Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: October 2, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ASETEK DANMARK A/S,
`Petitioner,
`
`v.
`
`COOLIT SYSTEMS, INC.,
`Patent Owner.
`
`IPR2020-00747
`Patent 9,057,567 B2
`
`
`
`
`
`
`
`
`
`Before FRANCES L. IPPOLITO, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 10
`Entered: October 2, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ASETEK DANMARK A/S,
`Petitioner,
`
`v.
`
`COOLIT SYSTEMS, INC.,
`Patent Owner.
`
`IPR2020-00747
`Patent 9,057,567 B2
`
`
`
`
`
`
`
`
`
`Before FRANCES L. IPPOLITO, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2020-00747
`Patent 9,057,567 B2
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`I.
`
`INTRODUCTION
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`Asetek Danmark A/S (“Petitioner”) filed a Petition requesting an inter
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`partes review of claims 1, 2, 3, 5, 7, 25, and 28 of U.S. Patent No. 9,057,567
`
`B2 (“the ’567 Patent”). Paper 2 (“Pet.”). CoolIT Systems, Inc. (“Patent
`
`Owner”) filed a Preliminary Response. Paper 5 (“Prelim. Resp.”). Pursuant
`
`to our authorization, Petitioner filed a Reply to Patent Owner’s Preliminary
`
`Response (Paper 6 (“Pet. Reply”)), and Patent Owner filed a Sur-Reply in
`
`Support of Patent Owner’s Preliminary Response (Paper 8 (“PO Sur-
`
`Reply”)).
`
`We have authority under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a) to
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`determine whether to institute review. We may institute an inter partes
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`review when “the information presented in the petition . . . shows that there
`
`is a reasonable likelihood that the petitioner would prevail with respect to at
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`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`
`Institution is discretionary. See 35 U.S.C. § 314(a); 37 C.F.R. §
`
`42.108(a). But if we institute an inter partes review, the trial must
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`encompass all claims and grounds identified in the Petition. See SAS v.
`
`Iancu, 138 S. Ct. 1348, 1359–60 (2018); AC Techs. S.A. v. Amazon.com,
`
`Inc., 912 F.3d 1358, 1364 (Fed. Cir. 2019) (“[I]f the Board institutes an IPR,
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`it must . . . address all grounds of unpatentability raised by the petitioner.”)
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`For the reasons expressed below, we determine that the Petition shows
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`a reasonable likelihood that Petitioner will prevail with respect to at least
`
`one of the challenged claims, and we are not persuaded that we should
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`exercise our discretion to deny institution. We, therefore, institute an inter
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`partes review of all challenged claims of the ’567 Patent on all grounds
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`alleged in the Petition.
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`2
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`IPR2020-00747
`Patent 9,057,567 B2
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`We base our findings and conclusions on the preliminary evidentiary
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`record before us at this stage of the proceeding. This is not a final written
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`decision, and the Board has not made a final determination as to the
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`patentability of any challenged claim or any underlying factual or legal
`
`issue. We will base our final written decision on the record as fully
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`developed during trial.
`
`A.
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`Real Parties in Interest
`
`Petitioner identifies the real parties in interest as Asetek Danmark
`
`A/S, Asetek USA, Inc., Asetek A/S, and Asetek Holdings, Inc. Pet. 95.
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`B.
`
`Related Matters
`
`Patent Owner sued Petitioner for infringement of the ’567 Patent in
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`Asetek Danmark A/S v. CoolIT Systems, Inc., No. 3:19-cv-00410-EMC
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`(N.D. Cal) (the “district court case”). Pet. 95. Petitioner points out that the
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`’567 Patent is related to issued patents U.S. 8,746,330 B2 and U.S.
`
`9,453,691 B2. Id.
`
`The ’576 Patent, filed February 18, 2014, as U.S. Application
`
`14/183,443, is a continuation of U.S. Application 14/166,657, which is a
`
`continuation of U.S. Application 13/401,618, which is a continuation-in part
`
`of U.S. Application 12/189,476, now U.S. Patent No. 8,746,330 B2 (Ex.
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`1004 (“the ’330 Patent”)). Ex. 1001, codes (21), (22), (63). U.S.
`
`Application No. 12/189,476 is published as U.S. Publication No.
`
`2009/0071625 A1. Ex. 1011 (“Lyon”), codes (21), (43). The ’567 Patent
`
`claims priority to U.S. Provisional Application No. 60/954,987 (Ex. 1005
`
`(“the 2007 Provisional”)) and U.S. Provisional Application No. 61/512,379
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`(Ex. 1006 (“the 2011 Provisional”)). Ex. 1001, code (60); see also Pet. 20–
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`21.
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`3
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`IPR2020-00747
`Patent 9,057,567 B2
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`Patent Owner points out that the ’330 Patent has “[has] survived [an]
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`inter partes challenge” in IPR2015-01276. Prelim. Resp. 6, n.3.
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`On April 10, 2020, Petitioner filed a separate petition requesting inter
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`partes review of claims 1, 2, 4, 5, 9, and 13–15 of U.S. Patent No.
`
`10,274,266 B2 (“the ’266 Patent”). See IPR2020-00825 (“the ’825 IPR”),
`
`Papers 2, 4. The ’266 Patent is a continuation of U.S. Patent No. 9,909,820
`
`B2, which is a continuation of U.S. Patent No. 9,453,691 B2, which is a
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`continuation-in-part of the ’330 Patent. ’825 IPR, Paper 2, 16.
`
`C.
`
`The ’567 Patent
`
`The ’567 Patent is directed to a fluid heat exchange system for
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`accepting and dissipating thermal energy to cool electronic and other
`
`devices. Ex. 1001, 1:17–25.
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`Figure 1, reproduced below, describes such a system for cooling
`
`devices.
`
`Figure 1 is a diagram of a fluid circuit configured to transfer heat using a
`
`circulating liquid. Ex. 1001, 5:22–23. In Figure 1, liquid circulates through
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`fluid circuit 10 by entering inlet 21, moving through heat exchanger 11, and
`
`
`
`4
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`IPR2020-00747
`Patent 9,057,567 B2
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`exiting outlet 22. Id. at 6:46–57, 7:31–54. Heat exchanger 11 has manifolds
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`13, 15 and passages 14. Id. at 7:42–47.
`
`Figure 2, reproduced below, depicts an exemplary embodiment of a
`
`heat exchanger.
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`
`
`Figure 2 shows a top plan view of internal components of heat exchanger
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`100. Ex. 1001, 5:24–26. Heat exchanger 100 includes housing 109, inlet
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`port 111, fluid inlet passage 104, inlet opening 114, microchannels 103, seal
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`130, fluid outlet opening 124, fluid outlet passage 106, and outlet port 128.
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`Id. at 7:56–62, 9:17–10:56, 12:1–4. Each microchannel 103 is defined by a
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`recessed groove extending transversely between adjacent fins. Id. at 2:40–
`
`43. Heat exchanging fluid F flows in the directions indicated by the arrows.
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`Id. at 11:30–33. Heat exchanging fluid F enters microchannels 103 and
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`splits into two sub flows in opposite directions to pass outwardly from inlet
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`opening 114 towards outlet fluid openings 124. Id. at 11:14–11:50.
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`5
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`IPR2020-00747
`Patent 9,057,567 B2
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`Figure 4, reproduced below, shows a sectional view along line II–II of
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`Figure 2. Ex. 1001, 5:28.1
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`
`
`Figure 4 depicts housing 109 including heat spreader plate 102, which
`
`operates as an outer limit of a heat sink, and also depicts heat exchanging
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`fluid F flowing in two opposite directions within microchannels 103. Ex.
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`1001, 7:56–62, 11:14–11:50. Seal 130 separates fluid inlet passage 104
`
`from fluid outlet passage 106 so that heat exchanging fluid F must pass
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`through microchannels 103 and past surface 102a of heat spreader 102. Id.
`
`at 12:1–4.
`
`Figure 6, reproduced below, shows a heat exchanger according to
`
`another embodiment.
`
`
`1 The ’567 Patent incorrectly refers to line II–II “of FIG. 3” rather than “of
`FIG. 2.” Ex. 1001, 5:28.
`
`
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`6
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`IPR2020-00747
`Patent 9,057,567 B2
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`Figure 6 is an exploded, perspective view of a heat exchanger. Ex. 1001,
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`5:29–30.2 The heat exchanger depicted in Figure 6 has inlet opening 214,
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`plate 240, seal 230, and heat spreader plate 202. Id. at 12:26–46. “Seal 230
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`may be installed as a portion of plate 240 or separately.” Id. at 12:22–23.
`
`Figure 7, reproduced below, shows a heat exchanger according to yet
`
`another embodiment.
`
`
`
`Figure 7 is an exploded view of an embodiment having an integrated pump
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`and heat exchanger assembly. Ex. 1001, 5:34–35. Pump 310 is integrated
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`with housing 330, insert 334, and heat exchanger 320. Id. at 12:35–12:50.
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`The ’567 Patent indicates that insert 334 can define an opening extending
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`through body 360. Id. at 14:46–47.3 Insert body 360 can be formed using
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`any suitably compliant material. Id. at 15:37–47. The ’567 Patent also
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`describes that the manifold body of the heat exchanger can have a compliant
`
`
`2 The ’567 Patent incorrectly identifies Figure 5 as an exploded, perspective
`view and Figure 6 as a top plan view without a top cap. Ex. 1001, 5:29–32.
`3 Body 360 is not identified in any of the figures of the ’567 Patent.
`
`7
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`IPR2020-00747
`Patent 9,057,567 B2
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`portion urging against at least a portion of distal edges of the heat exchanger.
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`Id. at 4:3–11.
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`Figure 14A, reproduced below, shows an embodiment of a heat sink.
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`
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`Figure 14A is a magnified view of a heat sink in which the shape of the fins
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`defines transverse groove 325. Ex. 1001, 5:55–56, 17:18–23, 17:49–51.
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`The aperture in manifold 334 can overlie transverse groove 325, resulting in
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`a flow transition that hydraulically couples each microchannel to at least one
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`other microchannel. Id. at 17:18–23. Transverse groove 325 can increase
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`the hydraulic diameter of the aperture in manifold 334, thereby reducing
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`pressure loss. Id. at 17:25–34.
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`D.
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`Illustrative Claim
`
`Petitioner challenges claims 1, 2, 3, 5, 7, 25, and 28. Of these, claims
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`1 and 28 are independent.
`
`Claim 1, reproduced below, is representative.
`
`1. A heat exchange system comprising:
`
`8
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`
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`IPR2020-00747
`Patent 9,057,567 B2
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`a heat sink having a plurality of juxtaposed fins defining a
`corresponding plurality of microchannels between
`adjacent fins, wherein the heat sink defines a recessed
`groove extending transversely relative to the fins;
`
`a housing member defining a first side and a second side, wherein
`the second side defines a recessed region;
`
`a compliant member matingly engaged with the second side of
`the housing member, wherein the compliant member at
`least partially defines an opening positioned over the
`groove, wherein the compliant member and the groove
`together define a portion of an inlet manifold configured
`to hydraulically couple
`in parallel each of
`the
`microchannels to at least one other of the microchannels,
`and wherein the housing member further defines a portion
`of an inlet plenum,
`
`wherein the inlet plenum and the inlet manifold are together
`configured to convey a fluid in a direction generally
`transverse to the fins and thereby to distribute the fluid
`among the plurality of microchannels and to convey the
`fluid into the plurality of microchannels in a direction
`generally parallel to the fins,
`
`wherein a portion of the compliant member occupies a portion of
`the recessed region defined by the second side of the
`housing member and urges against a corresponding wall
`of the recessed region while leaving a portion of the
`recessed region defined by the second side of the housing
`member unoccupied to define first and second exhaust
`manifold regions positioned opposite to each other relative
`to the recessed groove and opening from end regions of
`the microchannels.
`
`Ex. 1001, 19:16–46.
`
`9
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`IPR2020-00747
`Patent 9,057,567 B2
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`E.
`
`Challenged Claims and Asserted Grounds
`
`Petitioner asserts the following grounds of unpatentability:
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`Claims Challenged 35 U.S.C. §4
`
`Reference(s)/Basis
`
`1, 2, 3, 5, 7, 25, 28
`
`102(b)
`
`Bezama5
`
`1, 2, 3, 5, 7, 25, 28
`
`103(a)
`
`Bezama and Lyon6
`
`Pet. 31–94. Petitioner also relies on the Declaration of Dr. Donald Tilton
`
`(Ex. 1003). Id.
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`II. ANALYSIS
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`A. Discretionary Denial of Institution under 35 U.S.C. § 314(a)
`
`As discussed above, Patent Owner filed a district court case on
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`January 23, 2019, accusing Petitioner of infringing the ’567 Patent and
`
`several other patents. See infra § I.B; Ex. 2001, 1. Patent Owner argues that
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`the Board should exercise its discretion and deny institution due to the
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`allegedly advanced state of the parallel district court case. See Prelim. Resp.
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`1–13.
`
`The Board decides whether to institute an inter partes review pursuant
`
`to a delegation of authority from the Director. See 37 C.F.R. § 42.4(a).
`
`
`4 The ’567 Patent issued from an application filed February 18, 2014, and
`claims priority to a provisional application filed August 9, 2007. See Ex.
`1001, codes (22), (60). Thus, the pre-AIA versions of 35 U.S.C. §§ 102 and
`103 apply in this case. Leahy–Smith America Invents Act, Pub. L. No. 112–
`29, §3(c), 125 Stat. 284, 293 (2011) (explaining that the pre-AIA version of
`the Patent Act generally applies to patents with effective filing dates before
`March 16, 2013).
`5 U.S. Pat. Appl. Pub. No. 2010/0012294 A1, published Jan. 21, 2010 (Ex.
`1010).
`6 U.S. Pat. Appl. Pub. No. 2009/0071625 A1, published Mar. 19, 2009 (Ex.
`1011).
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`10
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`IPR2020-00747
`Patent 9,057,567 B2
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`Even if a petition meets the applicable legal standards, the Board retains
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`discretion to deny institution of an inter partes review. See 35 U.S.C.
`
`§ 314(a) (stating “[t]he Director may not authorize an inter partes review to
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`be instituted unless the Director determines that the information presented in
`
`the petition . . . shows that there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition”) (emphasis added); 37 C.F.R. § 42.108(a) (stating “the Board may
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`authorize the review to proceed on all or some of the challenged claims and
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`on all or some of the grounds of unpatentability asserted for each claim”)
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`(emphasis added).
`
`The Board’s precedential decision in Apple Inc. v. Fintiv, Inc.,
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`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) sets forth six factors that
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`we consider when determining whether to use our discretion to deny
`
`institution due to the advanced state of parallel district court litigation:
`
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`
`3. investment in the parallel proceeding by the court and the
`parties;
`
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`Id. at 5–6. We now apply these six factors to the facts and circumstances
`
`present here.
`
`11
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`IPR2020-00747
`Patent 9,057,567 B2
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`Factor 1
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`The district court has not granted a stay or been asked to do so, and
`
`neither party cites evidence sufficient to persuade that the judge would either
`
`grant or deny a stay if one was requested in the district court case. See
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`Prelim. Resp. 4–8; Pet. Reply 1–2. In these circumstances, we will not
`
`speculate as to the likelihood of a stay. Accordingly, the first Fintiv factor is
`
`neutral.
`
`Factor 2
`
`Patent Owner argues that “the district court’s trial date will likely
`
`predate a final written decision by the Board in this proceeding,” that the
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`projected statutory deadline for a final written decision of this proceeding is
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`in October 2021, and that “a jury trial in district court will likely occur by
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`mid-2021 and almost certainly by September 2021. Prelim. Resp. 7–8.
`
`Petitioner argues that the district court has not set a trial date, “[t]here is no
`
`realistic possibility that a jury trial, involving nine patents, will convene just
`
`five months after the court’s claim construction order,” and there is every
`
`reason to believe there will be a longer interval in the current underlying
`
`action because “civil jury trials in NDCA were postponed through at least
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`September 30[,] 2020 due to COVID-19 (Ex. 1017), creating a jury trial
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`backlog.” Pet. Reply 3–4.
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`The district court has not set a trial date, and there is no persuasive
`
`evidence that a trial is imminent. In addition, it appears that fact discovery
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`and expert discovery remain open, and that no dispositive motions have been
`
`filed. See Pet. Reply 5. Accordingly, factor two weighs against invoking
`
`our discretion to deny institution.
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`12
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`IPR2020-00747
`Patent 9,057,567 B2
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`Factor 3
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`Patent Owner argues that “[i]n addition to their Joint Claim
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`Construction and Pre-Hearing Statement, the parties each filed three
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`additional briefs in the district court addressing claim construction issues in
`
`this case, i.e., opening, responsive, and reply briefs.” Prelim. Resp. 9.
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`Petitioner argues that “the parties and the district court have invested
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`relatively little in the litigation” because “there is much that remains to be
`
`done, including fact discovery, expert discovery, and all dispositive
`
`motions.” Pet. Reply. 5.
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`The district court issued a claim construction order on July 22, 2020.
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`Ex. 2018. But the briefs and the claim construction order addressed nine
`
`separate patents. See id. at 1. In addition, the district court was only asked
`
`to construe three terms in the ’567 Patent: “[inlet/exhaust] manifold,”
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`“opening positioned over the groove,” and “at least partially.” Id. at 25–26,
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`33, 39. And the court explicitly construed only one of these terms
`
`([inlet/exhaust] manifold), determining that the other two terms should be
`
`given their plain and ordinary meanings. See id. There is no evidence that
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`the parties have briefed the merits of Petitioner’s invalidity arguments, or
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`that the district court has substantively considered any of the unpatentability
`
`arguments set forth in the Petition. In addition, as Petitioner points out, fact
`
`and expert discovery are not yet complete, and dispositive motions have not
`
`yet been filed. See Pet. Reply 5.
`
`In these circumstances, we determine that factor three weighs slightly
`
`against invoking our discretion to deny institution of an inter partes review.
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`Factor 4
`
`Patent Owner argues that “Asetek’s Petition applies the same art to
`
`challenge the same claims in the same manner as Asetek presented to the
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`13
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`IPR2020-00747
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`district court” and thus there is substantial overlap between issues raised in
`
`the petition and in the parallel proceeding. Prelim. Resp. 11. Petitioner
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`responds by stipulating “to not pursue in the district court any §§ 102 or 103
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`invalidity ground based solely on prior art patents or printed publications
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`(excluding system art) that were raised or could have been reasonably raised
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`in this proceeding” thereby ensuring that “there is no overlap or concerns of
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`duplicative efforts between the district court case and this IPR proceeding.”
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`Pet. Reply 5. In the district court case, however, Petitioner asserts invalidity
`
`based on the combination of the Bezama reference and the “Koolance
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`device,” which appears to be system art. See Ex. 2022; Sur-Reply 4.
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`Because Petitioner’s stipulation excludes combinations that include
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`system art such as the Koolance device, Bezama will presumably remain
`
`part of the district court case even if we institute. Thus, Petitioner’s
`
`stipulation reduces concerns regarding overlapping issues, but it does not
`
`eliminate them. See Sand Revolution II, LLC v. Continental Intermodal
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`Group – Trucking LLC, IPR2019-01393, Paper 24, 11–12 (PTAB June 16,
`
`2020) (Informative) (a stipulation not to pursue overlapping patentability
`
`arguments in district court may mitigate concerns of potential overlap
`
`between arguments in parallel proceedings). Accordingly, we determine that
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`the fourth Fintiv factor weighs slightly against invoking our discretion to
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`deny institution.
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`Factor 5
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`Petitioner and the defendant in the parallel proceeding are the same
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`party. Prelim. Resp. 12. Accordingly, the fifth Fintiv factor weighs in favor
`
`of invoking our discretion to deny institution.
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`14
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`Patent 9,057,567 B2
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`Factor 6
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`
`
`For the reasons set forth below, we determine that Petitioner has
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`demonstrated a reasonable likelihood of prevailing as to one or more
`
`challenged claims of the ’567 Patent. On the preliminary record before us at
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`this stage of the proceeding, the merits of Petitioner’s argument appear to be
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`relatively strong. Accordingly, the final factor weighs against invoking our
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`discretion to deny institution.
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`Balancing of Factors
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`Because the analysis is fact-driven, no single factor is determinative
`
`of whether we exercise our discretion and deny institution under 35 U.S.C.
`
`§ 314(a) and 37 C.F.R. § 42.108(a). As discussed above, however, two
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`Fintiv factors weigh in favor of invoking our discretion to deny institution,
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`three factors weigh against doing so, and the final factor is neutral. On this
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`record, based on a holistic review of the Fintiv factors, we decline to invoke
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`our discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) to deny
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`institution of an inter partes review.
`
`B.
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`Petitioner’s Unpatentability Contentions
`
`1.
`
`Level of Ordinary Skill in the Art
`
`Petitioner asserts that one of ordinary skill in the art at the time of the
`
`invention of the ’567 Patent would have had the following education and
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`experience: (i) “completed college level course work in thermodynamics,
`
`fluid mechanics, and heat transfer,” and (ii) “two or more years of
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`experience in designing liquid cooling systems for computers, servers, or
`
`other electronic devices, or very similar technology, or one with a more
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`advanced degree in the above fields may have had less practical experience.”
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`Pet. 11.
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`15
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`Patent Owner does not challenge Petitioner’s formulation regarding
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`the level of ordinary skill in the art.
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`On this record, we adopt Petitioner’s formulation regarding the level
`
`of ordinary skill in the art. We also find on this record that Petitioner’s
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`formulation is consistent with the level of skill reflected by the cited prior art
`
`references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`2.
`
`Claim Construction
`
`In an inter partes review for a petition filed on or after November 13,
`
`2018, a claim “shall be construed using the same claim construction standard
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`that would be used to construe the claim in a civil action under 35 U.S.C.
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`282(b).” 37 C.F.R. § 42.100(b) (2018); see Changes to the Claim
`
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
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`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018). In
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`applying this claim construction standard, we are guided by the principle
`
`that the words of a claim “are generally given their ordinary and customary
`
`meaning,” as understood by a person of ordinary skill in the art in question
`
`at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–
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`13 (Fed. Cir. 2005) (en banc) (citation omitted). “In determining the
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`meaning of the disputed claim limitation, we look principally to the intrinsic
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`evidence of record, examining the claim language itself, the written
`
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
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`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`
`(citing Phillips, 415 F.3d at 1312–17). There is a “heavy presumption,”
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`however, that a claim term carries its ordinary and customary meaning. CCS
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`Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)
`
`(citation omitted).
`
`16
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`IPR2020-00747
`Patent 9,057,567 B2
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`Petitioner proposes construction for the following terms (Pet. 12–20):
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`“inlet manifold,”
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`“exhaust manifold,” and
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`“opening positioned over the groove.”
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`Patent Owner does not challenge Petitioner’s proposed constructions.
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`We determine that the issues presently in dispute may be resolved
`
`without construing any claim terms. Accordingly, we decline at this time to
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`adopt explicit constructions of any claim terms. See Vivid Techs., Inc. v.
`
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that
`
`are in controversy need to be construed, and then only to the extent
`
`necessary to resolve the controversy); Nidec Motor Corp. v. Zhongshan
`
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying
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`Vivid Techs. in the context of an inter partes review).
`
`3.
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`Overview of the Asserted Prior Art
`
`Petitioner bases its arguments on the Bezama and Lyon references,
`
`which were published in 2010 and 2009, respectively. See Ex. 1010, code
`
`(43), Ex. 1011, code (43). Though the face of the ’567 Patent contains a
`
`priority claim (via a continuation-in-part application) to the 2007 Provisional
`
`(Ex. 1001, code (60)), Petitioner contends that the 2007 Provisional did not
`
`disclose a transverse groove or compliant member of the types recited in
`
`independent claims 1 and 28. Pet. 23–27. According to Petitioner, the first
`
`disclosure of these limitations took place in the separate 2011 Provisional,
`
`and the July 27, 2011, filing date of the 2011 Provisional is thus the earliest-
`
`possible priority date for the challenged claims. Pet. 20–22, 25–27. Patent
`
`Owner does not presently dispute these contentions.
`
`17
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`IPR2020-00747
`Patent 9,057,567 B2
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`On this preliminary record, and in the absence of an argument to the
`
`contrary from Patent Owner at this stage of the proceeding, we determine for
`
`purposes of this decision that July 27, 2011, is the priority date of the
`
`challenged claims. See Pet, 20–27, Ex. 1003 ¶¶ 42–48. Accordingly, both
`
`Bezama and Lyon qualify as prior art.
`
`a)
`
`Bezama (Ex. 1010)
`
`Bezama is a reference entitled “Structure and Apparatus for Cooling
`
`Integrated Circuits Using Co[p]per Microchannels.” Ex. 1010, code (54).
`
`Figures 3A and 3B, reproduced below, describe such an apparatus.
`
`
`
`Figures 3A and 3B are perspective views of an assembly according to an
`
`exemplary embodiment. Ex. 1010 ¶ 13. Assembly 301 includes a
`
`cover/manifold portion 304 having inlet port 309, outlet port 310, and
`
`recesses 306. Id. ¶ 26. Assembly 301 also includes separator sheet 303 and
`
`fin portion 302. Id. ¶¶ 26, 28. Separator sheet 303 is preferably a thin metal
`
`sheet that has elongate openings 311, 312. Id. ¶¶ 28, 30. Fin portion 302
`
`has fins 102 positioned on top of base 101. Id. ¶¶ 24, 26. Fins 102 have
`
`inlet/outlet manifold regions “to allow fluid to be readily coupled into or out
`
`of the [micro]channels.” Id. ¶ 24.
`
`18
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`
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`IPR2020-00747
`Patent 9,057,567 B2
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`Figure 3G, reproduced below, shows a cross-section view of the
`
`assembly of Figures 3A and 3B. Ex. 1010 ¶ 17.
`
`Figure 3G depicts the components of Figures 3A and 3B in an assembled
`
`state, and shows cross-sectional views of this embodiment’s two inlet
`
`
`
`manifolds and two outlet manifolds. Id. ¶ 26.
`
`
`
`Figure 1 of Bezama is reproduced below.
`
`
`
`19
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`IPR2020-00747
`Patent 9,057,567 B2
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`Figure 1 is a schematic perspective view that depicts fins 102 and tapered
`
`regions 103. Ex. 1010 ¶ 24. The tapered regions 103 of fins 102 are located
`
`under the inlet and outlet manifolds. Id.
`
`b)
`
`Lyon (Ex. 1011)
`
`Lyon is a reference entitled “Fluid Heat Exchanger.” Ex. 1011, Title.
`
`Lyon is a publication of U.S. Application No. 12/189,476 which matured as
`
`the ’330 Patent, as discussed previously. Id. at code (60). As Lyon is
`
`related to the ’567 Patent, Lyon’s heat exchanger has similar components as
`
`that of the ’567 Patent.
`
`Figure 1, reproduced below, shows a heat exchanger according to an
`
`exemplary embodiment.
`
`Figure 1 shows a top plan view of internal components of heat exchanger
`
`100. Ex. 1011 ¶¶ 9, 15. Heat exchanger 100 includes housing 109, inlet
`
`port 111, fluid inlet passage 104, inlet opening 114, microchannels 103, seal
`
`130, fluid outlet opening 124, fluid outlet passage 106, and outlet port 128.
`
`
`
`20
`
`
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`IPR2020-00747
`Patent 9,057,567 B2
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`Id. ¶¶ 15, 17, 21, 28, 37. Each microchannel 103 is defined by a recessed
`
`groove extending transversely between adjacent fins. Id. ¶ 18. Heat
`
`exchanging fluid F flows in the directions indicated by the arrows. Id. ¶ 35.
`
`Heat exchanging fluid F enters microchannels 103 and splits into two sub
`
`flows in opposite directions to pass outwardly from the inlet opening 114
`
`toward outlet fluid opening 124. Id. ¶¶ 34–35.
`
`Figure 5, reproduced below, shows a heat exchanger according to
`
`another embodiment.
`
`
`
`Figure 5 shows an exploded, perspective view of a heat exchanger. Ex.
`
`1011 ¶ 13.7 The heat exchanger depicted in Figure 5 has inlet opening 214,
`
`plate 240, seal 230, and heat spreader plate 202. Id. ¶¶ 38, 40–41. “Seal
`
`230 may be installed as a portion of plate 240 or separately.” Id. ¶ 41.
`
`
`7 Lyon incorrectly identifies Figure 4 as an exploded, perspective view and
`Figure 5 as a top plan view without a top cap. Ex. 1011, ¶¶ 12–13.
`
`21
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`4.
`
`Anticipation
`
`a)
`
`Principles of Law
`
`Petitioner argues that claims 1, 2, 3, 5, 7, 25, and 28 are unpatentable
`
`under 35 U.S.C. § 102(b) as anticipated. Pet. 31. To anticipate a patent
`
`claim under 35 U.S.C. § 102, a single prior art reference must “describe
`
`every element of the claimed invention, either expressly or inherently,” to
`
`one of ordinary skill in the art. Advanced Display Sys., Inc. v. Kent State
`
`Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). “[A] reference can anticipate a
`
`claim even if it d[oes] not expressly spell out all the limitations arranged or
`
`combined as in the claim, if a person of skill in the art, reading the reference,
`
`would at once envisage the claimed arrangement or combination.”
`
`Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed.
`
`Cir. 2015) (internal quotations omitted).
`
`b)
`
`Alleged Anticipation of Claims 1, 2, 3, 5, 7, 25,
`and 28 over Bezama
`
`Petitioner contends that Bezama discloses all the limitations of
`
`claim 1. Pet. 31. In particular, Petitioner contends that Bezama “discloses a
`
`cooler 301 for cooling electronic devices,” and that the term “cooler” is
`
`synonymous with the “heat exchange system” recited in the preamble of
`
`claim 1. Pet. 34 (citing Ex. 1003 ¶ 64). Petitioner contends that Bezama’s
`
`fin portion 102 is a heat sink that includes a plurality of juxtaposed fins and
`
`corresponding microchannels of the types recited in claim 1, and that tapered
`
`regions 103 of fin portion 102 are recessed grooves extending transversely
`
`relative to the fins. Pet. 34–35 (citing Ex. 1003 ¶¶ 60, 67, 68). Petitioner
`
`contends that Bezama’s cover 304 is a housing member having a first side
`
`(the top of cover 304), and a second side that defines a recessed region (the
`
`bottom portion of cover 304). Pet. 35–36 (citing Ex. 1003 ¶ 70).
`
`22
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`Petitioner also contends that Bezama’s separator sheet 303 is a
`
`compliant member that is matingly engaged with the second side of the
`
`housing member, that partially defines an opening positioned over the
`
`groove, and that together with the groove defines an inlet manifold of the
`
`type recited in claim 1. Pet. 37–39 (citing Ex. 1003 ¶¶ 72–74). Petitioner
`
`contends that Bezama’s cover 304 defines inlet path 307, which constitutes
`
`an inlet plenum. Pet. 39–40 (citing Ex. 1003 ¶ 76).
`
`Petitioner further contends that Bezama’s inlet plenum and inlet
`
`manifold are configured to convey fluid in a direction generally transverse to
`
`fins 102, to distribute the fluid among Bezama’s microchannels, and to then
`
`convey the fluid in a direction generally parallel to the fins as required by
`
`claim 1. Pet. 30–41 (citing Ex. 1003 ¶¶ 76, 78–79).
`
`Petitioner additionally contends that Bezama’s compliant member
`
`(separator sheet 303) occupies a portion of the recessed region defined by
`
`the second side of cover 304, and “urges against” a corresponding wall of
`
`the recessed region while leaving a portion of the recessed region
`
`unoccupied to define first and second exhaust manifold regions positioned
`
`opposite to one another in the manner recited in claim 1. Pet. 41–43 (citing
`
`Ex. 1003 ¶¶ 80–82).
`
`Patent Owner does not presently dispute any of the above contentions
`
`regarding claim 1.
`
`Petitioner’s arguments (Pet. 31–43) and the supporting testimony of
`
`Dr. Tilton (Ex. 1003 ¶¶ 59–82) demonstrate in a manner that is sufficiently
`
`persuasive at this stage of the proceeding that Bezama discloses each
`
`limitation of claim 1. Accordingly, Petitioner has shown a reasonable
`
`likelihood that it will prevail on its argument that claim 1 is unpatentable
`
`under 35 U.S.C. § 102. We, therefore, institute an inter
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