10.) 18
EcoServices also argues that the ’514 application fails to address the same 19
problems addressed in the ’677 patent. (See id., 12:11–14:11.) Neither of these 20
arguments is persuasive because the only issue is whether the specification of the 21
’514 application provides sufficient written description support of the apparatus 22
recited in Lufthansa claim 1. The sufficiency of the written description in the ’677 23
patent is not determinative of the sufficiency of the written description support in 24
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the ’514 patent. Furthermore, one specification may address a problem in a 1
slightly different way from another and still describe the same apparatus. 2
EcoServices argues further that the prosecution history of the ’514 3
application illustrates the lack of written description support. (See id., 15:1–4
16:12.) EcoServices points to what it asserts are arguments in an Appeal Brief 5
filed by Lufthansa that this claim limitation is supported by the rotationally fixed 6
connection of the nozzle or nozzles to the shaft of the fan. (See id., 15:7–17, citing 7
Ex. 1006.) According to EcoServices, because the portion of its specification cited 8
by Lufthansa does not indicate that the fluid supply lines are in a static position 9
relative to the rotating delivery lines, the prosecution history shows that the ’514 10
application is directed to a different problem and does not support the claim 11
limitation. (See id., 16:1–12.) 12
We are not persuaded by this argument for several reasons. First, 13
EcoServices fails to indicate specifically where within the Appeal Brief filed 19 14
March 2013 Lufthansa makes the argument EcoServices attributes to it, citing to 15
the entire brief instead. Accordingly, we are unable to evaluate either Lufthansa’s 16
argument or EcoServices’s argument based on it. Furthermore, EcoServices fails 17
to explain how arguments regarding a rejection under a different statute, 35 U.S.C. 18
§ 135(b) are relevant to the issue of written description under 35 U.S.C. § 112. 19
Absent an express admission regarding written description support in the ’514 20
application, we are not persuaded that issues involved in the comparison of 21
claimed subject matter, as required under 35 U.S.C. § 135(b), are necessarily 22
relevant to the issues of EcoServices Motion 2 regarding the sufficiency of the 23
specification of the ’514 application. Finally, as explained above, we are not 24
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persuaded that claims must lack sufficient written description support because the 1
specification addresses a different problem than another specification. 2
In summary, EcoServices has failed to meet its burden of proving that 3
Lufthansa’s involved claims are not supported by a sufficient written description in 4
the ’514 application. We are not persuaded that there is insufficient information in 5
the specification of the ’514 application to convey to a person of ordinary skill in 6
the art that the Lufthansa inventors were in possession of an apparatus for cleaning 7
a gas turbine that has “fluid supply lines remaining in a static position relative to 8
the rotating fluid delivery lines.” Accordingly, we deny EcoServices Motion 2. 9
10
IV. EcoServices Motion 3 - 35 U.S.C. § 135(b) 11
Under 35 U.S.C. § 135(b)(1)4 12
[a] claim which is the same as, or for the same or substantially the same 13
subject matter as, a claim of an issued patent may not be made in any 14
application unless such a claim is made prior to one year from the date 15
on which the patent was granted. 16
EcoServices argues that Lufthansa filed involved claims 1–7 and 9 of the ’514 17
application on 28 April 2010, more than one year before the issue date of the 18
EcoServices’s involved’677 patent on 4 November 2008. (See EcoServices 19
Motion 3, Paper 74, 2:10–13.) Lufthansa does not dispute this argument and the 20
record supports the filing dates of Lufthansa’s involved claims and the issue date 21

4 Interferences continue under the statutes that were in effect on March 15, 2013.
See Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011).
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of EcoServices ’677 patent. (See Ex. 1001; see Lufthansa Opp. 3, Paper 92, 1
response to EcoServices Statement of Material Fact 3 (“Lufthansa first presented 2
claims 1–7 and 9 of U.S. Patent Application No. 12/769,514 . . . on April 28, 2010, 3
when it filed the ’514 application. EX. 1002 at pp. 4-5. RESPONSE: 4
Admitted.”).) 5
Although the statute bars claims filed more than one year after a patent 6
issues, a later filer may avoid 35 U.S.C. § 135(b)(1) if it can rely on the filing date 7
of an earlier, pre-critical date claim. See Corbett v. Chisholm, 568 F.2d 759, 764–8
65 (C.C.P.A. 1977) (“The situation where the copier had already been claiming 9
substantially the same invention as the patentee was early recognized as such a 10
special circumstance [justifying a delay in filing]. Chapman v. Beede, 54 App.D.C. 11
209, 296 F. 956 (1924). The stated rationale for this exception was that the then 12
Patent Office should declare an interference whenever copending applications 13
claim substantially the same invention, and, if it fails to do so, the public interest is 14
better served by a belated interference than by the issuance of a second patent.”). 15
Thus, because Lufthansa’s claims were filed more than one year after the issue 16
date of the claims of the ’677 patent, Lufthansa may avoid the bar imposed by 35 17
U.S.C. § 135(b)(1) if it can rely on a filing date that is earlier than one year after 18
the issue date of EcoServices’s ’677 patent. 19
“When a party seeks to add a new claim, or to amend an existing claim, 20
beyond the critical date for section 135(b)(1), [the Federal Circuit] applies the 21
material differences test discussed in opinions like Berger to determine if ‘such a 22
claim’ is barred.” Regents of Univ. of California v. Univ. of Iowa Research Found., 23
455 F.3d 1371, 1376 (Fed. Cir. 2006). “To establish entitlement to the earlier 24
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effective date of existing claims for purposes of the one-year bar of 35 U.S.C. 1
§ 135(b), a party must show that the later filed claim does not differ from an earlier 2
claim in any ‘material limitation.’” In re Berger, 279 F.3d 975, 981-82 (Fed. Cir. 3
2002) (quoting Corbett v. Chisholm, 568 F.2d 759, 765–66 (Fed. Cir. 1977)). 4
Thus, we look to material differences between Lufthansa’s earlier and later claims 5
to determine if it has avoided the bar of 35 U.S.C. § 135(b)(1). 6
A test for a difference in a “material limitation” is whether a limitation was 7
added or changed in the later filed claims in response to an examiner's rejection to 8
obtain allowance. See Adair v. Carter, 668 F.3d 1334, 1339 (Fed. Cir. 2012). 9
There is a presumption that limitations added in response to a rejection are 10
necessary to patentability and are, thus, material. See id. 11
EcoServices argues that there are “material differences” between 12
Lufthansa’s pre-critical date claims and the currently involved claims of the ’514 13
application. (See EcoServices Motion 3, Paper 74, 5:3–5.) According to 14
EcoServices, material limitations of the parties’ claims are determined by 15
analyzing the involved claims of its own ’677 patent. (See id., 5:6–11.) 16
The proper analysis does not involve the claims of the ’677 patent. Instead, 17
the analysis of differences in material limitations necessarily entails a comparison 18
between Lufthansa’s pre- and post-critical date claims. See Regents, 455 F.3d at 19
1375. The statute refers to the claims of an issued patent, but it does so only for a 20
determination that the applicant’s claims are subject to 35 U.S.C. § 135(b)(1). It is 21
not disputed that Lufthansa’s post-critical date, involved claims are drawn to “the 22
same as, or for the same or substantially the same subject matter” under 35 U.S.C. 23
§ 135(b)(1). 24
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EcoServices argues that two limitations in claim 1 of the ’677 patent are 1
material limitations: “fluid supply lines remaining in a static position relative to the 2
rotating fluid delivery lines” and a “coupling device.” (See EcoServices Motion 3, 3
Paper 74, 5:13–19.) In support, EcoServices cites to a declaration filed by inventor 4
Asplund during prosecution of the application that became the ’677 patent (Ex. 5
1012) and to the disclosure of the ’677 patent (Ex. 1001). (See EcoServices 6
Motion 3, Paper 74, 5:15–8:10.) EcoServices fails to demonstrate that either of 7
these limitations was added or amended in Lufthansa’s currently involved ’514 8
application claims to overcome a rejection during prosecution. Accordingly, 9
EcoServices fails to persuade us they are material limitations. 10
Even if the limitations EcoServices identifies are material in regard to 35 11
U.S.C. § 135(b)(1), we would not be persuaded that any differences with 12
Lufthansa’s pre-critical date claims and currently pending claims would prevent 13
Lufthansa from relying on the earlier claims to overcome 35 U.S.C. § 135(b)(1). 14
(See EcoServices Motion 3, Paper 74, 8:11–13:7.) 15
Lufthansa argues that both of the limitations identified by EcoServices were 16
recited in claim 1 of Lufthansa’s parent application 12/302,682 (“the ’682 appl.”). 17
(See Lufthansa Opp. 3, Paper 92, 9:17–13:13.) The ’682 application was filed 16 18
October 2009, which is less than one year after the issue of EcoServices’s ’677 19
patent on 4 November 2008. Claim 1 of the ’682 application recites5: 20
A device for cleaning the core engine of a jet power plant with 21
a supply unit which provides cleaning medium, 22

5 Indentations have been added for clarity.
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a nozzle unit which is designed for introducing the cleaning medium 1
into the core engine, and with 2
a line connection (10) between the supply unit and the nozzle unit, 3
characterized in that the nozzle unit has means for the rotationally fixed 4
connection to the shaft of the fan of the jet power plant, and in that a rotary 5
joint (5) is provided between the nozzle unit and the line connection (10). 6
7
(Claims Filed October 16, 2009 in U.S. Patent Application No. 12/302,682, Ex. 8
1008, 1 (emphasis added).) 9
Lufthansa argues that the first limitation identified by EcoServices, “fluid 10
supply lines remaining in a static position relative to the rotating fluid delivery 11
lines,” is supported by the “means for the rotationally fixed connection” in claim 1 12
of the ’682 application. (See Lufthansa Opp. 3, Paper 92, 10:9–12:3.) Lufthansa’s 13
arguments are based on the function of the “rotary joint” described in the 14
specification of the ’682 application.6 Lufthansa cites to Dr. Rice’s testimony that 15
one of ordinary skill in the art would have understood a “rotary joint” to have two 16
parts with one rotating relative to the other. (See id., 10:8–12, citing Rice Depo., 17
Ex. 2032, 30:14–31:8.) Lufthansa argues further that the rotary joint is described 18
in the ’682 application as being between the nozzle unit and the line connection 19
and as receiving cleaning medium from a stationary supply unit via the connection 20
line. (See id., 10:8–11:25, citing ’682 appl., Ex. 1009, 2:25–26, 4:1–2, 4:8–18, 21
14:32–34, and Fig. 2). According to Lufthansa, the specification and Dr. Rice’s 22
testimony demonstrate that the rotary joint claimed in the ’682 application 23

6 As a continuation of Lufthansa’s involved ’514 application, we presume that the
specification of the ’862 application is the same as the specification of the ’514
application. Neither party identifies any differences.
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connects a stationary, or “static,” fluid supply line with a fluid supply line that 1
rotates with the nozzle unit. (See id., 10:21–11:3.) 2
The “rotary joint” recited in claim 1 of the ’682 application supports the 3
“coupling device” recited in Lufthansa’s involved claims, in part because of 4
Lufthansa’s arguments and also because EcoServices’s arguments when construing 5
Lufthansa’s claims. (See EcoServices Motion 1, Paper 72, 7:6–7 (“Accordingly, 6
the ‘rotary joint’ disclosed in the ‘514 application corresponds to the ‘514 7
application claimed ‘coupling device.’”).) Given the presumed identity of the 8
specification ’682 specification to the specification of the ’514 application, which 9
EcoServices does not dispute, we are persuaded that the “rotary joint” recited in 10
the ’682 application is the same as the “coupling device” claimed in the ’514 11
application. 12
We agree with Lufthansa that in light of the portions of the specification of 13
the ’682 application identified and Dr. Rice’s testimony, the “rotary joint (5)” 14
recited in claim 1 of the ’682 application allows for the “fluid supply lines [to 15
remain] in a static [or stationary] position relative to the rotating fluid delivery 16
lines,” as recited in Lufthansa’s involved claims. 17
EcoServices’s arguments do not persuade us otherwise. EcoServices argues 18
that the “means for the rotationally fixed connection” recited in Lufthansa’s pre-19
critical date claim 1 cannot include the “rotary joint” also recited in claim 1. (See 20
EcoServices Reply 3, Paper 122, 5:10–19.) EcoServices cites to the testimony of 21
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Lufthansa’s witness, Mr. Marshall7, that the “means for rotationally fixed 1
connection” in claim 1 of the ’682 application is separate from the “rotary joint.” 2
(See id., citing Marshall Depo, Ex. 1022, 95:22–97:7, Ex. 1019.) 3
Mr. Marshall’s testimony does not change our opinion because it does not 4
address Lufthansa’s arguments about the limitations identified by EcoServices as 5
being material. Lufthansa agrees with Mr. Marshall’s testimony that the “rotary 6
joint” is between the nozzle unit and the line connection in the claimed apparatuses 7
and devices. (See Lufthansa Opp. 3, Paper 92: 10:21–23 (“the Lufthansa parent 8
application discloses a supply unit connected to a line connection, which is in turn 9
connected to a rotary joint (which has one part rotating relative to a second part), 10
which itself is connected to a nozzle unit.”).) Lufthansa argues that even though 11
the “rotary joint” is not part of the nozzle unit, it is connected to it, which is not 12
inconsistent with ’682 application claim 1, wherein the “nozzle unit has a means 13
for the rotationally fixed connection.” Lufthansa does not argue that the “rotary 14
joint” is the “means for the rotationally fixed connection,” only that both are 15
limitations of Lufthansa’s pre- and post-critical date claims. 16
In light of the parties’ arguments and the evidence of record8, we are not 17
persuaded that Lufthansa’s currently involved claims differ from the claims filed in 18

7 Mr. Marshall testifies that he has been involved in the servicing and engineering
of aircraft and engines for over 17 years, including as an aircraft technician and
engineer specializing in jet engine maintenance. (See Declaration of Robert
Marshall Decl., Ex. 2007, ¶ 2.) We find him qualified to testify about the issues
presented in this interference.
8 We note that Lufthansa’s claims were rejected under 35 U.S.C. § 135(b) during
ex parte prosecution. The rejection was reversed by a different panel of
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Lufthansa’s ’682 application on 16 October 2009 by any material limitations. 1
EcoServices has failed to persuade us that Lufthansa’s currently involved claims 2
are barred by 35 U.S.C. § 135(b)(1). Accordingly, we deny EcoServices Motion 3. 3
4
V. Lufthansa Motion 1 –Benefit of priority 5
Lufthansa argues that it should be accorded benefit of the filing dates of its 6
international application PCT/EP2008/001983 (“the PCT application”), filed 12 7
March 2008, and its European application 07005446.5 (“the EU application”), filed 8
16 March 2007. (See Lufthansa Motion 1, Paper 31, 1:2–6.) 9
To be accorded the benefit of priority of an earlier application, a party must 10
show that the earlier application is a prior constructive reduction to practice by 11
meeting the requirements of 35 U.S.C. § 112, first paragraph, for at least one 12
embodiment within a count. See Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 13
1362 (Fed. Cir. 2006). 14
Count 1, the only count in this interference, recites: 15
An apparatus for cleaning a gas turbine engine, 16
said engine including an engine inlet portion having a fan hub and an array 17
of fan blades connected to and extending radially outward from said 18
fan hub, the apparatus comprising: 19
a mobile harness assembly adapted for injecting washing fluid between fan 20
blades and directly into the gas turbine engine's core while the engine 21
is being cranked, 22
the harness assembly comprising: a coupling device for connecting one or 23
more fluid supply lines to one or more fluid delivery lines, 24

Administrative Patent Judges. (See Decision on Appeal in the ’514 appl., entered
23 November 2015, Ex. 1011.)
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said coupling device comprising a first portion configured for rotating with 1
the fan hub about the hub's central axis as the engine is cranked, and a 2
second portion configured so that said first portion rotates relative to 3
said second portion; 4
one or more fluid delivery lines removably attached at one end to the 5
coupling device's first portion and positioned for delivering washing 6
fluid directly into the gas turbine engine core, 7
said fluid delivery lines rotating with the fan hub about the hub's central axis 8
as the engine is cranked; 9
one or more fluid supply lines attached to the coupling device's second 10
portion for supplying washing fluid to the harness assembly, 11
said fluid supply lines remaining in a static position relative to the rotating 12
fluid delivery lines; 13
one or more harness rings attached to the one or more fluid delivery lines for 14
spacing, stabilizing, and positioning the fluid delivery lines relative to 15
the fan blades; and 16
a connector for removably attaching the harness assembly directly onto the 17
fan hub. 18
19
(Declaration, Paper 1, 3:14–4:14 (emphasis added).) To prevail, Lufthansa must 20
show evidence of written description and enabling support for every element of the 21
count in the PCT application and the EU application. 22
The parties agree that the earlier EU application contains the disclosures of 23
the PCT application. (See Lufthansa Motion 1, Paper 3:13–14, citing Marshall 24
Decl., Ex. 2007, ¶ 10; see EcoServices response to Lufthansa Statement of 25
Material Facts 4 (“All of the disclosure in the earlier 2007 European application is 26
contained in the 2008 PCT application. (Exhibit 2007 at ¶ 10.) EcoServices 27
Response: Admitted.”).) Accordingly, if Lufthansa succeeds in showing support 28
for all of the elements of the count in its EU application, it will have also shown 29
support in its PCT application. 30
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Lufthansa argues that each limitation of the count is described and enabled 1
in the EU and PCT applications, citing to Mr. Marshall’s testimony in support. 2
(See Lufthansa Motion 1, Paper 31, 3:25–9:24, citing Marshall Decl., Ex. 2007, 3
¶¶ 11–20.) Mr. Marshall testifies that Exhibits 2005 and 2006 are claim charts 4
with citations to support in the EU and PCT applications, respectively. (See 5
Lufthansa Motion 1, Paper 31, 3:13–2, citing Marshall Decl., Ex. 2007, ¶ 10.) We 6
reproduce the citations in Exhibits 2005 and 2006 that correspond to the elements 7
and limitations of the Count in the table below. 8
Count Limitation
Citation in EU
Application
(Ex. 2002)
Citation in PCT
Application
(Ex. 2004)
An apparatus for cleaning a gas
turbine engine,

1:5–7 1:5–7
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:

1:19–25, 6:33–
7:2, and 9:1–7
1:19–25, 7:14–
22, and 10:4–10
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,

3:9–13, 5:22–34,
9:21–24, 13:9–
15, and 10:10–13
3:14–18
the harness assembly comprising: a
coupling device for connecting one or
more fluid supply lines to one or more
fluid delivery lines,

2:20–29, 3:15–
19, 3:9–13, and
3:30–34
6:1–12, 10:23–
27, and 11:17–20
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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;

3:38–4:6, 12:4–
15, and 12:22–29
4:8–15, 13:22–
32, and 14:6–13
one or more fluid delivery lines
removably attached at one end to the
coupling device's first portion and
positioned for delivering washing fluid
directly into the gas turbine engine core,

3:38–4:6 and
12:4–10
4:8–15, 13:22–
27, 14:6–25, and
6:1–12
said fluid delivery lines rotating with
the fan hub about the hub's central axis
as the engine is cranked;

2:20–29, 3:38–
4:6
3:20–24 and 4:8–
15
one or more fluid supply lines
attached to the coupling device's second
portion for supplying washing fluid to
the harness assembly,

338–4:6, 12:4–
15, 2:20–29, 3:9–
13, and 3:30–34
4:8–15, 13:22–
32, 2:22–30,
3:14–18, and
4:1–5
said fluid supply lines remaining in a
static position relative to the rotating
fluid delivery lines;

3:38–4:6 4:8–15
one or more harness rings attached to
the one or more fluid delivery lines for
spacing, stabilizing, and positioning the
fluid delivery lines relative to the fan
blades; and

11:37–12:4 and
12:17–20
13:16–22 and
14:1–4
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a connector for removably attaching
the harness assembly directly onto the
fan hub.

6:21–26, 7:26–
28, 12:22–25, and
13:5–9
7:1–7, 8:18–20,
14:6–9, and
14:27–31
1
EcoServices argues that Lufthansa’s EU and PCT applications lack 2
sufficient support under 35 U.S.C. § 112, first paragraph, for all elements of the 3
count and that Lufthansa’s Motion 1 should be denied, focusing on the limitation 4
of “fluid supply lines remaining in a static position relative to the rotating fluid 5
delivery lines.”9 (EcoServices Opp. 1, Paper 113, 4:8–15:9.) 6
EcoServices’s arguments are similar to the arguments it raises in its motion 7
for judgment against Lufthansa as lacking sufficient written description support for 8
its claims under 35 U.S.C. § 112, first paragraph. Briefly, EcoServices argues that 9
the “feed line 10” and the “connecting lines 10” referred to in Lufthansa’s 10
applications10 do not correspond to the claimed “supply lines.” According to 11

9 EcoServices refers to Lufthansa’s claims in much of its argument. (See, e.g.,
EcoServices Opp. 1, Paper 113, 4:15–17 (“Since Lufthansa copied claims from the
‘677 patent to provoke an interference, ‘the [law] must interpret the copied claim
in view of the originating disclosure for a written description challenge.’”).)
Benefit of priority for an earlier filing date is accorded when the earlier application
is a constructive reduction to practice of the count. A party’s claims are not part of
the analysis. Because Lufthansa’s claims are similar to count 1 and the limitation
argued by EcoServices is present in both, we exercise our discretion to review
EcoServices’s arguments as if they had referred to count 1.
10 EcoServices refers to Lufthansa’s ’514 application in its arguments, though it
acknowledges that the disclosures of the EU and PCT applications are contained in
the ’514 application and states that its arguments directed to the ’514 application
apply to the disclosure of the EU and PCT applications as well. (See EcoServices
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EcoServices, the applications fail to expressly disclose that the “line connection” 1
provided is stationary, or static, relative to the “pressure lines 6.” (EcoServices 2
Opp. 1, Paper 113, 9:12–10:4.) EcoServices acknowledges that the applications 3
use the term “stationary” several times, but argues that none of these instances 4
describe the relationship of the line connection to the pressure lines. (EcoServices 5
id., 9:12–10:4.) 6
EcoServices argues further that the applications do not inherently disclose 7
“fluid supply lines remaining in a static position relative to the rotating fluid 8
delivery lines” because the applications do not disclose that the “rotary joint” 9
keeps the “line connection” in a stationary position while the “pressure lines 6” 10
rotate around the “shaft hub 3 of the fan.” (See id., 10:5–12:17.) 11
We are not persuaded by these arguments for the same reasons explained 12
above in regard to EcoServices’s motion regarding written description. First, 13
although we agree that Lufthansa’s applications use different terms to describe 14
element 10 of the figures, EcoServices fails to persuade us that one of ordinary 15
skill would not have known that element 10 is a feed line that connects the 16
stationary supply unit to the rotary joint. We agree with Lufthansa that its prior 17
applications make the relationship between line 10, the supply unit, and the rotary 18

Opp. 1, Paper 113, 6:16–23.) Because Lufthansa’s motion is to be accorded the
benefit of the filing date of the EU and PCT applications, we refer to these
applications in our analysis.

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joint clear. (See Lufthansa Reply 1, Paper 126, 5:15–7:16.) For example, the EU 1
and PCT applications provide: 2
In the detailed view of Figure 4 it is to be seen that the two pressure lines 6, 3
via radial passages 8 and an axial passage 9 of the rotary joint 5, are in fluid 4
communication with a feed line 10 which connects the rotary joint to the 5
supply unit, which is not shown in the drawing. 6
7
(EU appl., Ex. 2004, 12:10–15 and PCT appl. Ex. 2002, 12:33-38.) The 8
applications also provide: 9
Via the connecting lines 10, the rotary joint 5 and the pressure lines 6, the 10
flat jet nozzles 7 are supplied with cleaning medium from the supply unit, 11
which is not shown. 12
13
(EU appl., Ex. Ex. 2004, 13:10–13 and PCT appl., Ex. 2002, 13:34-37.) 14
We are persuaded by EcoServices’s witness, Dr. Rice, that one of ordinary 15
skill in the art would have understood a rotary joint to have two parts that are 16
joined together and rotate with respect to each other, wherein one component 17
rotates and the other is stationary. (See Rice Depo., Ex. 2023, 30:11–31:15.) The 18
Lufthansa applications also describe a stationary supply unit connected to a supply 19
line. (See Lufthansa Motion 1, Paper 31, 7:10–18, and Lufthansa Reply 1, Paper 20
126, 7:16–19, citing EU appl., Ex. 2004, 3:34–4:9 and PCT appl., Ex. 2002, 4:5–21
18.) Specifically the applications provide: 22
The line connection is connected to the nozzle unit by means of a rotary 23
joint. The term rotary joint is to be functionally understood and refers to a 24
device of any kind which is suitable for creating a sufficiently stable, 25
preferably pressure-tight and fluid-tight connection between the stationary 26
part of the line connection and the nozzle unit which co-rotates with the fan. 27
It is the purpose of the rotary joint to direct the cleaning medium from the 28
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stationary supply unit to the co-rotating nozzle unit and then to allow the 1
cleaning fluid to discharge from the nozzles. 2
3
(EU appl., Ex. 2004, 3:38–4:9 and PCT appl., Ex. 2002, 4:1–8.) Lufthansa’s 4
witness, Mr. Marshall, testifies that the figures of the EU and PCT applications 5
showing a device for passage of fluid from a stationary connection to a rotating 6
connection would have been understood by those of ordinary skill in the art 7
because of its similarity to a garden hose and sprinkler. (See Marschall Decl., Ex. 8
2007, ¶ 16; see Lufthansa Motion 1, Paper 31, 7:13–18.) 9
EcoServices argues that the Lufthansa applications would not have 10
suggested that the rotary joint includes a stationary portion and a rotating portion 11
because the applications fail to acknowledge the problem of having non-stationary 12
supply lines. (EcoServices Opp. 1, Paper 113, 12:18–15:9.) EcoServices also 13
argues that the prosecution history of the ’514 application indicates that Lufthansa 14
should not be accorded benefit of the filing dates of its earlier applications because 15
it illustrates that the applications are directed to a different problem than that 16
addressed in the ’677 patent. (See id., 14:9–17:4.) These arguments are not 17
persuasive because the actual language of the EU and PCT applications and the 18
parties’ witnesses demonstrate that the applications are a constructive reduction to 19
practice of the count, including the element of “said fluid supply lines remaining in 20
a static position relative to the rotating fluid delivery lines.” Whether or not the 21
applications could be interpreted to address a particular problem, they provide a 22
sufficient written description of the elements of the count. 23
We are persuaded by the evidence presented by Lufthansa that its EU and 24
PCT applications support the other elements of the Count. EcoServices does not 25
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argue to the contrary. Accordingly, we are persuaded that the EU and PCT 1
applications provide a constructive reduction to practice of at least one 2
embodiment of the Count. Therefore, we grant Lufthansa Motion 1 and accord it 3
the benefit of the filing dates of the EU (16 March 2007) and PCT (12 March 4
2008) applications. 5
VI. Lufthansa Motion 2 – Designation of claims as corresponding 6
Lufthansa argues that the interference should be redeclared to include 7
EcoServices ’677 patent claims 10–20 as corresponding to the count. (See 8
Lufthansa Motion 2, Paper 32, 1:1–6.) “A claim corresponds to a count if the 9
subject matter of the count, treated as prior art to the claim, would have anticipated 10
or rendered obvious the subject matter of the claim.” 37 C.F.R. § 41.207(b)(2). 11
Thus, Lufthansa must show that EcoServices claims 10–20 would be anticipated or 12
rendered obvious by the subject matter of the count. 13
Claim 10 of EcoServices’s ’677 patent recites: 14
A method of cleaning a gas turbine engine, said engine including an 15
engine inlet portion having a fan hub and an array of fan blades connected to 16
and extending radially outward from said fan hub, the method comprising: 17
providing a mobile harness assembly; 18
positioning and securing the harness assembly directly onto the fan 19
hub; 20
cranking the gas turbine engine, thereby causing the fan hub to rotate; 21
supplying washing fluid to the harness assembly; and 22
injecting the washing fluid between fan blades and directly into the 23
gas turbine engine core as the fan hub rotates. 24
25
(’677 patent, Ex. 1001, 8:6–17.) 26
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Lufthansa provides a table showing correspondence between the limitations 1
of claim 10 and the limitations of count 1. (See Lufthansa Motion 2, Paper 32, 2
3:10–11, Statement of Material Facts 9.) EcoServices does not dispute that each 3
limitation in EcoServices’ claim 10 corresponds to a limitation of the count. 4
Lufthansa argues that this correspondence indicates the method of cleaning a gas 5
turbine engine recited in claim 10 is nothing more than the method of using the 6
apparatus for cleaning a gas turbine engine recited in the count and would have 7
been obvious to one of ordinary skill in the art at the time. (Lufthansa Motion 2, 8
Paper 32, 3:12–16, citing Marshall Decl., Ex. 2007, ¶ 25.) 9
EcoServices’s opposition to Lufthansa’s argument relies on a 10
misapprehension of claim correspondence. EcoServices argues that “Lufthansa 11
acknowledged claim 10 is missing several limitations from the Count and the two-12
way test for an interference-in-fact is not satisfied because, when treated as prior 13
art, Lufthansa’s claims 1-7 and 9 do not anticipate or render obvious any of 14
EcoServices’ claims 11-20.” (EcoServices Opp. 2, Paper 106, 1:14–17.) The 15
proper analysis of claim correspondence does not involve Lufthansa’s claims, but 16
only the subject matter of count 1 and EcoServices’s claims. Claim 17
correspondence is a separate and distinct issue from interference-in-fact. Compare 18
37 C.F.R. § 41.207(b)(2) with 37 C.F.R. § 41.203(a). Thus, EcoServices’s 19
argument that Lufthansa’s claims does not anticipate or render obvious any of 20
EcoServices’s claims is irrelevant to the issues of Lufthansa Motion 2. 21
Furthermore, claim correspondence is not determined by a “two-way test.” 22
The only consideration for whether a claim corresponds to a count is whether the 23
subject matter of the count, taken as prior art, would have anticipated or rendered 24
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obvious the subject matter of a party’s claim. See 37 C.F.R. § 41.207(b)(2). Thus, 1
the analysis relevant to Lufthansa Motion 2 is whether count 1 would anticipate or 2
render obvious claim 10, not the reverse. EcoServices’s argument that its claim 10 3
is “missing” limitations present in count 1 does not demonstrate that the count fails 4
to anticipate or render obvious claim 10. (Contra EcoServices Opp. 2, Paper 106, 5
2:9–3:3.) To the contrary, if count 1 recites or suggests every limitation of claim 6
10, it likely anticipates or renders claim 10 obvious. (See Lufthansa Reply 2, Paper 7
127, 3:24–4:8.) 8
Because count 1 recites each limitation of claim 10 and EcoServices does 9
not direct us to evidence casting doubt on Mr. Marshall’s testimony that the 10
apparatus would render a method of using the apparatus obvious, we are persuaded 11
that claim 10 should be designated as corresponding to count 1. 12
Lufthansa argues further that EcoServices claim 11 would be rendered 13
obvious by Count 1. (See Lufthansa Motion 2, Paper 32, 3:20–4:23.) EcoServices 14
claim 11 recites: 15
The method of claim 10, wherein the mobile harness assembly 16
comprises: 17
a coupling device for connecting one or more fluid supply lines to one 18
or more fluid delivery lines, said coupling device comprising a first portion 19
configured for rotating with the fan hub about the hub’s central axis as the 20
engine is cranked and a second portion configured to remain static relative to 21
said first portion; 22
one or more fluid delivery lines removably attached at one end to the 23
coupling device’s first portion and positioned for delivering washing fluid 24
directly into the gas turbine engine core, said fluid delivery lines rotating 25
with the fan hub about the hub’s central axis as the engine is cranked; 26
one or more fluid supply lines removably attached at a first end to the 27
coupling device’s second portion for supplying washing fluid to the harness 28
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assembly, said fluid supply lines remaining static position relative to the 1
rotating fluid delivery lines; 2
one or more harness rings disposed amongst and attached to the one or 3
more fluid delivery lines for spacing, stabilizing, and positioning the fluid 4
delivery lines relative to the fan blades; and 5
a connector for removably attaching the harness assembly directly 6
onto the fan hub. 7
8
(’677 patent, Ex. 1001, 8:18–42.) 9
According to Lufthansa, the limitation of count 1 would render the 10
EcoServices’s claim 11 obvious because one of ordinary skill in the art would have 11
looked to all of the limitations of count 1, taken together. (See Lufthansa Motion 2, 12
Paper 32, 4:8–13, citing Marshall Decl., Ex. 2007, ¶ 27.) Mr. Marshall explains 13
that in addition to reciting a coupling device with a second portion, count 1 14
includes limitations wherein the “one or more fluid supply lines [are] attached to 15
the coupling device’s second portion” and the “fluid supply lines remain[] in a 16
static position relative to the rotating fluid delivery lines.” (See Marshall Decl., 17
Ex. 2007, ¶ 27.) Mr. Marshall testifies that the ordinarily skilled artisan would 18
have understood count 1 to recite a coupling device with two portions: a rotating 19
first portion connected to the fluid delivery lines and a static second portion 20
connected to the fluid supply lines. (See Marshall Decl., Ex. 2007, ¶ 27.) 21
EcoServices opposes Lufthansa’s argument by comparing the limitations of 22
EcoServices claim 11 and the claims of Lufthansa’s ’514 application. 23
(EcoServices Opp. 2, Paper 106, 13:3 and 13:25–26.) As explained above, this is 24
the wrong analysis. Nevertheless, because count 1 includes the same language as 25
Lufthansa’s claim in regard to the second portion of the coupling device, we 26
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exercise our discretion to consider EcoServices’s argument as if they had been 1
made regarding Count 1. 2
According to EcoServices, the limitation of claim 11, wherein the second 3
portion of the coupling device is “configured to remain static relative to said first 4
portion,” is not anticipated or obvious by a second portion that is configured to 5
rotate relative to the first portion. (See EcoServices Opp. 2, Paper 106, 13:1–6
15:19.) EcoServices puts forth an argument similar to the argument it made in its 7
Motion 1 for no interference-in-fact. Specifically, EcoServices argues that the 8
limitation in Lufthansa’s claims to “a second portion [of the coupling device] 9
configured so that said first portion rotates relative to said second portion” is 10
interpreted to mean that the second portion is configured to rotate relative to the 11
first portion. (See EcoServices Opp. 2, Paper 106, 13:23–14:6 and 7:19–12:25.) 12
According to EcoServices, the principle of operation would be changed in 13
EcoServices’s coupling device, rendering it non-obvious. (See EcoServices Opp. 14
2, Paper 106, 15:4–19.) 15
We are not persuaded the limitation “second portion configured so that said 16
first portion rotates relative to said second portion” must be interpreted to mean 17
that the second portion is configured to rotate relative to the first. (See Lufthansa 18
Reply 2, paper 127, 4:26–5:9.) As explained above in regard to EcoServices’s 19
Motion 1, the plain language recites movement of the first portion only. It is silent 20
about movement of the second portion or the lack thereof. The term “portion A 21
rotates relative to portion B” could mean either that portion B rotates relative to 22
portion A or that portion B remains static. 23
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Instead, we are persuaded by Mr. Marshall’s testimony that an ordinarily 1
skilled artisan would have considered the other language in count 1, including the 2
limitation to “fluid supply lines remaining in a static position relative to the 3
rotating fluid delivery lines,” to at least render obvious the limitation in claim 11 to 4
a second portion of the coupling device configured to remain static relative to the 5
first portion. (See Lufthansa Reply 2, Paper 127, 5:10–6:7.) 6
Accordingly, we are persuaded that the subject matter of Count 1, taken as 7
prior art, would anticipate or render obvious the subject matter of EcoServices 8
claim 11 and that claim 11 should be designated as corresponding to Count 1. 9
Luthansa argues further that claims 12-20 of the EcoServices’s ’677 patent 10
would be anticipated or rendered obvious by Count 1. (See Lufthansa Motion 2, 11
Paper 32, 4:24–12:9.) Each of claims 12–20 depends from claim 11. Lufthansa 12
relies on the testimony of Mr. Marshall that the limitations added to these claims 13
would either necessarily be part of the method of using the apparatus of count 1 or 14
were well known by those of ordinary skill in the art by 2007. 15
For example, Mr. Marshall testifies that count 1 requires that the washing 16
fluid is delivered “directly into the gas turbine engine core,” which can only be 17
accomplished if the fluid goes directly between the upstream fan blades, as 18
required in claim 12. (See Marshall Decl., Ex. 2007, ¶ 31.) Mr. Marshall testifies 19
that, in regard to claim 13, the source of washing fluid would necessarily be remote 20
from the gas turbine engine in the apparatus of count 1 given the difficulty of 21
transporting a washing fluid source to a position in direct proximity to the engine. 22
(See Marshall Decl., Ex. 2007, ¶ 34.) In regard to claims 14 and 15, Mr. Marshall 23
testifies that it was well known by 2007 to use heated water to clean gas turbine 24
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engines and to cover an engine washing assembly such as recited in count 1 to 1
prevent exposure to the elements. (See Marshall Decl., Ex. 2007, ¶¶ 37 and 39.) 2
Mr. Marshall testifies further that one of ordinary skill in the art would have 3
understood that a harness assembly would necessarily be configured to encircle the 4
hub and that the “connector” could be any of a number of well-known attachment 5
devices or mechanisms, including those recited in claim 16. (See Marshall Decl., 6
Ex. 2007, ¶ 41.) Mr. Marshall testifies further that an ordinarily skilled artisan 7
would have known that the fluid delivery lines of count 1 would necessarily have 8
had nozzles connected at their ends to inject the washing fluid as recited in claim 9
17. (See Marshall Decl., Ex. 2007, ¶ 43.) Claim 18 includes several added 10
limitations, such as the positioning of fluid delivery lines, removable attachment of 11
fluid supply lines, and the spacing and positioning of a harness ring, which Mr. 12
Marshall testifies would have been necessary, given the other elements recited for 13
the apparatus, or would have been well-known to those of ordinary skill in the art. 14
(See Marshall Decl., Ex. 2007, ¶¶ 45–49.) Similarly, Mr. Marshall testifies that 15
manifold assemblies and how to position them, as recited in claim 19, would have 16
been known to those of ordinary skill in the art by 2007. (See Marshall Decl., Ex. 17
2007, ¶ 51.) Finally, Mr. Marshall testifies that, in regard to claim 20, gas turbine 18
engines are of many different sizes and that the size of the fan hub ordinarily varies 19
with the size of the engine, rendering a harness adjustable in size to the size of the 20
fan hub obvious. (See Marshall Decl., Ex. 2007, ¶ 53.) 21
EcoServices does not direct us to evidence contradicting Mr. Marshall’s 22
testimony regarding the obviousness of claims 12–20. Accordingly, we are 23
persuaded that like claims 10 and 11, claims 12–20 would be rendered obvious by 24
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the subject matter of count 1, if the count were prior art. We are persuaded by 1
Lufthansa’s arguments and the evidence it presents that claims 12–20 should be 2
designated as corresponding to count 1. 3
VII. Lufthansa Miscellaneous Motion 7 – To Exclude 4
Lufthansa argues that pieces of evidence presented by EcoServices should 5
be excluded. First, Lufthansa argues that Dr. Rice’s declarations, Exhibits 1003 6
and 1023. (See Lufthansa Motion 7, Paper 135, 1:12–3:21 and 4:14–5:19.) 7
should be excluded. According to Lufthansa, Dr. Rice admitted on cross-8
examination that he has no practical experience in cleaning gas turbine engines or 9
in servicing, maintaining, and engineering aircraft engines. (See Lufthansa 10
Miscellaneous Motion 7, Paper 135, 2:10–17, citing Rice Depo., Ex. 2023, 12:4–11
19:2.) EcoServices argues that Dr. Rice testified to his experience with jet engines. 12
(See EcoServices Opp. 7, Paper 137, 2:20–3:22, citing Rice Depo., Ex. 2023, at 13
11–12, 16, 18, 24–25.) Although, Dr. Rice’s experience appears to be with aspects 14
of jet engines other than cleaning or maintenance, Lufthansa does not adequately 15
explain why, given his education and experience in mechanical engineering design 16
and analysis, he would not be qualified to provide opinion testimony on the issues 17
of this interference. We also note that even when we consider Dr. Rice’s 18
testimony, we deny EcoServices’s substantive Motions 1–3 and grant Lufthansa’s 19
substantive Motions 1 and 2. 20
Lufthansa argues that other evidence presented by EcoServices (Exhibits 21
1012, 1014–1018, 1020, 1021, and 1024) should be excluded, as well. (See 22
Lufthansa Motion 7, Paper 135, 3:22–4:13 and 5:20–6:18.) Even when we 23
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consider these exhibits, we deny EcoServices’s Motions 1–3 and grant Lufthansa’s 1
Motions 1 and 2. 2
Accordingly, we deny Lufthansa Miscellaneous Motion 7. 3
4
VIII. Conclusion 5
We enter the following decisions on the parties’ motions: 6
EcoServices Motion 1 for a determination of no interference-in-fact – 7
denied; 8
9
EcoServices Motion 2 for judgment under 35 U.S.C. § 11, first paragraph – 10
denied; 11
12
EcoServices Motion 3 for judgment under 35 U.S.C. § 135(b)(10 – denied; 13
14
Lufthansa Motion 1 for benefit of an earlier filing date – granted; and 15
16
Lufthansa Motion 2 to have EcoServices claims 10–20 designated as 17
corresponding the count – granted. 18
19
EcoServices was not accorded, and does not request, the benefit of a date 20
earlier than the filing date, 21 May 2008, of the application that became its 21
involved ’677 patent. (See Declaration, Paper 1, 5:13–14.) In light of our decision 22
to grant Lufthansa Motion 1 and accord Lufthansa the filing date, 16 March 2007, 23
of its EU application, Lufthansa becomes senior party in this interference. We 24
redeclare the interference accordingly, in a separate paper. 25
EcoServices did not file a priority statement in the record of the interference. 26
(See Lufthansa Reply 1, Paper 126, 1:5–8.) Therefore, EcoServices cannot present 27
evidence for a priority date earlier than 21 May 2008. See 37 C.F.R. § 41.204(a) 28
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(“Priority Statement. A party may not submit evidence of its priority in addition to 1
its accorded benefit unless it files a statement setting forth all bases on which the 2
party intends to establish its entitlement to judgment on priority.”) Accordingly, 3
EcoServices cannot present evidence of a priority date earlier than Lufthansa’s 4
benefit date. 5
We enter judgment against EcoServices in regard to Count 1 in a separate 6
paper. 7
Because we enter judgment and EcoServices, we exercise our discretion to 8
not decide Lufthansa’s Motions 3 and 4, arguing that EcoServices’s claims are 9
unpatentable over the prior art. 10

cc (via e-mail):

Counsel for Lufthansa:

Barry E. Bretschneider
Michael E. Anderson
Charles C. Carson
Baker & Hostetler LLP
1050 Connecticut Avenue, N. W., Suite 1100
Washington, DC 20036-5304
Telephone: (202) 861-1500
Facsimile: (202) 861-1783
E-Mail: bbretschneider@bakerlaw.com
E-Mail: meanderson@bakerlaw.com
E-mail: ccarson@bakerlaw.com
Interference 106,053

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Counsel for EcoServices:

Barry J. Schindler
Joshua Malino
Elina Slavin
Greenberg Traurig, LLP
500 Campus Drive, Suite 400
Florham Park, NJ 07932
Telephone: (973) 360-7900
Facsimile: (973) 301-8410
Email: SchindlerB@gtlaw.com
Email: MalinoJ@gtlaw.com
Email: SlavinE@gtlaw.com