ASPLUNDv.GILJOHANN et al.

Patent Trials and Appeals Board

Aug 28, 2019

12124199 - (J) (P.T.A.B. Aug. 28, 2019)

BoxInterferences@uspto.gov Filed: August 28, 2019
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Lufthansa Technik AG,
Junior Party
(Application 15/218,669,
Inventors: Sebastian Giljohann, Daniel Gobel, Michael Mensch,
Joachim Heine, and Joachim Hacker),

v.

EcoServices, LLC,
Senior Party
(Patent 7,445,677
Inventor: Peter Asplund).
Patent Interference No. 106,098

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 judgment in Interference 106,053 (Paper 174), claims 1–20 of
EcoServices patent 7,445,677 have been cancelled. In the Decision on Motions in
the current interference, we deny EcoServices Motion 1, arguing that claim 10 of
Lufthansa application 15/218,669 is unpatentable under 35 U.S.C. § 135(b). (See
Paper 87.)
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Accordingly, it is ORDERED that judgment be entered against EcoServices
in regard to Count 1.
It is also ORDERED that a copy of this judgment shall be entered into the
administrative record of EcoServices patent 7,445,677 and Lufthansa application
15/218,669;
It is further ORDERED that the parties are directed to 35 U.S.C. § 135(c)
and to 37 C.F.R. § 41.205 regarding the filing of settlement agreements; and
It is further ORDERED that a party seeking judicial review timely serve
notice on the Director of the United States Patent and Trademark Office; 37 C.F.R.
§§ 90.1 and 104.2. See also 37 C.F.R. § 41.8(b). Attention is directed to Biogen
Idec MA, Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648, 654–57
(Fed. Cir. 2015) (determining that pre-AIA § 146 review was eliminated for
interference proceedings declared after September 15, 2012).

cc (via e-mail):

Counsel for Lufthansa:
Barry E. Bretschneider
Michael E. Anderson
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

Interference 106,098

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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
BoxInterferences@uspto.gov Filed: August 28, 2019
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Lufthansa Technik AG,
Junior Party
(Application 15/218,669,
Inventors: Sebastian Giljohann, Daniel Gobel, Michael Mensch,
Joachim Heine, and Joachim Hacker),

v.

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

Patent Interference No. 106,098 (DK)
(Technology Center 1700)

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

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

KATZ, Administrative Patent Judge.

Introduction 1
Junior Party Lufthansa Technik AG (“Lufthansa”) and Senior Party 2
EcoServices LLC (“EcoServices”) are involved in this proceeding based on their 3
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claims to methods of cleaning a turbine engine. (See Lufthansa Clean Copy of 1
Claims, Paper 4, and EcoServices Clean Copy of Claims, Paper 9.) The 2
interference was declared with claims 10–18, 20–36, 38–45 and 47 of Lufthansa’s 3
involved application 15/218,669 (“the ’669 application”) and claims 10–20 of 4
EcoServices’s involved patent 7,445,677 (“the ’677 patent”) designated as 5
corresponding to the count. (See Declaration, Paper 1, 4:5–21.) Following a 6
stipulation by the parties, the interference was redeclared with none of Lufthansa’s 7
claims designated as corresponding to the count, except claim 10. (See 8
Redeclaration, Paper 16.) Thus, the only Lufthansa claim currently involved in the 9
interference is claim 10 of the ’669 application. 10
Previously, judgment was entered against EcoServices in 11
Interference 106,053 and claims 1–20 of EcoServices’s currently involved patent 12
7,445,677 were canceled. (See 106,053 Decision on Motions, Paper 172, and 13
Judgment, Paper 174.) EcoServices’s claims remain canceled regardless of the 14
decision on the motions before us now. This interference continues because 15
EcoServices persuasively argued that it would be unfairly prejudiced if it were not 16
allowed to complete briefing and have a decision rendered on whether claim 10 of 17
Lufthansa’s ’669 application is barred under 35 U.S.C. § 135(b). (See Order – 18
Continued Proceeding, Paper 77.) Accordingly, EcoServices Motion 1 (Paper 40), 19
Lufthansa Opposition 1 (Paper 58), and EcoServices Reply 1 (Paper 78), are 20
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currently before us. Lufthansa Miscellaneous Motion 3 to exclude evidence 1
presented by EcoServices (Paper 80) is also before us.1 2
EcoServices Motion 1 3
EcoServices argues that claim 10 of Lufthansa’s ‘669 application is barred 4
as having been untimely filed under 35 U.S.C. § 135(b).2 (See EcoServices 5
Motion 1, Paper 40, 1:2–6.) Under 35 U.S.C. § 135(b)(1) 6
[a] claim which is the same as, or for the same or substantially the same 7
subject matter as, a claim of an issued patent may not be made in any 8
application unless such a claim is made prior to one year from the date on 9
which the patent was granted. 10
11
Thus, if Lufthansa filed claim 10 more than one year after EcoServices’s claims to 12
the same or substantially the same subject matter, claim 10 may be barred under 13
35 U.S.C. § 135(b)(1). 14
EcoServices’s ’677 patent issued on 4 November 2008. (See ’677 patent, 15
Ex. 1001.) One year after the issue of EcoServices’s claims, the “critical date,” is 16
4 November 2009. Lufthansa first presented its claim 10, copied from 17
EcoServices’s involved claim 1, on 28 April 2010 in application 12/769,514.3 (See 18

1 EcoServices requested oral argument on the substantive issues raised by its
Motion 1, Lufthansa’s opposition, and EcoServices’s reply. (See Paper 83.)
Lufthansa did not request oral argument. (See Paper 82.) 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 . . . .”).
2 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).
3 Lufthansa’s currently involved ’669 application is a divisional of its prior
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EcoServices Motion 1, Paper 40, 2:26–3:4.) Luftansa does not dispute these dates 1
and the record supports them. (See Lufthansa Opp. 1, Paper 58, Appendix 2, 1:3–2
15; responses to MFs 1–3.) Because Lufthansa claim 10 was first filed more than a 3
year after the issue date of EcoServices’s involved claims, claim 10 is subject to 4
the bar of 35 U.S.C. § 135(b)(1). 5
Lufthansa may avoid this statutory bar if it can rely on a filing date that is 6
earlier than one year after the issue date of EcoServices’s claims. See Corbett v. 7
Chisholm, 568 F.2d 759, 764–65 (C.C.P.A. 1977); see also Regents of Univ. of 8
California v. Univ. of Iowa Research Found., 455 F.3d 1371, 1374 (Fed. Cir. 9
2006). “To establish entitlement to the earlier effective date of existing claims for 10
purposes of the one-year bar of 35 U.S.C. § 135(b), a party must show that the later 11
filed claim does not differ from an earlier claim in any ‘material limitation.’” In re 12
Berger, 279 F.3d 975, 981-82 (Fed. Cir. 2002) (quoting Corbett v. Chisholm, 568 13
F.2d 759, 765–66 (Fed. Cir. 1977)). 14
“[I]nclusion of a limitation in a claim to avoid the prior art provides strong 15
evidence of the materiality of the included limitation.” In re Berger, 279 F.3d 975, 16
982–83 (Fed. Cir. 2002) (citing Parks v. Fine, 773 F.2d 1577, 1579 17
(Fed.Cir.1985)). For example, “[w]hen an applicant adds limitations in response to 18
an examiner's rejection, and those limitations result in allowance, there exists a 19
well established presumption that those limitations are necessary to patentability 20
and thus material.” Adair v. Carter, 668 F.3d 1334, 1339 (Fed. Cir. 2012) (citing 21
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 734 (2002) 22

application 12/769,514.
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and Corbett v. Chisholm, 568 F.2d 759, 765 (C.C.P.A. 1977)). Other evidence 1
may also support materiality, such as the Examiner’s and applicant’s comments. 2
See Parks v. Fine, 773 F.2d 1577, 1579–80 (Fed. Cir. 1985) (holding that a 3
limitation was material, in part because of the Examiner’s statements and 4
admissions made by Fine’s attorney at oral argument). Although we do not 5
compare the limitations of EcoServices’s involved ’677 patent claims to 6
Lufthansa’s ’669 application claims, statements made regarding prior art to both 7
parties may shed light on the material limitations of Lufthansa’s involved claims. 8
See In re Berger, 279 F.3d 975, 983 (Fed. Cir. 2002) (“Because the prior art 9
applies in like manner to the claims as copied, the materiality of a limitation in a 10
claim copied to provoke an interference translates to the copying inventor's 11
application for purposes of assessing compliance with 35 U.S.C. § 135(b).”). 12
If Lufthansa’s earlier, pre-critical date, claimed subject matter does not 13
differ from claim 10 in any material limitation, claim 10 can avoid the statutory bar 14
of 35 U.S.C. § 135(b)(1). Lufthansa claim 10 recites4: 15
A method of cleaning a gas turbine engine, said engine including an 16
engine inlet portion having a fan hub and an array of fan blades connected to 17
and extending radially outward from said fan hub, the method comprising: 18

4 Lufthansa argues that claim 10 was not amended during prosecution in the
involved ’669 or during the prosecution of patent application 12/769,514. (See
Lufthansa Opp. 1, Paper 58, 5:26–27, citing Amendment filed 8 January 2018, in
the ’669 appl., Ex. 2035, 2.) The record supports Lufthansa’s argument, showing
that claim 10 as originally filed in the involved ’669 application and parent
application 12/769,514 is the same as Lufthansa’s currently involved claim 10.
(See Claims filed 25 July 2016 in the ’669 appl., and claims filed 28 April 2010 in
appl. 12/769,514.)
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providing a mobile harness assembly; 1
positioning and securing the harness assembly directly onto the fan 2
hub; 3
cranking the gas turbine engine, thereby causing the fan hub to rotate; 4
supplying washing fluid to the harness assembly; and 5
injecting the washing fluid between fan blades and directly into the 6
gas turbine engine core as the fan hub rotates. 7
8
(Lufthansa Clean Copy of Claims, Paper 4 (emphasis added).) Lufthansa argues 9
that the claim term “as the fan hub rotates” is the “key limitation” for allowance of 10
claim 10. (Lufthansa Opp. 1, Paper 58, 7:12–14.) 11
We agree with Lufthansa that cleaning with a mobile harness assembly that 12
allows for injecting washing fluid “as the fan hub rotates” is material to claim 10 13
because this is the feature that EcoServices emphasized as being different from its 14
own prior art and that the Examiner emphasized when allowing the EcoServices’s 15
claims. (See Lufthansa Opp. 1, Paper 58, 8:11–10:21.) Lufthansa cites arguments 16
that EcoServices made regarding prior art patent 5,868,860 in an Accelerated 17
Examiner Support Dcoument, filed in application 12/124,199, which became the 18
’677 patent, Ex. 2027. (See id. at 8:11–9:15, citing Accelerated Examiner Support 19
Dcoument, Ex. 2027.) Lufthansa also cites to statements made by EcoServices 20
inventor Asplund, wherein 21
[i]n summary, the wash system described in the Application is a rotating 22
wash system configured to mount directly onto a fan hub, and to rotate with 23
the fan hub and engine during a washing operation. The [prior art] Asplund 24
patent, in sharp contrast, describes a non-rotating wash system that mounts 25
directly onto an engine's non-rotating guide vanes. Both the guide vanes and 26
wash system mounted thereto remain static relative to a rotating fan hub 27
when an engine is being cranked. 28
29
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(Asplund Decl., Ex. 2032, ¶ 8; see Lufthansa Opp. 1, Paper 58, 10:2–13.) 1
Lufthansa cites further to the Examiner’s reasons for allowance, which explains 2
that “[n]o suggestion of placing and attaching a rotatable cleaning assembly on the 3
fan hub and using this assembly to clean the engine during rotation of the hub is 4
found in the prior art.” (Notice of Allowance, Ex. 1008, 10; see Lufthansa Opp. 1, 5
Paper 58, 10:14–21.) 6
The figures in EcoServices’s ’677 patent are illustrative of the differences 7
between the prior art assembly and the assembly used in the claimed method as 8
discussed by the Examiner, which is also recited in Lufthansa claim 10. 9
EcoServices Figure 1, depicting a prior art assembly, is reproduced below. 10
11
In Figure 1, the manifold (100) is not mounted directly on the fan hub and will not 12
rotate with the fan hub and engine. EcoServices Figure 3, depicting an assembly 13
as claimed, is reproduced below. 14
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1
The assembly (300) in Figure 3 is mounted on the fan hub (310) and will rotate 2
with the fan hub and the engine. (See ’677 patent, Ex. 1001, 5:51–53.) 3
EcoServices does not disagree that “as the fan hub rotates” is material to 4
claim 10, but argues that the beginning of the phrase regarding fan hub rotation, 5
“injecting the washing fluid between fan blades and directly into the gas turbine 6
engine core,” is also material. (See EcoServices Reply 1, Paper 78, 2:10–3:16; see 7
EcoServices Motion 1, Paper 40, 5:12–7:2.) EcoServices argues that “fan hubs 8
have been rotating for decades since the advent of the turbojet [16] engine and 9
thus, the mere five words of claim 10 – “as the fan hub rotates” – could not 10
possibly form the complete material limitation.” (EcoServices Reply 1, Paper 78, 11
2:15–17.) 12
We do not read “as the fan hub rotates” in complete isolation. Instead, we 13
understand the patentability of claim 10 to hinge on the washing fluid being 14
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injected from the harness assembly “as the fan hub rotates,” as evidenced by the 1
portions of the Support Document, inventor Asplund’s declaration, and the 2
Examiner’s reasoning identified by Lufthansa. 3
Even if we consider the entire phrase “injecting the washing fluid between 4
fan blades and directly into the gas turbine engine core as the fan hub rotates” to be 5
material, we are persuaded by Lufthansa that its pre-critical date claims does not 6
differ materially from claim 10 because the assembly recited would inject washing 7
fluid between the fan blades and directly into the gas turbine engine. 8
Lufthansa relies on claim 18 of its earlier application 12/302,682 (“the 9
’682 application”) to overcome 35 U.S.C. § 135(b). (See Lufthansa Opp. 1, 10
Paper 58, 14:11–15.) Lufthansa’s ’682 application was filed on 16 October 2009 11
and is a parent5 of Lufthansa’s currently involved ’669 application. (See 12
EcoServices Motion 1, Paper 40, Appendix 2:12–14; Statement of Material 13
Fact 4.) EcoServices does not dispute that claim 18 of Lufthansa’s ’682 14
application was filed before the critical date of 4 November 2009. 15
Claim 18 of Lufthansa’s ’682 application recites: 16
A method for cleaning the core engine of a jet power plant, using a 17
device as claimed in one of claims 1 to 15, with the steps: 18
a. Attaching the nozzle unit to the hub (3) of the fan so that the 19
discharge openings of the nozzles (7) are oriented towards the front 20
blades of the core engine in the flow direction of the power plant; 21
b. Allowing the jet power plant to rotate; 22

5 According to USPTO records, Lufthansa’s currently involved ’669 application
claims priority to application 12/769,514, filed 28 April 2010, which is a
continuation ’682 application. (See also EcoServices Motion 1, Paper 40,
Appendix 2, Statement of Material Fact 4.)
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c. Pressurizing the nozzle unit with cleaning medium and 1
cleaning the core engine. 2
3
(’682 appl., Ex. 1004, 19.) Claim 1 of Lufthansa’s ’682 application, from which 4
claim 18 depends, recites: 5
A device for cleaning the core engine of a jet power plant with a 6
supply unit which provides cleaning medium, a nozzle unit which is 7
designed for introducing the cleaning medium into the core engine, and with 8
a line connection (10) between the supply unit and the nozzle unit, 9
characterized in that the nozzle unit has means for the rotationally fixed 10
connection to the shaft of the fan of the jet power plant, and in that a rotary 11
joint (5) is provided between the nozzle unit and the line connection (10). 12
13
(’682 appl., Ex. 1004, 16.) 14
Lufthansa argues that 15
pre-critical date claim 18 describes a method that includes using a nozzle 16
unit that is “rotationally fixed” to the “shaft of the fan” with discharge 17
openings oriented “towards the front blades of the core engine in the flow 18
direction of the power plant,” and “designed for introducing the cleaning 19
medium into the core engine” while “allowing the jet power plant to rotate.” 20
21
(Lufthansa Opp. 1, Paper 58, 14:11–15.) We agree with Lufthansa, and 22
EcoServices does not dispute, the method of claim 18 includes the material 23
limitation of injecting washing fluid through an assembly that rotates with the fan 24
hub, as the fan hub rotates. 25
Lufthansa argues further that claim 18, when read in light of Lufthansa’s 26
specification, “necessarily requires that the injected cleaning fluid must pass 27
between the fan blades and directly into the engine core to clean the engine” to 28
support the complete limitation in involved claim 10 (See Lufthansa Opp. 1, 29
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Paper 58, 14:15–17.) According to Lufthansa, the cleaning fluid could not get 1
“into” the engine core in the method of claim 18 if it were not injected between the 2
fan blades and directly into the core. (See id. at 14:17–19.) We agree with 3
Lufthansa that there would be no other way to get the washing fluid to the core to 4
achieve the recited goal of claim 18 (“[a] method for cleaning the core engine of a 5
jet power plant . . .”) unless the washing fluid was injected between the fan blades, 6
directly into the engine core. (See id. at 14:15–24.) 7
EcoServices argues that because claim 18 recites “[a]ttaching the nozzle unit 8
to the hub (3) of the fan so that the discharge openings of the nozzles (7) are 9
oriented towards the front blades of the core engine in the flow direction of the 10
power plant”, it cannot support injecting washing fluid between the blades. (See 11
EcoServices Motion 1, Paper 40, 7:13–8:19 (emphasis added to quoted claim 12
limitation).) EcoServices argues that “towards the front blades” is not the same as 13
“between the fan blades.” In support, EcoServices cites to Lufthansa’s 14
specification, arguing that it differentiates between the phrase “in front of . . . the 15
fan blades” and “between the fan blades.” (See id. at 7:13-8:5.) 16
EcoServices cites to only selected words in Lufthansa’s specification and 17
fails to provide the pages and line numbers where these words can be found. (See 18
id. at 7:26–8:3.) The full text of what appears to be the words cited by 19
EcoServices is: 20
The discharge openings of the nozzles are oriented behind the plane of the 21
turbofan, or in front of or between the fan blades so that an essentially 22
unhindered jet penetration is possible. 23
24
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(’669 appl.6, Ex. 1002, 8:2–4.) EcoServices argues that this text differentiates 1
between “in front of” the fan blades and “in between” the fan blades. (See 2
EcoServices Motion 1, Paper 40, 7:21–8:19.) Although both “in front of” and “in 3
between” are provided as options for the placement of the nozzle openings in the 4
assembly, the full text indicates that both allow for unhindered jet penetration. 5
(See Lufthansa Opp. 1, Paper 58, 13:8–19.) Thus, according to the full text cited 6
by EcoServices, the Lufthansa specification demonstrates that nozzles placed in 7
front of the fan blades can also provide for injection of washing fluid directly into 8
the gas turbine engine core. EcoServices does not explain why nozzle openings 9
oriented “towards the front blades of the core engine in the flow direction of the 10
power plant” cannot also inject “washing fluid between fan blades and directly into 11
the gas turbine engine core as the fan hub rotates” when it is the washing fluid that 12
goes between the fan blades, not the nozzles. Thus, we are not persuaded that the 13
portion of the Lufthansa specification cited by EcoServices indicates that claim 18 14
fails to support Lufthansa’s involved claim 10. 15
The testimony of EcoService’s witness, Mr. Magginetti, does not persuade 16
us otherwise. Mr. Magginetti states that “[c]onsistent with the well-understood 17
difference of orienting something ‘towards the front’ of as opposed to in ‘between’ 18
another object . . .” the specification of the ’669 application differentiates pre-19
critical date claim 18 from the term “between fan blades” in claim 10. (Magginetti 20

6 EcoServices cites to the specification of the Lufthansa ’669 application to
interpret the claims of the prior ’682 application, but Lufthansa does not dispute
that the specifications of both applications are the same.
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Decl., Ex. 1005, ¶ 24.) But Mr. Magginetti fails to recite any other evidence to 1
support that these terms are “well-understood” to be different. The full text of the 2
portion of Lufthansa’s specification indicates they are not inconsistent with each 3
other in the context of the claimed method. 4
EcoServices argues that Lufthansa relies on unsupported attorney argument 5
and that its opposition should be disregarded. (See EcoServices Reply 1, Paper 78, 6
7:15–24.) Specifically, EcoServices argues that Lufthansa’s statement that its 7
application “discloses three different positions of the nozzle relative to the fan 8
(behind, in front or between the blades)” and that all three positions require the 9
washing fluid to be directed between the blades and into the core engine, is 10
unsupported attorney argument. (See id., citing Lufthansa Opp. 1, Paper 58, 11
14:19–22.) 12
We disagree, because the plain language of the Lufthansa specification 13
supports Lufthansa’s argument. The specification states: “The discharge openings 14
of the nozzles are oriented behind the plane of the turbofan, or in front of or 15
between the fan blades so that an essentially unhindered jet penetration is 16
possible.” (Ex. 1002, 8:2–4.) Expert testimony is not necessary to interpret this 17
statement because the plain language indicates that the nozzles can be either 18
behind, in front or, or in between the fan blades to achieve unhindered jet 19
penetration. EcoServices fails to explain why it does not. 20
EcoServices also argues that cross-examination testimony from Lufthansa’s 21
witness, Robert Marshall, demonstrates that nozzle openings located in front of the 22
fan blades would not result in “injecting the washing fluid between fan blades and 23
directly into the gas turbine engine core” as required in the complete material 24
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limitation of claim 10. (See EcoServices Reply 1, Paper 78, 4:6–18.) Specifically, 1
EcoServices points to the following testimony by Mr. Marshall: 2
Q. So if you have the nozzles in front of the fan blades, -- 3
A. Yes. 4
Q. -- would you be able to inject the washing fluid directly into the gas 5
turbine? 6
A. You would be able to inject fluid into the gas turbine, yes, into the core of 7
the engine. 8
Q. Would you be able to inject the washing fluid directly into the gas 9
turbine? 10
A. Not directly. It would still have to go through the fan blade. 11
Q. So it would not be directly? 12
A. No. 13
(Marshall Depo., Ex. 1012, 23:2–15.) 14
The testimony cited refers to the prior art described in a publication 15
reproduced in Exhibit 2009, not to the method of Lufthansa’s pre-critical date 16
claim 18. Mr. Marshall described this portion to Exhibit 2009 as “the previous 17
method of core washing engines prior to this invention.” (Marshall Depo., Ex. 18
1012, 21:22–24.) When Mr. Marshall agreed that nozzles in front of the fan blades 19
would not be able to inject fluid directly into the gas turbine engine, he was 20
referring to prior systems that involved spraying water into the engine core by 21
spraying onto the fan with a conventional water hose, not to an assembly that 22
allowed for injection of washing fluid between the fan blades as the fan hub 23
rotates. (See id. at 22:21–23:1.) This testimony does not demonstrate that Mr. 24
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Marshall agreed that the method of pre-critical date claim 18 would not be able to 1
inject washing fluid directly into the gas turbine engine core.7 2
EcoServices argues further that the Board’s decision in related 3
interference 106,053 supports its position that Lufthansa cannot rely on pre-critical 4
date claim 18 to avoid the bar of 35 U.S.C. § 135(b). (See EcoServices Reply 1, 5
Paper 78, 4:19–24.) That decision stated: 6
For example, Mr. Marshall testifies that count 1 requires that the washing 7
fluid is delivered “directly into the gas turbine engine core,” which can only 8
be accomplished if the fluid goes directly between the upstream fan blades, 9
as required in claim 12. (See Marshall Decl., Ex. 2007, ¶ 31.) 10
11
(Decision on Motions in interference 106,053, Paper 172, 47:16–19.) This 12
statement refers to the count of that interference, not to pre-critical date claim 18. 13
Accordingly, it fails to persuade us that claim 18 does not support Lufthansa’s 14
currently involved claim 10. 15
In general, EcoServices fails to persuade us that Lufthansa is incorrect in its 16
argument that pre-critical date claim 18, when read in light of Lufthansa’s 17
specification, necessarily requires that the injected cleaning fluid pass between the 18
fan blades and directly into the engine core to clean the engine in order to achieve 19
the recited result of cleaning the core engine. (See Lufthansa Opp. 1, Paper 58, 20
14:15–24.) Accordingly, we are persuaded that claim 18 of Lufthansa’s 21

7 Lufthansa requested authorization to file a sur-reply addressing EcoServices’s
arguments regarding Mr. Marshall’s testimony and the Board’s decision in
interference 106,053. (See Order, Paper 79.) Because we are not persuaded by
EcoServices’s arguments, Lufthansa’s request is moot.
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’862 application does not differ in any material limitation from Lufthansa’s 1
involved claim 10 and that claim 18 provides pre-critical date support for involved 2
claim 10. 3
EcoServices also argues that Lufthansa conceded that none of its pre-critical 4
date claims support its currently involved claim 10 when Lufthansa stipulated, 5
along with EcoServices, that claims 11–18, 20–36, 38–45,and 47 of the 6
’667 application should be designated as not corresponding to the count in this 7
interference. (See EcoServices Motion 1, Paper 40, 10:1–12:21, citing Stipulation 8
for Board Approval Regarding ExoServices Motion 2 (“Stipulation”), Paper 14.) 9
According to EcoServices, because the count in this interference is the same as 10
Lufthansa’s claim 10, Lufthansa’s stipulation is an admission that none of those 11
claims would be anticipated or rendered obvious by Lufthansa’s claim 10, if 12
claim 10 were considered to be prior art to them. (See EcoServices Motion 1, 13
Paper 40, 10:13–20, citing 37 C.F.R. § 41.207(b)(2) (“A claim corresponds to a 14
count if the subject matter of the count, treated as prior art to the claim, would have 15
anticipated or rendered obvious the subject matter of the claim.”).) 16
EcoServices asserts, further, that claim 21 of Lufthansa’s currently involved 17
’669 application “meets each limitation” of Lufthansa’s pre-critical date claim 18. 18
(See EcoServices Motion 1, Paper 40, 10:20–22.) In support, EcoServices 19
provides a claim chart comparing claim 21 of the Lufthansa ’669 application with 20
Lufthansa’s pre-critical date claim 18. (See id.) EcoServices concludes that 21
because Lufthansa allegedly conceded that claim 21 is not anticipated or rendered 22
obvious by its claim 10, Lufthansa also conceded that its currently involved claim 23
10 is materially different from it pre-critical date claim 18. (See id. at 12:16–21.) 24
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This argument is not persuasive. A determination of whether a later filed 1
claim can rely on the filing date of an earlier, pre-critical date claim to avoid being 2
barred under 35 U.S.C. § 135(b) is based on the specific facts presented by the 3
parties about the material limitations of the pre- and post-critical date claims. As 4
explained by the Board when this interference was redeclared without Lufthansa’s 5
other claims, “[i]n essence [Lufthansa’s] stipulation indicates that Lufthansa would 6
not oppose [EcoServices Motion 2 to designate Lufthansa claims as not 7
corresponding to the count] if EcoServices were to file it.” (Redeclaration, 8
Paper 16, 2:6–7.) EcoServices has not pointed to any facts stipulated by Lufthansa 9
when it agreed to not oppose EcoServices’s Motion 2 or to any other facts during 10
this or any other proceeding. 11
EcoServices argues that “Lufthansa asked for and EcoServices agreed to a 12
stipulation that claims 21-34 of the Lufthansa ‘669 application are not part of the 13
Count -- i.e., claim 10 of the Lufthansa ‘669 application” and refers to “the 14
stipulation requested by Lufthansa . . . .” (EcoServices Reply 1, Paper 78, 6:8–10 15
(footnote omitted) and 19.) EcoServices argues that Lufthansa cannot “have [its] 16
cake and eat it too.” (Id. at 6:7.) 17
The record does not support EcoServices’s characterization of the 18
stipulation. Instead, EcoServices requested and was granted authorization for a 19
motion to designate the Lufthansa claims as not corresponding to the count. (See 20
Order, Paper 13, 3:20–21.) As indicated in the redeclaration, Lufthansa merely 21
indicated it would not oppose EcoServices’s motion. (Redeclaration, Paper 16, 22
2:6–7.) Furthermore, even though Lufthansa actually filed the stipulation, it did so 23
on behalf of both parties. (See Stipulation, Paper 14, 1:7–8 (“the parties stipulate 24
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-18-
and agree that Lufthansa claims 11-18, 20-36, 38-45 and 47 should be designated 1
as not corresponding to the Count and that the Board enter judgment to that 2
effect.”). We do not agree that Lufthansa conceded any facts in choosing to 3
protect its interests by agreeing with EcoSerivces that its claims should not be 4
subject to interference. 5
EcoServices cites the testimony of Mr. Magginetti to support its argument 6
that Lufthansa conceded that its pre-critical date claims fails to support involved 7
claim 10. (See EcoServices Motion 1, Paper 40, 11:1–12:21.) Mr. Magginetti’s 8
testimony is unpersuasive because he merely reproduces the claim chart presented 9
by EcoServices, without providing any other factual basis for his opinions. (See 10
Magginetti Decl., Ex. 1005, ¶¶ 37–41.) Furthermore, Mr. Magginetti’s testimony 11
is presented because of his expertise in aircraft maintenance, not as a legal expert 12
or as a fact witness. (See id. at ¶¶ 1–5.) 13
EcoServices’s argument that Lufthansa’s agreement that some of its claims 14
do not correspond to the count and, therefore, are not subject to the interference, 15
fails to provides us with any factual basis on which to determine whether 16
Lufthansa’s currently involved claim 10 differs from its pre-critical date claim 18 17
in a material limitation. Accordingly, EcoServices’s argument fails to persuade us 18
that Lufthansa’s claim 10 is unpatentable under 35 U.S.C. § 135(b). 19
EcoServices has the ultimate burden of proof on it motion arguing that 20
Lufthansa claim 10 is unpatentable under 35 U.S.C. § 135(b). See 37 C.F.R. 21
§ 41.121(b)(“The party filing the motion has the burden of proof to establish that it 22
is entitled to the requested relief.”) and § 41.208(b). Because we are persuaded 23
that Lufthansa is entitled to rely on the earlier filing date of the ’682 application, 24
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EcoServices fails to persuade us that Lufthansa’s claim 10 is unaptentable under 1
35 U.S.C. § 135(b). 2
Accordingly, we deny EcoServices Motion 1. 3
4
Lufthansa Motion 3 – to exclude evidence 5
Lufthansa argues that Mr. Magginetti’s declaration should be excluded 6
under Federal Rules of Evidence 702. (See Lufthansa Motion 3, Paper 80, 1:24–7
3:9.) Because we deny EcoServices Motion 1 even when we consider 8
Mr. Maginetti’s testimony, Lufthansa’s arguments are moot. Accordingly, we 9
dismiss the motion. 10
11
Conclusion 12
We deny EcoServices Motion 1. Accordingly, we do not finally refuse 13
claim 10 of the Lufthansa ’669 application. Judgment will be entered separately. 14
15
16
cc (via e-mail): 17
18
Counsel for Lufthansa: 19
20
Barry E. Bretschneider 21
Michael E. Anderson 22
Baker & Hostetler LLP 23
1050 Connecticut Avenue, N. W., Suite 1100 24
Washington, DC 20036-5304 25
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Telephone: (202) 861-1500 1
Facsimile: (202) 861-1783 2
E-Mail: bbretschneider@bakerlaw.com 3
E-Mail: meanderson@bakerlaw.com 4
5
Counsel for EcoServices: 6
7
Barry J. Schindler 8
Joshua Malino 9
Elina Slavin 10
Greenberg Traurig, LLP 11
500 Campus Drive, Suite 400 12
Florham Park, NJ 07932 13
Telephone: (973) 360-7900 14
Facsimile: (973) 301-8410 15
Email: SchindlerB@gtlaw.com 16
Email: MalinoJ@gtlaw.com 17
Email: SlavinE@gtlaw.com 18