Trials@uspto.gov
`571-272-7822
`
`Paper 49
`Date: June 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COOLER MASTERS CO., LTD.,
`Petitioner,
`v.
`AAVID THERMALLOY LLC,
`Patent Owner.
`
`IPR2019-00337
`Patent 7,066,240 B2
`
`
`
`
`
`
`
`
`
`Before LINDA E. HORNER, KEN B. BARRETT, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`HORNER, Administrative Patent Judge.
`
`
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`
`35 U.S.C. § 318(a)
`Denying-in-Part, Dismissing-in-Part, Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 49
`Date: June 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COOLER MASTERS CO., LTD.,
`Petitioner,
`v.
`AAVID THERMALLOY LLC,
`Patent Owner.
`
`IPR2019-00337
`Patent 7,066,240 B2
`
`
`
`
`
`
`
`
`
`Before LINDA E. HORNER, KEN B. BARRETT, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`HORNER, Administrative Patent Judge.
`
`
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`
`35 U.S.C. § 318(a)
`Denying-in-Part, Dismissing-in-Part, Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`
`IPR2019-00337
`Patent 7,066,240 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Cooler Masters Co., Ltd., (“Petitioner”)1 filed a Petition requesting
`inter partes review of U.S. Patent No. 7,066,240 B2 (“the ’240 patent,”
`Ex. 1001). Paper 2 (“Pet.”). The Petition challenges the patentability of
`claims 9‒13 of the ’240 patent (“the challenged claims”) on the grounds of
`obviousness under 35 U.S.C. § 103. Petitioner asserts four grounds of
`unpatentability. Id. at 5. Aavid Thermalloy LLC (“Patent Owner”)2 filed a
`Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). On June
`23, 2019, the Board instituted inter partes review of all the challenged
`claims on all of the asserted grounds. Paper 7 (“Inst. Dec.”), 45.
`Subsequently, Patent Owner filed a Response (Paper 23, “PO Resp.”)
`to the Petition, Petitioner filed a Reply (Paper 28, “Pet. Reply”) to the Patent
`Owner Response, and Patent Owner filed a Sur-Reply (Paper 34, “PO Sur-
`Reply”). An oral hearing was held on March 5, 2020, and a transcript of the
`hearing is included in the record. Paper 48 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a). After consideration of
`the parties’ arguments and evidence, and for the reasons discussed below,
`we determine that Petitioner has not shown by a preponderance of the
`evidence that claims 11 and 12 of the ’240 patent are unpatentable, but
`Petitioner has shown by a preponderance of the evidence that claims 9, 10
`
`
`1 Petitioner identifies itself and CMI USA, Inc. as the real parties in interest.
`Pet. 1.
`2 Patent Owner identifies itself as the real party in interest and states that it is
`“wholly owned by LTI Holdings Inc. (d/b/a Boyd Corporation), which is
`wholly owned by Basilisk Holdings Inc.” Paper 4, 2.
`
`2
`
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`IPR2019-00337
`Patent 7,066,240 B2
`and 13 of the ’240 patent are unpatentable. We also deny, in part, Patent
`Owner’s Motion to Exclude and dismiss as moot the remainder of the
`motion.
`
`B. Related Matters
`One or both parties identify, as matters involving or related to the
`’240 patent, Aavid Thermalloy LLC v. Cooler Master Co., Case No. 4:17-cv-
`05363 (N.D. Cal.), and Patent Trial and Appeal Board cases IPR2019-
`00144, IPR2019-00145, IPR2019-00146, IPR2019-00147, IPR2019-00333,
`IPR2019-00334, IPR2019-00337, and IPR2019-00338. Pet. 1‒2; Paper 4, 2.
`IPR2019-00144 was filed by Petitioner and involves a challenge to claims
`9‒13 of the ’240 patent. The remaining inter partes reviews were filed by
`Petitioner and involve challenges to patents related to the ’240 patent. The
`Board instituted each of these inter partes reviews, except for IPR2019-
`00145, IPR2019-00147, and IPR2019-00333.
`C. The ’240 Patent
`The ’240 patent is titled “Integrated Circuit Heat Pipe Heat Spreader
`with Through Mounting Holes.” Ex. 1001, code (54). According to the
`Specification, “[t]his invention relates generally to active solid state devices,
`and more specifically to a heat pipe for cooling an integrated circuit chip,
`with the heat pipe designed to be held in direct contact with the integrated
`circuit.” Id. at 1:10–13.
`The disclosed heat pipe “is constructed to assure precise flatness and
`to maximize heat transfer from the heat source and to the heat sink, and has
`holes through its body to facilitate mounting.” Id. at 1:57‒60. The heat pipe
`“requires no significant modification of the circuit board or socket because it
`is held in intimate contact with the integrated circuit chip by conventional
`screws attached to the integrated circuit mounting board.” Id. at 1:61–65.
`
`3
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`IPR2019-00337
`Patent 7,066,240 B2
`“[T]he same screws which hold the heat spreader against the chip can also
`be used to clamp a finned heat sink to the opposite surface of the heat
`spreader.” Id. at 1:67–2:2. The heat pipe further includes spacers:
`The internal structure of the heat pipe is an evacuated
`vapor chamber with a limited amount of liquid and includes a
`pattern of spacers extending between and contacting the two
`plates or any other boundary structure forming the vapor
`chamber. The spacers prevent the plates from bowing inward,
`and therefore maintain the vital flat surface for contact with the
`integrated circuit chip. These spacers can be solid columns,
`embossed depressions formed in one of the plates, or a mixture
`of the two.
`Id. at 2:3–11. The spacers “support the flat plates and prevent them from
`deflecting inward and distorting the plates to deform the flat surfaces which
`are required for good heat transfer.” Id. at 2:18–21. Through holes are
`provided through the heat pipe via the spacers:
`
`The spacers also make it possible to provide holes into
`and through the vapor chamber, an apparent inconsistency since
`the heat pipe vacuum chamber is supposed to be vacuum tight.
`This is accomplished by bonding the spacers, if they are solid,
`to both plates of the heat pipe, or, if they are embossed in one
`plate, bonding the portions of the depressions which contact the
`opposite plate to that opposite plate. With the spacer bonded to
`one or both plates, a through hole can be formed within the
`spacer and it has no effect on the vacuum integrity of the heat
`pipe vapor chamber, from which the hole is completely
`isolated.
`Id. at 2:29–40.
`Figure 1 is reproduced below.
`
`4
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`IPR2019-00337
`Patent 7,066,240 B2
`
`
`
`Figure 1 shows “a cross section view of the preferred embodiment of a flat
`plate heat pipe 10 of the invention with through holes 12 through its vapor
`chamber 14 and in contact with finned heat sink 16.” Id. at 3:21–24. “When
`heat pipe 10 is used to cool an integrated circuit chip (not shown) which is
`held against contact plate 18, cover plate 20 is held in intimate contact with
`fin plate 38, to which fins 16 are connected.” Id. at 4:9–12. “Heat pipe 10 is
`constructed by forming a boundary structure by sealing together two formed
`plates, contact plate 18 and cover plate 20.” Id. at 3:25–27. “Contact plate
`18 and cover plate 20 are sealed together at their peripheral lips 22 and 24 by
`conventional means, such as soldering or brazing, to form heat pipe 10.” Id.
`at 3:27–30. The components are assembled as follows:
`The entire assembly of heat pipe 10, frame 34, and fin plate 38
`is held together and contact plate 18 is held against an
`integrated circuit chip by conventional screws 40, shown in
`dashed lines, which are placed in holes 42 in fin plate 38 and
`through holes 12 in heat pipe 10, and are threaded into the
`mounting plate (not shown) for the integrated circuit chip.
`Id. at 4:12–18. The holes lie within sealed structures of the heat pipe:
`
`5
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`IPR2019-00337
`Patent 7,066,240 B2
`
`Holes 12 penetrate heat pipe 10 without destroying its
`vacuum integrity because of their unique location. Holes 12 are
`located within sealed structures such as solid columns 44, and
`since columns 44 are bonded to cover plate 20 at locations 46,
`holes 12 passing through the interior of columns 44 have no
`[e]ffect on the interior of heat pipe 10.
`Id. at 4:19–24.
`In addition to the preferred embodiment described above, the
`Specification describes an alternate embodiment. Id. at 2:41–53.
`This [alternate] embodiment forms the through holes in the
`solid boundary structure around the outside edges of the two
`plates. This region of the heat pipe is by its basic function
`already sealed off from the vapor chamber by the bond between
`the two plates, and the only additional requirement for forming
`a through hole within it is that the width of the bonded region
`be larger than the diameter of the hole.
`Id. at 2:44–51. The Specification explains that, “with the holes located in
`the peripheral lips, the heat pipe boundary structure can be any shape.” Id.
`at 2:51–53. Figure 2 is reproduced below.
`
`
`
`Figure 2 “is a cross section view of an alternate embodiment of the flat plate
`heat pipe 11 of the invention with through holes 48 located within peripheral
`lips 22 and 24 of the heat pipe and hole 50 shown in another sealed
`
`6
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`IPR2019-00337
`Patent 7,066,240 B2
`structure, one of the depressions 26.” Id. at 4:36–40. “Of course, the region
`of the peripheral edges is also a sealed structure since bonding between lips
`22 and 24 is inherent because heat pipe 11 must be sealed at its edges to
`isolate the interior from the outside atmosphere.” Id. at 4:43–48.
`D. Illustrative Claims
`Of the challenged claims, claims 9, 11, 12, and 13 are independent.
`Claims 9 and 13 are illustrative and are reproduced below.
`9. A heat pipe for spreading heat comprising:
`a boundary structure including spaced-apart first and
`second plates that define an enclosed vapor chamber;
`at least one hollow column having an exterior surface
`positioned within said vapor chamber with a first portion of
`said exterior surface sealingly bonded to at least one of said
`first and second plates, and having an open first end that opens
`through said first plate and an open second end that opens
`through said second plate so as to form at least one mounting
`hole that is isolated from said vapor chamber.
`13. A heat pipe for spreading heat comprising:
`a first plate having a circumferential edge lip bounding
`an inner surface and at least one depression which projects
`outwardly relative to said inner surface;
`a second plate arranged in spaced apart confronting
`relation to said first plate and including a circumferential edge
`lip bounding an inner surface and at least one opening through
`said second plate, said edge lips of said first and second plates
`being sealingly bonded together so as to define a vapor
`chamber; wherein
`said at least one depression has an open ended tubular
`cross-section and an outer surface, a portion of which outer
`surface is sealingly bonded to said second plate so as to
`coaxially align said at least one depression with said at least one
`opening in said second plate thereby to form a mounting hole
`that extends through said first plate depression and said second
`plate and is isolated from said vapor chamber.
`
`7
`
`
`
`IPR2019-00337
`Patent 7,066,240 B2
`Ex. 1001, 6:12‒22, 7:7‒24.
`
`E. Evidence
`Petitioner relies on the following references in the asserted grounds of
`unpatentability.
`
`Reference
`
`Date
`
`Exhibit
`No.
`Aug. 11, 1978 1003
`
`1975
`
`1004
`
`Mar. 27, 1996 1005
`
`Japanese Examined Utility Model Application
`Publication No. S53-32387 Y; Published
`August 11, 1978; Inventors: Takao Morikawa,
`Mitsuhiko Nakata (as translated) (“Morikawa”)3
`Japanese Unexamined Utility Model
`Application S50-55262; Year of
`Publication: 1975; Inventor: Kazuo Nakamura
`(as translated) (“Nakamura”)4
`Japanese Examined Utility Model Application
`Publication No. H8-10205; Published March 27,
`1996; Inventors: Tadahito Takahashi, Kaoru
`Hasegawa, Muneaki Sokawa (as translated)
`(“Takahashi”)5
`Petitioner also relies on the Declaration of Dr. Himanshu Pokharna
`(Ex. 1002), the Supplemental Declaration of Dr. Himanshu Pokharna
`(Ex. 1032), the Declaration of Sylvia D. Hall-Ellis, Ph.D. (Ex. 1039), and
`the Declaration of Takao Miyano (Ex. 1044) in support of its arguments.
`Patent Owner relies on the Declaration of Amir Faghri, Ph.D.,
`(Ex. 2002) in support of its arguments. Patent Owner also provides an
`independent certified translation of Nakamura, a translation of Nakamura
`
`
`3 Exhibit 1003 includes both the original Japanese-language publication and
`the English-language translation of Morikawa.
`4 Exhibit 1004 includes both the original Japanese-language publication and
`the English-language translation of Nakamura.
`5 Exhibit 1005 includes both the original Japanese-language publication and
`the English-language translation of Takahashi.
`
`8
`
`
`
`IPR2019-00337
`Patent 7,066,240 B2
`relied on by Petitioner in the related district court litigation, and two
`machine translations of Nakamura. Exs. 2012‒2015.
`The parties rely on other exhibits as discussed below.
`F. Prior Art and Asserted Grounds
`Petitioner asserts the following grounds of unpatentability in the
`Petition:
`Claim(s) Challenged 35 U.S.C. §
`9, 10, 12
`103(a)6
`9, 10
`103(a)
`12
`103(a)
`11, 13
`103(a)
`
`
`Reference(s)
`
`Morikawa
`Morikawa, Nakamura
`Morikawa, Takahashi
`Morikawa, Takahashi, Nakamura
`
`II. ANALYSIS
`A. Legal Standards
`Petitioner bears the burden of proving 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).
`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 ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`
`6 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
`2013. Because the application from which the ’240 patent issued was filed
`before this date, the pre-AIA version of § 103 applies.
`
`9
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`IPR2019-00337
`Patent 7,066,240 B2
`(2007). 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.7 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`B. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation marks and citation omitted).
`Petitioner, relying on Dr. Pokharna’s testimony, asserts that the person
`of ordinary skill in the art at the time of the invention would:
`have earned at least a graduate degree, such as an M.S., Ph.D.,
`or equivalent thereof, in mechanical engineering or a closely-
`related field and possessed at least three years of specialized
`experience in designing and developing heat pipes or other heat
`transfer devices for thermal management in electronics and
`computer systems.
`Pet. 10 (citing Ex. 1002 ¶¶ 8‒10).
`Relying on Dr. Faghri’s testimony, Patent Owner argues for a lower
`level of skill in the art than that proposed by Petitioner. PO Resp. 11‒12. In
`particular, Patent Owner disagrees with Petitioner’s requirement for an
`advanced degree in mechanical engineering or a closely-related field as it
`would, for example, exclude both the named inventors of the ’240 patent as
`
`
`7 The parties have not directed our attention to any objective evidence of
`non-obviousness.
`
`10
`
`
`
`IPR2019-00337
`Patent 7,066,240 B2
`well as “a large majority of active workers in the field at the time of the
`invention.” Id. (citing Ex. 2002 ¶ 80). Rather, Patent Owner contends that
`the person of ordinary skill in the art at the time of the invention would have
`“a Bachelor of Science degree in engineering and at least 3 years of
`experience working or studying in the field of heat pipes; or an equivalent
`level of education, training, and work experience.” Id. at 11 (citing Ex. 2002
`¶¶ 77‒79).
`We determine that the definition offered by Petitioner and Dr.
`Pokharna comports with the qualifications a person would have needed to
`understand and implement the teachings of the ’240 patent and the prior art
`of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
`(recognizing that the prior art itself may reflect an appropriate level of skill
`in the art). Moreover, Petitioner concedes that this dispute as to the
`appropriate level of skill in the art “is immaterial because the challenged
`claims are invalid under both sides’ definitions.” Pet. Reply 1 n.2. We
`agree with Petitioner that the outcome of this proceeding is not dependent on
`our application of one party’s definition as compared to the other.
`Nonetheless, because Petitioner’s and Dr. Pokharna’s definition better
`reflects the level of ordinary skill in the art, we adopt and apply it here.
`C. Claim Construction
`For inter partes reviews filed on or after November 13, 2018, we
`apply the same claim construction standard used by Article III federal courts
`and the ITC, both of which follow Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc), and its progeny. 37 C.F.R. § 42.100(b) (2019).
`Because the instant Petition was filed on November 14, 2018, we apply that
`standard here. Accordingly, we construe each challenged claim of the ’240
`patent to generally have “the ordinary and customary meaning of such claim
`
`11
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`IPR2019-00337
`Patent 7,066,240 B2
`as understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” Id.8 Only those claim terms that are in
`controversy need to be construed, and only to the extent necessary to resolve
`the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid
`Techs. in the context of an inter partes review).
`Petitioner proposes claim constructions for “vapor chamber,” “lip,”
`“spacer,” and “hollow column.” Pet. 10‒14. The Board decided that it did
`not need to construe “vapor chamber” and “spacer” for purposes of
`institution. Inst. Dec. 11. As to the claim term “lip,” the Board did not need
`to determine the full scope of the term, but determined, for purposes of
`institution, that Petitioner’s proposed construction is too broad because it
`reads out a structural limitation of the claim. Id. at 15. The Board also
`provided a claim construction that distinguished between a “hollow column”
`and a “depression” as those terms are used in the claims. Id. at 15‒16.
`Patent Owner, in response, proposes claim constructions for “vapor
`chamber,” “lip,” and “spacer extending between and contacting said first and
`second plates.” PO Resp. 13‒26. Patent Owner argues that the term
`“hollow column” “needs no construction” but proposes that Petitioner’s
`
`
`8 In IPR2019-00144, involving the same patent at issue here, as well as in
`IPR2019-00146 (involving the related ’679 patent), Petitioner filed an
`unopposed “Motion & Certification under 37 C.F.R. § 42.100(b) Requesting
`District Court-Type Claim Construction.” See, e.g., IPR2019-00144, Paper
`5. The Board granted each of Petitioner’s unopposed requests. See, e.g.,
`IPR2019-00144, Paper 7. Accordingly, we apply the same claim
`construction standard in each of the related proceedings.
`
`12
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`IPR2019-00337
`Patent 7,066,240 B2
`construction is appropriate if the Board determines that a construction is
`necessary. Id. at 26‒27.
`In light of the issues presented, we construe below the following claim
`terms.
`
`1. “lip”
`The claims of the ’240 patent recite structure in the form of a “lip” on
`each of the two plates. Specifically, the claims recite two presumptively
`different lips using different phrases: “a peripheral lip located at an edge of
`said boundary structure” (dependent claim 6 and independent claim 11 (the
`former claim not challenged in the Petition)) and “a circumferential edge lip
`bounding an inner surface” (independent claims 12, 13, and 14 (the latter
`claim not challenged in the Petition)). Ex. 1001, 5:64–65, 6:33–35, 6:56–57,
`6:61–62, 7:8–9, 7:12–13, 8:2–3, 8:6–7; see Karlin Tech., Inc. v. Surgical
`Dynamics, Inc., 177 F.3d 968, 971–72 (Fed. Cir. 1999) (Under the doctrine
`of claim differentiation, “different words or phrases used in separate claims
`are presumed to indicate that the claims have different meanings and
`scope.”). Each of the above-listed claims further explicitly requires that
`those lip structures are bonded together. For example, independent claim 11
`requires each plate to have a peripheral lip located at an edge of the
`boundary structure and also recites “at which said peripheral lip of said first
`plate is sealingly bonded to said peripheral lip of said second plate so as to
`define an enclosed vapor chamber.” Id. at 6:33–38. Independent claims 12
`and 13 require each plate to have a circumferential edge lip and also recite
`“said edge lips of said first and second plates being sealingly bonded
`together so as to define a vapor chamber.” Id. at 6:56‒67, 7:8‒16.
`Petitioner argues that the meaning of “lip” is the “portion of the plate
`comprising a region bonded to another plate.” Pet. 13. In the context of
`
`13
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`IPR2019-00337
`Patent 7,066,240 B2
`applying claim 11 to the prior art, Petitioner further argues that the
`peripheral lip in the ’240 patent is met by “a portion [on the upper plate]
`comprising a region bonded to the lower plate at the edge, periphery, or
`circumference of [the prior art enclosure].” Id. at 73. Similarly, in the
`context of claim 12, Petitioner argues that “a ‘circumferential edge lip’ is
`met by “a portion [on the upper plate] comprising a region bonded to the
`lower plate at the edge, periphery, or circumference . . . of [the prior art
`enclosure].” Id. at 27.
`In support of its proposed construction of “lip” as the region where
`one plate is bonded to another plate, Petitioner points to language in the
`Specification that “[c]ontact plate 18 and cover plate 20 are sealed together
`at their peripheral lips,” and that “the region of the peripheral edges is also a
`sealed structure since bonding between lips 22 and 24 is inherent because
`heat pipe 11 must be sealed at its edges to isolate the interior from the
`outside atmosphere.” Id. at 74 (quoting Ex. 1001, 3:27‒30); id. at 27
`(quoting with emphasis added Ex. 1001, 4:44–48).
`We noted in our Institution Decision that the cited passages, however,
`occur in the context of specific embodiments illustrated in Figures 1 and 2,
`respectively. Inst. Dec. 13. We noted that the Figures identify the lips using
`element numbers with associated lead lines, and do not reference the lips
`conceptually as simply the place where bonding has occurred. Id. Thus, for
`purposes of the Institution Decision and on the record before us at the time,
`we determined that Petitioner’s proposed construction is too broad because it
`reads out a structural limitation of the claim.
`Patent Owner agrees with the reasoning in the Institution Decision
`that Petitioner’s proposed construction of “lip” renders the term
`meaningless. PO Resp. 23. Patent Owner argues that “[t]he term ‘lip’ is
`
`14
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`IPR2019-00337
`Patent 7,066,240 B2
`used consistently throughout the specification to identify the location at the
`periphery of the plates where their faces are bonded together.” PO Resp. 22
`(arguing that “lip 24 is identified [in the Figures of the ’240 patent] as the
`peripheral flange-like structure of contact plate 18, whereas lip 22 is simply
`identified as the peripheral portion of the essentially flat cover plate 20.”).
`Patent Owner argues that “the term ‘lip’ means ‘portion of the plate defined
`by the bonded region of the plate’s inner or interior surface.’” Id. at 24
`(citing Ex. 2002 ¶¶ 106‒112).
`Petitioner responds that the “parties’ dispute on the meaning of ‘lip’
`needs no resolution because Takahashi discloses a ‘lip’ under either party’s
`construction, and Patentee has not contended otherwise.” Pet. Reply 12.
`We agree with Petitioner that we do not need to construe “lip” for purposes
`of assessing patentability under the grounds based on Morikawa as modified
`by Takahashi. To the extent that we address below Petitioner’s ground
`based on Morikawa alone, we adopt the same claim construction employed
`in our Institution Decision.
`
`As we explained in the Institution Decision, the mention in the ’240
`patent of an inherent bonding between identified plate lips in a specific
`embodiment cannot be extrapolated, as Petitioner implies, such that the
`claimed relationship is necessarily present in any sealed container. Inst.
`Dec. 13. Even if it were true that all sealed containers must have bonding to
`form the seal, it does not follow that all such containers necessarily have two
`spaced-apart plates with the claimed lips and with the plates being bonded
`together at the specifically recited location of those lips.
`
`Petitioner’s proposed construction—in terms of where the plates of
`the claimed invention eventually will be bonded—places too much emphasis
`on the completed assembly of the heat pipe rather than on the claims’
`
`15
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`IPR2019-00337
`Patent 7,066,240 B2
`recitation of lips on the individual plates. Under Petitioner’s construction, a
`plate in the assembly will have a lip wherever two plates are bonded but the
`same plate, prior to assembly, will not have a lip as there is no region where
`the plate is bonded to another plate. Petitioner does not explain why that is
`an acceptable result of its proposed construction.
`
`Additionally, Petitioner’s proposed construction converts the term
`“lip” from a structural component to merely a label referring to the bonded
`area. As such, Petitioner’s proposed construction effectively reads out or
`renders as surplusage the recitation of structure in the form of a “lip.” This
`becomes evident in Petitioner’s application of the prior art to the claims.
`Petitioner asserts that because Morikawa discloses an airtight heat pipe, a
`person having ordinary skill in the art would have “understood and found it
`obvious” that the plates would each have a peripheral portion of the plate
`comprising a region bonded to another plate located at the edge of the
`boundary structure and therefore, under Petitioner’s proposed construction,
`Morikawa’s sealed heat pipe must have bonding at the claimed lips
`regardless as to the type of lip recited in the claim.9 E.g., Pet. 26–27; see
`also id. at 73. Such a proposed construction would absolve a challenger of
`the responsibility to explain how each of the two plates has the specifically
`recited type of lip and then how those lips are bonded together so as to
`define a vapor chamber.
`
`
`9 To the extent that Petitioner’s proposed construction implies that there is
`no difference between the recited peripheral lip and circumferential edge lip,
`we note that, under the doctrine of claim differentiation, “different words or
`phrases used in separate claims are presumed to indicate that the claims have
`different meanings and scope.” Karlin Tech., 177 F.3d at 971–72.
`
`16
`
`
`
`IPR2019-00337
`Patent 7,066,240 B2
`
`Thus, we determine that Petitioner’s proposed construction is too
`broad because it reads out a structural limitation of the claim. See Unique
`Concepts, Inc. v. Brown, 939 F.2d 1558, 1562 (Fed. Cir. 1991) (“All the
`limitations of a claim must be considered meaningful.”). We further
`determine that we do not need to construe “lip” independently of the
`specifically recited lips and the “bonded together” recitations in each of
`claims 11‒13 to resolve Petitioner’s application of the prior art to each
`respective claim.
`
`2. “hollow column”
`Petitioner proposes to adopt an interpretation of “hollow column” to
`mean a “cylindrical structure surrounding a void or cavity.” Pet. 12 (citing
`Ex. 1002 ¶¶ 33‒37). Patent Owner argues that the term “hollow column”
`needs no construction because it “is sufficiently clear on its own.” PO
`Resp. 26. Patent Owner urges that if the Board determines that a
`construction is necessary, we should construe the term to mean “a columnar
`structure defining an unfilled or empty space.” Id. (citing Ex. 2002 ¶¶ 119‒
`122).
`In the Institution Decision, we determined that the ’240 patent
`describes two distinct types of spacers, those formed by a solid column
`bonded to one or both plates and hollowed via the formation of a through
`hole, and those formed by a depression embossed in a plate, with the bottom
`of the depression bonded to the inner surface of the opposite plate, and
`having a hole formed at that bonded contact surface. Inst. Dec. 16. We
`interpreted “hollow column,” in light of the description provided in the ’240
`patent, to refer to the former and not to encompass the latter. Id. And we
`found that Petitioner had failed, with respect to the challenge based on
`Morikawa and Nakamura (Ground 2) to “reconcile adequately its reliance on
`
`17
`
`
`
`IPR2019-00337
`Patent 7,066,240 B2
`a type of prior art depression-like spacer that the ’240 patent appears to
`distinguish from the recited hollow column.” Id. at 31.
`Petitioner did not address our interpretation of “hollow column” in its
`Petitioner Reply. Instead, Petitioner argues that Patent Owner’s
`construction, which is based on its litigation position, “should be applied
`against the Patentee” and because the ’240 patent “does not expressly define
`‘hollow column.’” Pet. Reply 19. Petitioner also points to depictions of
`solid columns 44 in Figure 2 of the ’240 patent as support for this
`interpretation. Id. at 19‒20.
`We have reviewed the description provided in the ’240 patent for
`spacers, and, in particular, spacers made from columns. For the reasons
`discussed below, we are not persuaded that our interpretation of “hollow
`column” adopted in the Institution Decision is incorrect or that we should
`adopt the broader construction proffered by the parties.
`The term “hollow column” is not used anywhere in the ’240 patent
`except for the claims. The ‘240 patent uses “columns,” however, to discuss
`one type of spacer, e.g., a spacer formed by a solid column with a hole
`passing through it. Ex. 1001, 2:9‒11, 4:19‒24.
`Specifically, as discussed in our Institution Decision, the Specification
`of the ’240 patent discusses and distinguishes two types of spacers that
`extend between the plates and through which a fastener hole may be drilled
`without breaking the air-tight seal of the vapor chamber. See Ex. 1001, 2:9–
`39.
`
`18
`
`
`
`IPR2019-00337
`Patent 7,066,240 B2
`These spacers [between plates] can be solid columns, embossed
`depressions formed in one of the plates, or a mixture of the
`two. . . .[10]
`The spacers also make it possible to provide holes into
`and through the vapor chamber, an apparent inconsistency since
`a heat pipe vacuum chamber is supposed to be vacuum tight.
`This is accomplished by bonding the spacers, if they are solid,
`to both plates of the heat pipe, or, if they are embossed in one
`plate, bonding the portions of the depressions which contact the
`opposite plate to that opposite plate. With the spacer bonded to
`one or both plates, a through hole can be formed within the
`spacer and it has no effect on the vacuum integrity of the heat
`pipe vapor chamber, from which the hole is completely
`isolated.
`Id. at 2:9–11, 29–39. Thus, the ’240 patent describes one embodiment of a
`spacer as a depression embossed in a plate, with the bottom of the
`depression bonded to the inner surface of the opposite plate, and having a
`hole formed at that bonded contact surface. See id. at 4:40–43, Fig. 2 (hole
`50 in bottom of depression 26, which is bonded to inner surface 28 of
`contact plate 18). A second embodiment of a spa
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