Trials@uspto.gov
`571-272-7822
`
`Paper 51
`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.
`
`IPR2019-00337
`Patent 7,066,240 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)(2)
`
`
`
`
`
`
`

`

`IPR2019-00337
`Patent 7,066,240 B2
`
`I.
`
`INTRODUCTION
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`Cooler Master Co., Ltd., (“Petitioner”) filed a Petition requesting inter
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`partes review of U.S. Patent No. 7,066,240 B2 (“the ’240 patent,”
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`Ex. 1001). Paper 2 (“Pet.”). The Petition challenged the patentability of
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`claims 9‒13 of the ’240 patent (“the challenged claims”) on the grounds of
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`obviousness under 35 U.S.C. § 103. Petitioner asserted four grounds of
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`unpatentability. Id. at 5. Aavid Thermalloy LLC (“Patent Owner”) filed a
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`Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). On June
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`12, 2019, the Board instituted inter partes review of all the challenged
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`claims on all of the asserted grounds. Paper 7 (“Inst. Dec.”), 45.
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`Subsequently, Patent Owner filed a Response (Paper 22, “PO Resp.”)
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`to the Petition, Petitioner filed a Reply (Paper 28, “Pet. Reply”) to the Patent
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`Owner Response, and Patent Owner filed a Sur-Reply (Paper 34, “PO Sur-
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`Reply”). An oral hearing was held on March 5, 2020, and a transcript of the
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`hearing is included in the record. Paper 48 (“Tr.”).
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`We entered a Final Written Decision pursuant to 35 U.S.C. § 318(a).
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`Paper 49 (“Final Dec.”). We determined that Petitioner had not shown by a
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`preponderance of the evidence that claims 11 and 12 of the ’240 patent are
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`unpatentable, but Petitioner had shown by a preponderance of the evidence
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`that claims 9, 10, and 13 of the ’240 patent are unpatentable. Final Dec. 83.
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`On July 6, 2020, Petitioner filed a Request for Rehearing (Paper 50,
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`“Request” or “Req. Reh’g”) of our Final Written Decision. Petitioner seeks
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`reconsideration of the finding that Petitioner had not shown that claim 11 of
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`the ’240 patent is unpatentable. For the reasons provided below, Petitioner’s
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`Request for Rehearing is denied.
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`2
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`

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`IPR2019-00337
`Patent 7,066,240 B2
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`II. STANDARD OF REVIEW
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`A party requesting rehearing bears the burden of showing that the
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`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
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`specifically all matters we misapprehended or overlooked, and the place
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`where each matter was previously addressed in a motion, an opposition, or a
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`reply. Id. When reconsidering a decision on institution, we review the
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`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
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`discretion may be determined if a decision is based on an erroneous
`
`interpretation of law, if a factual finding is not supported by substantial
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`evidence, or if the decision represents an unreasonable judgment in weighing
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`relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir.
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`2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).
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`III. ANALYSIS
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`Petitioner asserts that the Board failed to apply KSR’s1 flexible
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`approach to obviousness as it relates to the combination of Morikawa and
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`Nakamura and the determination of patentability of claim 11. Request 1. In
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`the Final Decision, the Board determined that Petitioner failed to provide
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`adequate explanation for the proposed modification of Morikawa with the
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`teaching of Nakamura in the manner recited in claim 11:
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`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 11a 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 11. See Ex. 1002 ¶ 124 (analysis
`of claim 11, in which Dr. Pokharna opines that Morikawa’s
`metal pipes 11a correspond to the “at least one spacer extending
`
`
`1 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
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`3
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`IPR2019-00337
`Patent 7,066,240 B2
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`between and contacting said first and second plates” of claim
`11).
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`Final Dec. 68.
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`Petitioner argues the Board’s finding that Petitioner’s showing of a
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`reason to combine Morikawa and Nakamura in the manner claimed was
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`insufficient is “contrary to the law.” Request 6. Specifically, Petitioner
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`asserts that it “need only provide ‘a reason’ as to why a [person having
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`ordinary skill in the art] would substitute Nakamura’s depressions for some,
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`but not all, of Morikawa’s columns in Morikawa’s device.” Id. (citing
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`Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 991‒992 (Fed. Cir.
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`2017)). Petitioner asserts that the Petition satisfied this burden. Id. at 3.
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`Thus, the Request asserts that the Board misapplied the applicable law
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`on obviousness and Petitioner’s burden to the facts of this case. We discuss
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`below the applicable law and then examine the Petition with respect to
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`Petitioner’s burden under the law.
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`A. Applicable law
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`1. Obviousness
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`As explained in our Final Decision, “A patent claim is unpatentable
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`under 35 U.S.C. § 103(a) if the differences between the claimed subject
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`matter and the prior art are such that the subject matter, as a whole, would
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`have been obvious at the time the invention was made to a person having
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`ordinary skill in the art to which said subject matter pertains. KSR Int’l Co.
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`v. Teleflex Inc., 550 U.S. 398, 406 (2007).” Final Dec. 9‒10. “The question
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`of obviousness is resolved on the basis of underlying factual determinations
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`including: (1) the scope and content of the prior art; (2) any differences
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`between the claimed subject matter and the prior art; (3) the level of skill in
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`IPR2019-00337
`Patent 7,066,240 B2
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`the art; and (4) any objective evidence of non-obviousness. Graham v. John
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`Deere Co., 383 U.S. 1, 17–18 (1966).” Final Dec. 10 (footnote omitted).2
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`2. Petitioner’s Burden
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`As also explained in the Final Decision, “Petitioner bears the burden
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`of proving unpatentability of the claims challenged in the Petition, and that
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`burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
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`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner
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`must establish by a preponderance of the evidence that the challenged claims
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`are unpatentable. 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2018).”
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`Final Dec. 9.
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`B. Petitioner’s Arguments
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`As discussed above, Petitioner argues that rehearing should be granted
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`“because the Board failed to apply KSR’s flexible approach to obviousness
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`as it relates to the combination of Morikawa and Nakamura.” Request 1.
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`Petitioner contends that it “adequately explain[ed] why a [person having
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`ordinary skill in the art] would find it obvious to replace some of
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`Morikawa’s columns (the claimed spacer) with Nakamura’s depressions.”
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`Id. at 2. Specifically, Petitioner argues that “the Petition identifies two
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`reasons” for the proposed modification: “structural support and wick
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`support.” Id. at 4. Petitioner explains, with citation to page 46 of the
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`Petition, that “Nakamura is a follow-on filing to the Morikawa heat pipe
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`patent application.” Id.
`
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`2 Petitioner does not contest our finding as to the level of skill in the art.
`Final Dec. 11 (adopting Petitioner’s proffered level of ordinary skill).
`Further, as noted in the Final Decision, the record did not contain objective
`evidence of non-obviousness. Id. at 10, n.7.
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`5
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`Patent 7,066,240 B2
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`We acknowledged in the Final Decision that Nakamura discloses an
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`improvement to Morikawa’s heat pipe, and, in fact, found that Nakamura’s
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`teaching of an improvement and criticism of Morikawa’s configuration
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`would have led one having ordinary skill in the art to replace all of
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`Morikawa’s spacers with Nakamura’s concavities. Final Dec. 68 (agreeing
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`with Patent Owner’s arguments as to the manner in which Morikawa would
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`have been modified in light of Nakamura’s disclosure). Petitioner’s citation
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`to page 46 is misplaced to the extent Petitioner relies on this portion of the
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`Petition for a reason to modify Morikawa to replace only some of
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`Morikawa’s spacers with Nakamura’s concavities. Page 46 of the Petition
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`addresses Petitioner’s proposed modification of Morikawa to substitute
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`Nakamura’s concavities for Morikawa’s pipes to meet the “hollow column”
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`limitation of claim 9. See Pet. 49–50 (Petitioner explaining that the
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`proposed combination is the modification of Morikawa’s pipes “to solve
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`these problems.”). Claim 9, unlike claim 11, does not recite both “at least
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`one spacer extending between and contacting” both plates and “at least one
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`depression.” Thus, the Petition’s discussion of the challenge to claim 9 does
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`not include a reason to replace only some of Morikawa’s spacers with
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`Nakamura’s concavities.
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`Petitioner argues that a person having ordinary skill in the art at the
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`time of the ’240 patent was clearly aware of both Morikawa and Nakamura.
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`Request 4‒5 (citing Pet. 14‒15 (discussing an overview of Morikawa), 41‒
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`42 (discussing an overview of Nakamura), and 45‒46 (discussing
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`combination of Morikawa and Nakamura for purposes of the “hollow
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`column” limitation of claim 9)). We agree with Petitioner that a person
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`having ordinary skill in the art would have been aware of both of these
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`references at the time of the invention. This fact alone, however, is not
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`IPR2019-00337
`Patent 7,066,240 B2
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`sufficient to provide a reason to modify Morikawa with the teaching of
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`Nakamura in the manner claimed in challenged claim 11.
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`Petitioner also contends it explained that it is “obvious to replace only
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`some of Morikawa’s spacers, viz. the metal pipes having through-holes
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`(shown above, right), while retaining Morikawa’s conventional spacers,
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`which do not have through-holes (shown below, left).” Request 5 (citing
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`Pet. 46‒47, 88‒89; Reply 32‒33). According to Petitioner, the modification
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`would have been obvious “because, as explained by Petitioner, Nakamura’s
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`‘criticism’ of Morikawa relates only to the metal pipes that have
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`through-holes, but not to the conventional spacers that do not.” Id. (citing
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`Reply 32‒33; Pet. 88‒89). Petitioner’s argument is flawed for two reasons.
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`The first flaw in Petitioner’s argument is that it is premised on a
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`misreading of Nakamura. Specifically, we disagree with Petitioner’s reading
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`of Nakamura as criticizing only the metal pipes that have through-holes.
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`Nakamura describes “work of joining the metal pipe 6 and an outer wall of
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`the heat pipe 4 by brazing or the like is difficult, and there are manufacturing
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`disadvantages such as the refrigerant leaking from a junction.” Ex. 1004, 4;
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`see also Ex. 2012, 4 (describing that Morikawa “has shortcomings in
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`manufacturing, such as the difficulty in joining the metal tubes 6 and the
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`exterior walls of the heat pipe 4 by brazing or the like, the occurrence of a
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`coolant leakage from the joints, and the like.”). Nakamura here is referring
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`to metal tubes 6 of “a conventional heat pipe” as depicted in Figures 2(A)
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`and 2(B). Ex. 1004, 4, 8. Figures 2(A) and 2(B) of Nakamura appear to be
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`based on Figures 2(A) and 2(B) of Morikawa, where Nakamura’s Figures
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`use element numbering that differs from Morikawa’s. Comparing the
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`Figures, it appears that metal tubes 6 of Nakamura correspond to metal pipes
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`11a of Morikawa.
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`IPR2019-00337
`Patent 7,066,240 B2
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`Morikawa describes that with demand for the walls of the heat pipe to
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`be thin, “a spacer as a reinforcing material is generally disposed inside the
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`enclosure.” Ex. 1003, 4:1‒8. With respect to metal pipes 11a, Morikawa
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`describes that “the large number of metal pipes 11a that define the holes 11
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`are very useful as spacers in place of or together with this conventional type
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`of spacer.” Ex. 1003 4:9‒12. Morikawa further describes that the through
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`holes 11 in metal pipes 11a can be formed in one of two ways: (1) “by
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`welding and fixing the metal pipe to the panel surfaces so the metal pipe is
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`communicated to holes provided in advance in upper and lower surfaces of
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`the panel,” and (2) “by welding and fixing a metal column to upper and
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`lower inner surfaces of the panel like a conventional spacer to form the
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`enclosure and afterward opening a hole in the panel walls and this metal
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`column by a drill” where “the holes may be formed in advance in the upper
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`and lower surfaces of the panel” and may be “closed from the inside by
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`welding a metal column of a cross-sectional area sufficient to block these
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`holes, and the metal column may afterward be drilled from the panel hole to
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`bore the through path.” Id. at 4:25‒41.
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`Thus, Nakamura’s criticism of Morikawa is not limited to the coolant
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`leakage that would be an issue with the metal pipes that have through-holes.
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`Rather, Nakamura’s criticism includes the disadvantage that it is difficult to
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`join the metal pipes and the outer wall of the heat pipe. This criticism
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`extends equally to all the metal pipes in Morikawa and would suggest using
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`Nakamura’s concavities to form all the spacers between the plates. See
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`Ex. 2002 ¶¶ 159‒161 (Patent Owner’s expert supporting a contrary reading
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`of Nakamura than that argued by Petitioner).
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`The second flaw in Petitioner’s argument is that the Petitioner did not
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`present arguments in the Petition that Nakamura’s criticism of Morikawa
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`IPR2019-00337
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`relates only to the metal pipes that have through-holes in the cited portions.
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`Specifically, Petitioner cites pages 46‒47 and 88‒89 of the Petition in its
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`Rehearing Request. Pages 46‒47 of the Petition do not address the
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`challenge to claim 11. As discussed above, pages 46‒47 of the Petition are
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`directed to modification of Morikawa with Nakamura for the “hollow
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`column” limitation of claim 9, and do not address the proposed modification
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`of only some of Morikawa’s spacers with Nakamura’s concavities.
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`Although pages 88‒89 of the Petition are directed to the challenge to
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`claim 11, this portion of the Petition fails to provide adequate support for the
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`proposed modification. The Petition relies on paragraph 93 of
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`Dr. Pokharna’s Declaration as support as follows:
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`A POSITA would have understood and found it obvious
`that Morikawa teaches a “conventional spacer” by “welding and
`fixing a metal column to upper and lower inner surfaces of the
`panel … to form the enclosure.” (Morikawa 4:31-33.) In
`particular, a POSITA would have understood that, when
`combined with Nakamura, Morikawa no longer needs to create
`the “through path” inside such “metal column” by “afterward
`opening a hole in the panel walls and this metal column by a
`drill.” (Morikawa, 4:30-35.) (Pokharna, ¶93.) This is because,
`as a POSITA would have understood and found obvious, the
`“through path” isolated from the vapor chamber is now formed
`on the “concavity joining surfaces 9a” after modifying Morikawa
`in accordance with Nakamura, as discussed above in Sections
`XII.A.6 and XII.A.8.
`
`Pet. 88 (emphasis added). No further support for Petitioner’s assertions as to
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`the understanding of a person having ordinary skill in the art can be found in
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`paragraph 93. Paragraph 93 of Dr. Pokharna’s Declaration falls within
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`Section XI.A.1 of the declaration, addressing an “Overview of Morikawa”,
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`and the sole content of this paragraph is a cross reference to itself. Ex. 1002
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`¶ 93 (“See Section XI.A.1 above”). Thus, paragraph 93 does not provide
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`IPR2019-00337
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`any reasoning for the proposed modification of Morikawa with Nakamura in
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`the manner called for in claim 11, i.e., replacing only some of Morikawa’s
`
`spacers with Nakamura’s concavities.
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`Furthermore, as noted in our Institution Decision, paragraph 93 does
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`not address the spacer limitation of claim 11 or the asserted ground of
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`unpatentability of claim 11 over Morikawa, Takahashi, and Nakamura.
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`Institution Dec. 39, n.10. Paragraph 93 appears in the portion of the
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`Pokharna Declaration addressing the challenge to claim 12 under the third
`
`asserted ground. Paragraph 124 of the Pokharna Declaration addresses the
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`spacer limitation of claim 11, but the testimony in this paragraph does not
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`match the assertion set forth in the Petition. See Ex. 1002 ¶ 124.
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`Likewise, pages 32‒33 of Petitioner’s Reply repeat the same error by
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`simply referring back to the explanation on pages 88‒89 of the Petition for
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`the reasoning for the proposed modification:
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`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 88-89.)
`Accordingly, it is obvious to use Nakamura’s known depressions
`with Morikawa’s known columns under KSR.
`
`Pet. Reply 32.
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`Further, although Petitioner presented its argument about Nakamura’s
`
`criticism of Morikawa’s heat pipe in its Reply, Petitioner failed to provide
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`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
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`“Nakamura describes some of its advantages over Morikawa’s ‘metal pipe
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`6’ only” and that “Nakamura is not describing any disadvantages at all
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`associated with Morikawa’s ‘conventional spacer’ by ‘welding and fixing a
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`10
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`IPR2019-00337
`Patent 7,066,240 B2
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`metal column to upper and lower inner surfaces of the panel.” Pet. Reply 33
`
`(citing Nakamura at 4; Morikawa, 4:31‒33). Patent Owner, however,
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`provided expert testimony as to how a person having ordinary skill in the art
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`would have understood Nakamura’s criticism of Morikawa’s spacers.
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`PO Resp. 58 (citing Ex. 2002 ¶ 160). We credited this testimony in our
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`Final Decision. Final Dec. 67 (citing PO Resp. 58); id. at 68 (agreeing with
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`Patent Owner’s argument).
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`Petitioner attacks Patent Owner’s expert’s testimony, arguing for the
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`first time in the Request for Rehearing that “Patentee’s own expert testified
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`that ‘too many depressions will begin to negatively affect the structural
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`integrity of the plates and adversely restrict the vapor flow.’” Request 5‒6
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`(citing PO Resp. 9; Ex. 2002 ¶ 58). Petitioner did not, however, raise this
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`Patent Owner “admission” in its Petitioner Reply and did not independently
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`present this argument about too many depressions in either its Petition or its
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`Reply. See Pet. Reply 32‒34 (responding to Patent Owner’s arguments
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`regarding the claim 11 challenge). We cannot have misapprehended or
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`overlooked an argument that Petitioner did not present.
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`Petitioner further contends that “the Board’s obviousness findings are
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`not in accordance with the law.” Request 2; see also id. at 6 (arguing that
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`“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
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`the proposed replacement of Morikawa’s “through path” spacers with
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`Nakamura’s concavities, but Petitioner does not discuss why Morikawa’s
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`remaining spacers would also not be similarly replaced. In other words, as
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`explained above, Petitioner provided no reason in its Petition to explain why
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`one would have modified Morikawa by substituting only some spacers with
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`11
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`IPR2019-00337
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`Nakamura’s concavities, when Nakamura teaches making all of its spacers
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`using abutting concavities. Pet. 88‒89 (citing Pokharna ¶ 93, which cross-
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`references itself); Final Dec. 57 (describing Nakamura).
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`As explained in the Final Decision, upon review and consideration of
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`the arguments and evidence submitted by the parties, Petitioner failed to
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`show that the combined teachings of Morikawa and Nakamura would have
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`led one having ordinary skill in the art to the combination of conventional
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`spacers, as discussed in Morikawa, and depressions formed by Nakamura’s
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`concavities, as recited in claim 11. Petitioner’s arguments in the Request for
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`Rehearing do not persuade us that we erred in our application of the facts as
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`presented by Petitioner to the standard for determining obviousness, as set
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`forth in KSR, in finding that Petitioner failed to show unpatentability of
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`claim 11.
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`C. Conclusion
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`For the foregoing reasons, Petitioner has not shown that we
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`misapprehended or overlooked Petitioner’s arguments or evidence in
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`determining that Petitioner did not show by a preponderance of evidence that
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`challenged claim 11 of the ’240 patent is unpatentable.
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`IV. ORDER
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`In consideration of the foregoing, it is hereby
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`ORDERED that Petitioner’s Request for Rehearing is denied.
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`IPR2019-00337
`Patent 7,066,240 B2
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`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
`
`
`13
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