Trials@uspto.gov
`571-272-7822
`
`Paper 57
`Entered: September 16, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COOLER MASTER CO., LTD.,
`Petitioner,
`v.
`AAVID THERMALLOY LLC,
`Patent Owner.
`
`IPR2019-00334
`Patent 7,100,680 B2
`
`
`
`
`
`
`
`
`
`Before LINDA E. HORNER, KEN B. BARRETT, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`HORNER, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Petitioner’s Request on Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 57
`Entered: September 16, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COOLER MASTER CO., LTD.,
`Petitioner,
`v.
`AAVID THERMALLOY LLC,
`Patent Owner.
`
`IPR2019-00334
`Patent 7,100,680 B2
`
`
`
`
`
`
`
`
`
`Before LINDA E. HORNER, KEN B. BARRETT, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`HORNER, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Petitioner’s Request on Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`IPR2019-00334
`Patent 7,100,680 B2
`
`INTRODUCTION
`I.
`Cooler Master Co., Ltd. (“Petitioner”) filed a Request for Rehearing,
`Paper 56 (“Request” or “Req. Reh’g”), of the Final Written Decision
`determining one challenged claim of U.S. Patent No. 7,100,680 B2 (“the
`’680 patent,” Ex. 1001) to be unpatentable, Paper 55 (“Final Decision” or
`“Final Dec.”). Pertinent to this Request, we determined that Petitioner had
`not demonstrated that claim 1 of the ’680 patent would have been obvious
`over Morikawa, Takahashi, and Nakamura. Dec. 46–48. Petitioner requests
`rehearing of that determination. Req. Reh’g 1.1
`For the reasons provided below, Petitioner’s Request for Rehearing is
`denied.
`
`II. STANDARD OF REVIEW
`A party requesting rehearing bears the burden of showing that the
`decision should be modified. 37 C.F.R. § 42.71(d). “The request must
`specifically identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously addressed in
`a motion, an opposition, or a reply.” Id.
`III. ANALYSIS
`Petitioner asserts that the Board failed to apply KSR’s2 flexible
`approach to obviousness as it relates to the combination of Morikawa and
`Nakamura and the determination of patentability of claim 1. Request 1. In
`the Final Decision, the Board determined that Petitioner failed to provide
`
`1 Petitioner phrases the alleged error as pertaining to “obviousness as it
`relates to the combination of Morikawa and Nakamura” and refers to
`claim 11, which is a claim not challenged in the Petition. Req. Reh’g 1, 3, 8.
`Notwithstanding the silence as to Takahashi, we understand Petitioner to be
`seeking rehearing regarding the three-reference challenge to claim 1.
`2 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
`
`2
`
`
`
`IPR2019-00334
`Patent 7,100,680 B2
`adequate explanation for the proposed modification of Morikawa with the
`teaching of Nakamura in the manner recited in claim 1:
`Petitioner has not explained adequately and persuasively what
`would have led one having ordinary skill in the art to replace only
`some of Morikawa’s metal pipes with Nakamura’s depressions
`so as to have led one to a heat pipe containing both a depression
`and a spacer extending between and contacting both plates, as
`recited in claim 1. For this reason, Petitioner has not shown by
`a preponderance of the evidence that claim 1 is unpatentable
`under 35 U.S.C. § 103(a).
`Final Dec. 47–48.
`Petitioner argues the Board’s finding that Petitioner’s showing of a
`reason to combine Morikawa and Nakamura in the manner claimed was
`insufficient is “contrary to the law.” Request 6. Specifically, Petitioner
`asserts that it “need only provide ‘a reason’ as to why a [person having
`ordinary skill in the art] would substitute Nakamura’s depressions for some,
`but not all, of Morikawa’s columns in Morikawa’s device.” Id. (citing
`Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 991–992 (Fed.
`Cir. 2017)). Petitioner asserts that the Petition satisfied this burden. Id. at 3.
`The Request asserts that the Board misapplied the applicable law on
`obviousness and Petitioner’s burden to the facts of this case. We discuss
`below the applicable law and then examine the Petition with respect to
`Petitioner’s burden under the law.
`A. Applicable law
`1. Obviousness
`As explained in our Final Decision, “[a] patent claim is unpatentable
`under 35 U.S.C. § 103(a) if the differences between the claimed subject
`matter and the prior art are such that the subject matter, as a whole, would
`have been obvious at the time the invention was made to a person having
`
`3
`
`
`
`IPR2019-00334
`Patent 7,100,680 B2
`ordinary skill in the art to which said subject matter pertains. KSR Int’l Co.
`v. Teleflex Inc., 550 U.S. 398, 406 (2007).” Final Dec. 10. “The question of
`obviousness is resolved on the basis of underlying factual determinations
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) any objective evidence of non-obviousness. Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966).” Id. (footnote omitted).3
`2. Petitioner’s Burden
`As also explained in the Final Decision, “Petitioner bears the burden
`of persuasion to prove unpatentability of the claims challenged in the
`Petition, and that burden never shifts to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To
`prevail, Petitioner must establish by a preponderance of the evidence that the
`challenged claims are unpatentable. 35 U.S.C. § 316(e) (2018); 37 C.F.R.
`§ 42.1(d) (2018).” Final Dec. 10.
`B. Petitioner’s Arguments
`As discussed above, Petitioner argues that rehearing should be granted
`“because the Board failed to apply KSR’s flexible approach to obviousness
`as it relates to the combination of Morikawa and Nakamura.” Request 1.
`Petitioner contends that it “adequately explain[ed] why a [person having
`ordinary skill in the art] would find it obvious to replace some of
`Morikawa’s columns (the claimed spacer) with Nakamura’s depressions.”
`Id. at 2. Specifically, Petitioner argues that “the Petition identifies two
`
`
`3 Petitioner does not contest our finding as to the level of skill in the art. See
`Final Dec. 11–12 (adopting Petitioner’s proffered level of ordinary skill).
`Further, as noted in the Final Decision, the parties have not directed our
`attention to any objective evidence of non-obviousness. Id. at 10, n.4.
`
`4
`
`
`
`IPR2019-00334
`Patent 7,100,680 B2
`reasons” for the proposed modification: “structural support and wick
`support.” Id. at 4. Petitioner explains, with citation to pages 58–59 of the
`Petition, that “Nakamura is a follow-on filing to the Morikawa heat pipe
`patent application.” Id.
`We acknowledged in the Final Decision that Nakamura discloses an
`improvement to Morikawa’s heat pipe, and, in fact, found that Nakamura’s
`teaching of an improvement and criticism of Morikawa’s configuration
`would have led one having ordinary skill in the art to replace all of
`Morikawa’s spacers with Nakamura’s concavities. See Final Dec. 47–48
`(agreeing with Patent Owner’s arguments as to the manner in which
`Morikawa would have been modified in light of Nakamura’s disclosure); id.
`at 69–70 (finding, in the context of independent claim 3, that Petitioner
`provided adequate reasoning, premised on Nakamura’s criticism, to
`substitute Nakamura’s concavity for the pipe of Morikawa). Petitioner’s
`citation to pages 58–59 is misplaced to the extent Petitioner relies on this
`portion of the Petition for a reason to modify Morikawa to replace only some
`of Morikawa’s spacers with Nakamura’s concavities. Pages 58–59 of the
`Petition address Petitioner’s proposed modification of Morikawa to
`substitute Nakamura’s concavities for Morikawa’s pipes to meet the
`“depression” limitation found earlier in claim 1. See Pet. 55, 62–63
`(Petitioner explaining that the proposed combination is the modification of
`Morikawa’s pipes “to solve these problems.”). The “spacer” limitation
`appears later in claim 1 and, similarly, Petitioner’s purported reasoning
`associated with that spacer limitation appears later in the Petition. See
`Pet. 71–75. The Petition’s discussion of the earlier “depression” limitation
`does not include a reason to replace only some of Morikawa’s spacers with
`Nakamura’s concavities.
`
`5
`
`
`
`IPR2019-00334
`Patent 7,100,680 B2
`Petitioner argues that a person having ordinary skill in the art at the
`time of the ’680 patent was clearly aware of both Morikawa and Nakamura.
`Request 4‒5 (citing Pet. 15–18 (discussing an overview of Morikawa), 46–
`48 (discussing an overview of Nakamura), and 58–60 (discussing
`combination of Morikawa and Nakamura for purposes of the “depression”
`limitation of claim 1)). We agree with Petitioner that a person having
`ordinary skill in the art would have been aware of both of these references at
`the time of the invention. This fact alone, however, is not sufficient to
`provide a reason to modify Morikawa with the teaching of Nakamura in the
`manner claimed in challenged claim 1. Similarly, that the Board found that
`Nakamura discloses the “depression” limitation of another claim and found
`that Morikawa discloses a “hollow column” limitation in another claim in
`another patent in another inter partes review does not equate to sufficient
`reasoning why a person having ordinary skill in the art would have combined
`prior art teachings in a manner to arrive at the claimed subject matter having
`both a “depression” and a “spacer.” See Request 2 (citing Final Dec. 69–70
`(regarding claim 3); IPR2019-00337, Final Dec. (Paper 49) 49–50
`(regarding the “hollow column” limitation of US 7,066,240, claim 9)).
`Petitioner also contends it explained that it is “obvious to replace only
`some of Morikawa’s spacers, viz. the metal pipes having through-holes
`(shown above, right), while retaining Morikawa’s conventional spacers,
`which do not have through-holes (shown below, left).” Request 5 (citing
`Pet. 71–73; Reply 31–32). According to Petitioner, the modification would
`have been obvious “because, as explained by Petitioner, Nakamura’s
`‘criticism’ of Morikawa relates only to the metal pipes that have
`through-holes, but not to the conventional spacers that do not.” Id. (citing
`Reply 31–32; Pet. 71–73). Petitioner’s argument is flawed for two reasons.
`
`6
`
`
`
`IPR2019-00334
`Patent 7,100,680 B2
`The first flaw in Petitioner’s argument is that it is premised on a
`misreading of Nakamura. Specifically, we disagree with Petitioner’s reading
`of Nakamura as criticizing only the metal pipes that have through-holes.
`Nakamura describes “work of joining the metal pipe 6 and an outer wall of
`the heat pipe 4 by brazing or the like is difficult, and there are manufacturing
`disadvantages such as the refrigerant leaking from a junction.” Ex. 1004, 4;
`see also Ex. 2012, 4 (describing that Morikawa “has shortcomings in
`manufacturing, such as the difficulty in joining the metal tubes 6 and the
`exterior walls of the heat pipe 4 by brazing or the like, the occurrence of a
`coolant leakage from the joints, and the like.”). Nakamura here is referring
`to metal tubes 6 of “a conventional heat pipe” as depicted in Figures 2(A)
`and 2(B). Ex. 1004, 4, 8. Figures 2(A) and 2(B) of Nakamura appear to be
`based on Figures 2(A) and 2(B) of Morikawa, where Nakamura’s Figures
`use element numbering that differs from Morikawa’s. Comparing the
`Figures, it appears that metal tubes 6 of Nakamura correspond to metal
`pipes 11a of Morikawa.
`Morikawa describes that, with demand for the walls of the heat pipe to
`be thin, “a spacer as a reinforcing material is generally disposed inside the
`enclosure.” Ex. 1003, 4:1‒8. With respect to metal pipes 11a, Morikawa
`describes that “the large number of metal pipes 11a that define the holes 11
`are very useful as spacers in place of or together with this conventional type
`of spacer.” Ex. 1003 4:9‒12. Morikawa further describes that the
`through-holes 11 in metal pipes 11a can be formed in one of two ways:
`(1) “by welding and fixing the metal pipe to the panel surfaces so the metal
`pipe is communicated to holes provided in advance in upper and lower
`surfaces of the panel,” and (2) “by welding and fixing a metal column to
`upper and lower inner surfaces of the panel like a conventional spacer to
`
`7
`
`
`
`IPR2019-00334
`Patent 7,100,680 B2
`form the enclosure and afterward opening a hole in the panel walls and this
`metal column by a drill” where “the holes may be formed in advance in the
`upper and lower surfaces of the panel” and may be “closed from the inside
`by welding a metal column of a cross-sectional area sufficient to block these
`holes, and the metal column may afterward be drilled from the panel hole to
`bore the through path.” Id. at 4:25‒41.
`Thus, Nakamura’s criticism of Morikawa is not limited to the coolant
`leakage that would be an issue with the metal pipes that have through-holes.
`Rather, Nakamura’s criticism includes the disadvantage that it is difficult to
`join the metal pipes and the outer wall of the heat pipe. This criticism
`extends equally to all the metal pipes in Morikawa and would suggest using
`Nakamura’s concavities to form all the spacers between the plates. See
`Ex. 2002 ¶¶ 159‒161 (Patent Owner’s expert supporting a contrary reading
`of Nakamura than that argued by Petitioner).
`The second flaw in Petitioner’s argument is that the Petitioner did not
`present arguments in the Petition that Nakamura’s criticism of Morikawa
`relates only to the metal pipes that have through-holes in the cited portions.
`Specifically, Petitioner cites, for this proposition, pages 71–73 of the Petition
`in its Rehearing Request. Request 5. The arguments on pages 71–73 of the
`Petition refer to how Morikawa’s pipes could be modified (by not drilling
`the pipes) to become conventional solid spacers and is based on the
`assumption that some pipes were retained during Petitioner’s initial
`modification of Morikawa’s pipes to be concavities. See Pet. 62–63 (“A
`POSITA would have been motivated to modify the metal pipe in Morikawa
`that corresponds to the ‘hollow column’ structure in the ’680 patent to solve
`these problems.”); id. at 71–72 (arguing that there would be no need for
`pipes, i.e. metal columns with a through-hole, “after modifying Morikawa in
`
`8
`
`
`
`IPR2019-00334
`Patent 7,100,680 B2
`accordance with Nakamura, as discussed above in Sections X.B.6 and
`X.B.8.”). These pages do not discuss Nakamura’s criticism of Morikawa as
`Petitioner asserts, and thus does not offer an argument that the criticism is
`limited.
`In sum, the Petition, in attempting to address limitations to two
`different types of spacers in the same claim, failed to provide an adequately
`articulated and consistent reason to combine the references’ teachings in a
`manner that results in a structure having both types.
`Pages 31–32 of Petitioner’s Reply repeat the same error by simply
`referring back to the explanation on pages 71–73 of the Petition for the
`reasoning for the proposed modification:
`As explained in the Petition, it would be obvious to use
`Nakamura’s concavities/depressions to form the “through path”
`while also employing Morikawa’s columns as spacers to help
`maintain a clearance between the two plates and/or to act as a
`supporting structure for the wick.
` (Petition at 71–73.)
`Accordingly, it is obvious to use Nakamura’s known depressions
`with Morikawa’s known columns under KSR.
`Pet. Reply 31.
`Further, although Petitioner presented its argument about Nakamura’s
`criticism of Morikawa’s heat pipe in its Reply, Petitioner failed to provide
`any expert testimony to support its argument as to how a person of ordinary
`skill in the art would understand Nakamura. Instead, Petitioner argued that
`“Nakamura describes some of its advantages over Morikawa’s ‘metal
`pipe 6’ only” and that “Nakamura is not describing any disadvantages at all
`associated with Morikawa’s ‘conventional spacer’ by ‘welding and fixing a
`metal column to upper and lower inner surfaces of the panel.” Pet.
`Reply 31–32 (citing Nakamura at 4; Morikawa, 4:31‒33). Patent Owner,
`however, provided expert testimony as to how a person having ordinary skill
`
`9
`
`
`
`IPR2019-00334
`Patent 7,100,680 B2
`in the art would have understood Nakamura’s criticism of Morikawa’s
`spacers. PO Resp. 57 (citing Ex. 2002 ¶ 160). We credited this testimony in
`our Final Decision. Final Dec. 47 (citing PO Resp. 58); id. at 47–48
`(agreeing with Patent Owner’s argument).
`Petitioner attacks Patent Owner’s expert’s testimony, arguing for the
`first time in the Request for Rehearing that “Patentee’s own expert testified
`that ‘too many depressions will begin to negatively affect the structural
`integrity of the plates and adversely restrict the vapor flow.’” Request 5‒6
`(citing PO Resp. 9; Ex. 2002 ¶ 58); see id. at 7 (citing PO Resp. 9 as
`“admitting” this). Petitioner did not, however, raise this Patent Owner
`“admission” in its Petitioner Reply and did not independently present this
`argument about too many depressions in either its Petition or its Reply. See
`Pet. Reply 30–32 (responding to Patent Owner’s arguments regarding the
`subject aspect of the claim 1 challenge). We cannot have misapprehended or
`overlooked an argument that Petitioner did not present.
`Petitioner further contends that “the Board’s obviousness findings are
`not in accordance with the law.” Request 2; see also id. at 6 (arguing that
`“Petitioner need only provide ‘a reason’ as to why a [person having ordinary
`skill in the art] would substitute Nakamura’s depressions for some, but not
`all, of Morikawa’s columns in Morikawa’s device.”). Petitioner discusses
`the proposed replacement of Morikawa’s “through path” spacers with
`Nakamura’s concavities, but Petitioner does not discuss why Morikawa’s
`remaining spacers would also not be similarly replaced. In other words, as
`explained above, Petitioner provided no adequate reason in its Petition to
`explain why one would have modified Morikawa by substituting only some
`spacers with Nakamura’s concavities, when Nakamura teaches making all of
`
`10
`
`
`
`IPR2019-00334
`Patent 7,100,680 B2
`its spacers using abutting concavities. Pet. 71–73 (citing Pokharna ¶ 93);
`Final Dec. 44–46 (describing Nakamura).
`As explained in the Final Decision, upon review and consideration of
`the arguments and evidence submitted by the parties, Petitioner failed to
`show that the combined teachings of Morikawa and Nakamura would have
`led one having ordinary skill in the art to the combination of conventional
`spacers, as discussed in Morikawa, and depressions formed by Nakamura’s
`concavities, as recited in claim 1. Petitioner’s arguments in the Request for
`Rehearing do not persuade us that we erred in our application of the facts as
`presented by Petitioner to the standard for determining obviousness, as set
`forth in KSR, in finding that Petitioner failed to show unpatentability of
`claim 1.
`
`C. Conclusion
`For the foregoing reasons, Petitioner has not shown that we
`misapprehended or overlooked Petitioner’s arguments or evidence in
`determining that Petitioner did not show by a preponderance of evidence that
`challenged claim 1 of the ’680 patent is unpatentable.
`IV. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`11
`
`
`
`IPR2019-00334
`Patent 7,100,680 B2
`FOR PETITIONER:
`
`Erik B. Milch
`Andrew C. Mace
`Reuben Chen
`COOLEY LLP
`emilch@cooley.com
`amace@cooley.com
`rchen@cooley.com
`
`
`FOR PATENT OWNER:
`
`Kenneth M. Albridge, III
`Kevin P. Moran
`Brian J. N. Marstall
`MICHAEL BEST & FRIEDRICH LLP
`kmalbridge@michaelbest.com
`kpmoran@michaelbest.com
`bjmarstall@michaelbest.com
`
`
`12
`
`
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