Paper No. 49
`Trials@uspto.gov
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`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ASETEK DANMARK A/S,
`Petitioner,
`
`v.
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`COOLIT SYSTEMS, INC.,
`Patent Owner.
`____________
`
`IPR2020-00825
`Patent 10,274,266 B2
`____________
`
`Record of Oral Hearing
`Held Virtually: Tuesday, June 22, 2021
`____________
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`
`
`Before FRANCES L. IPPOLITO, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
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`Trials@uspto.gov
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`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ASETEK DANMARK A/S,
`Petitioner,
`
`v.
`
`COOLIT SYSTEMS, INC.,
`Patent Owner.
`____________
`
`IPR2020-00825
`Patent 10,274,266 B2
`____________
`
`Record of Oral Hearing
`Held Virtually: Tuesday, June 22, 2021
`____________
`
`
`
`Before FRANCES L. IPPOLITO, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`
`
`
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`IPR2020-00825
`Patent 10,274,266 B2
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`ERIC RACITI
`ARPITA BHATTACHARYYA
`FINNEGAN, HENDERSON, FARABOW, GARRETT &
`DUNNER, LLP
`3300 Hillview Avenue
`2nd floor
`Palo Alto, CA 94304-1203
`(650) 849-6600
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`REUBEN CHEN
`DUSTIN KNIGHT, ESQUIRE
`COOLEY, LLP
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`(650) 843-5480
`
`
`
`
`
`
`
`
`
`
`LLOYD L. POLLARD II
`GANZ POLLARD LLC
`P.O. Box 2200
`163 SE 2nd Avenue
`Hillsboro, Oregon 97123
`(503) 844-9009
`
`The above-entitled matter came on for hearing on Tuesday, June 22,
`2021, commencing at 12:40 p.m. EST, by video/by telephone.
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`P R O C E E D I N G S
` JUDGE MOORE: Welcome. I’m judge Scott Moore. I'm joined
`by my
`colleagues, Judges Frances Ippolito and Brent Dougal, and
`we're here for the oral hearing in IPR 2020-00825, Asetek
`Denmark A.S. v. CoolIT Systems, Incorporated v. U.S. Patent
`10,274,266 B2. Let's begin this hearing by taking
`appearances. First, who's here for petitioner?
` MS. BHATTACHARYYA: Arpita Bhattacharyya for
`Petitioner Asetek Denmark and I am joined by lead counsel,
`Eric Raciti.
` MR. RACITI: Good morning, Your Honors.
` JUDGE MOORE: And who is here for Patent Owner?
` MR. CHEN: Good morning, Your Honor. Reuben Chen
`from Cooley LLP on behalf of Patent Owner, CoolIT Systems,
`Inc., and with me is lead counsel Lloyd Pollard, and also my
`colleague Dustin Knight.
` JUDGE MOORE: Welcome to you as well.
` So as you know, this is a video hearing.
`Hopefully, we won't have any technical difficulties. This
`morning's hearing went smoothly but just remind everyone that
`if you do have any difficulties please let us know
`immediately so that we can figure out a workaround.
` Please recall that we have copies of your
`demonstratives but do be careful to identify the
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`demonstratives you're speaking about by page number because
`it makes it easier for us to follow along.
` Please also be aware that a member of the public
`has requested to listen in to today's hearing. I understand
`that there's a motion for a protective order. It appeared to
`the panel that this motion involved a relatively discrete
`issue involving certain provisions of an agreement so it
`seems like it would be relatively easy to work around during
`the hearing but I just wanted to remind the parties that the
`hearing is public, a member of the public is likely listening
`in today, and that the transcript also will be public so
`please be careful when -- if the parties choose to argue the
`issues relating to that under seal exhibit. Please be
`careful about what you say during the hearing.
` Each party has been granted a total of 45 minutes
`of argument time during this hearing. I know that the
`hearing order said 30 minutes per side but we had a
`discussion before the beginning of this hearing with counsel
`off the record and the parties have agreed to 45 minutes per
`side. So we'll begin with Petitioner which will argue its
`case-in-chief. Petitioner may reserve time for rebuttal if
`it wishes to do so. We'll then turn to Patent Owner who will
`present its arguments regarding the patentability of the
`challenged claims and Patent Owner may also argue its motion
`to exclude if it wishes to do so. We will then go back to
`Petitioner which will be able to use any of its rebuttal time
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`to rebut Patent Owner's responsive arguments or to respond to
`arguments on the motion to exclude. And then if Patent Owner
`has elected to reserve any sur-rebuttal time we will go back
`to Patent Owner.
` Judge Ippolito will be watching the clock and will
`try to give you a warning when you're running out of time but
`please recall that each party is responsible for keeping its
`own time. Also, just a reminder, please don't make
`objections while the other party is speaking. If you have
`any objections please raise them afterwards during your own
`argument time. Does either party have any questions about
`these instructions starting with petitioner?
` MS. BHATTACHARYYA: Nothing from Petitioner, Your
`Honor.
` JUDGE MOORE: Patent Owner?
` MR. CHEN: Nothing from Patent Owner. Thank you,
`Your Honor.
` JUDGE MOORE: Okay. Who will be arguing on behalf
`of Petitioner?
` MS. BHATTACHARYYA: I will be, Your Honor, Arpita
`Bhattacharyya.
` JUDGE MOORE: How much rebuttal time would you like
`to reserve?
` MS. BHATTACHARYYA: I would like to reserve five
`minutes for rebuttal.
` JUDGE MOORE: Thank you. You may begin your
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`arguments when you're ready.
` MS. BHATTACHARYYA: Thank you, Your Honor.
` Much like the ’567 Patent claims we discussed
`earlier today, independent claim 1 of the ’266 Patent
`discusses compliant surfaces that urge against the
`microchannel fins. The crux of the parties' dispute for
`grounds 1 through 4 in this proceeding is whether the claimed
`compliant surfaces were disclosed in Patent Owner's 2007
`provisional application. For these grounds 1 to 4 Patent
`Owner does not dispute that every limitation of the
`challenged claims 1, 2, 4, 5, and 9 are disclosing Bezama or
`Bezama in combination with Lyon or Chiang. They also do not
`contest motivation to combine. Patent Owner only argues that
`these references are not prior art because the claims are
`allegedly entitled to the priority date of the 2007
`provisional. And Petitioner disagrees because there is no
`written description support for the claimed compliant
`surfaces in the 2007 provisional so there can be no priority
`back to the 2007 provisional.
` The compliant surfaces were disclosed for the first
`time in the 2011 provisional and these claimed compliant
`surfaces were the main reason for allowance of the ’266 Patent
`claims. Patent Owner argued during prosecution that prior
`art did not disclose compliant surfaces are urging against
`the fins, but Patent Owner now takes an inconsistent position
`that compliant seals and by extension compliant manifolds
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`were well known prior to 2007. Patent Owner's contradictory
`arguments in the IPR and during prosecution should not be
`given much weight. And regardless, entitlement to a filing
`date extends only to subject matter that is disclosed, not to
`subject matter that is obvious.
` Turning to Petitioner's slide 7, as the case law in
`this slide shows, the touchstone for written description is
`disclosure. The Federal Circuit held in PowerOasis that the
`written description must actually or inherently disclose the
`claim element. Ariad specifically says that the four corners
`of the specification must show that the inventor had, not
`could have had, but had possession of the claim subject
`matter and there can be no dispute about that, yet Patent
`Owner argues incorrectly in the sur-reply that PowerOasis is
`no longer good law and that Ariad changed the law to simply
`require an expert to testify that if the plate (240) in the
`2007 provisional could be compliant it shows the inventor was
`in possession of the compliant surfaces.
` This could have or could be standard that Patent
`Owner advocates is incorrect. Ariad does not support that
`nor does any other case law. Could have or could be is
`simply not good enough to meet the written description
`requirement. And PowerOasis is still good law. Since Ariad
`many District Courts, the Federal Circuit, and the PTAB has
`cited PowerOasis with a requirement that actual or inherent
`disclosure is required for written description support. The
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`Federal Circuit's 2010 Research Corporation v. Microsoft case
`for instance, which issued after Ariad, cited PowerOasis for
`the proposition that actual or inherent disclosure is
`required.
` Patent Owner further seems to argue in the sur-reply
`that the Federal Circuit's 2018 Hologic v. Smith & Nephew
`decision supports their view that no actual or inherent
`disclosure is required for written description. It's all
`about the testimony of an expert. Patent Owner is again
`incorrect because in Hologic both the Board and the Federal
`Circuit found actual disclosure. In fact, actual disclosure
`was not even disputed in Hologic. The dispute was whether
`express disclosure, spelling out the claim limitation, was
`required. So Hologic does not change PowerOasis. In fact, a
`different panel of the PTAB in IPR 2019-00896, Paragon 28 v.
`Wright Medical, has found that Hologic is an actual
`disclosure case and cited PowerOasis for the point that a
`showing of possession requires actual or inherent disclosure.
` And as in all written description cases, Hologic is
`limited to the facts in that case. Their disputed written
`description issue was whether a parent application disclosed
`possession of a light guide permanently affixed in the
`endoscope channel and the federal circuit went to the
`written -- the disclosure in the parent application, both
`text and figures, to find written description support. And
`in addition, the prior art listed on the face of the patent
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`described permanently affixed light guides.
` But that is not the case here. As I mentioned
`previously, Patent Owner specifically told the Patent Office
`that the prior art did not disclose compliant surfaces urging
`against the fins. Moreover, in the Hologic case the patentee
`Smith & Nephew's expert testified that there were only two
`types of endoscopic systems available for surgery: a
`removable system and a unitary system with permanently
`affixed light guides. And in Hologic the expert further
`testified that the two types of devices were readily
`distinguishing by looking at the pictures of the devices and
`that by looking at the drawings in the parent application a
`person skilled in the art would have recognized the
`permanently affixed light guides. And this point was not
`disputed in Hologic.
` And so while Federal Circuit did clarify that the
`parent application did not have to expressly spell out a
`light guide permanently affixed in the endoscope channel, the
`Federal Circuit never stated that actual disclosure is not
`required. Rather, the Board and the Federal Circuit did find
`actual disclosure in the Hologic case which showed beyond
`dispute that the inventor had possession of the later claimed
`subject matter. But that is not the case here. One skilled
`in the art cannot simply look at the figures in the 2007
`provisional and see for sure whether the material is rigid or
`compliant, hard or soft, et cetera. So Your Honors correctly
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`found in the institution decision that the 2007 provisional
`does not disclose that the plate (240) is made of compliant
`material.
` And so Your Honors, Patent Owner's slide 10 shows
`the evolution of language about the manifold from 2007 to the
`filing of the ’266 Patent. The 2007 provisional simply
`disclosed a plate positioned over the fins, nothing else. A
`compliant insert was disclosed for the first time in the 2011
`provisional and this 2011 provisional specifically contrasted
`the plate (240) with compliant insert (334) by describing
`that the compliant surfaces, unlike plate (240), can conform
`to variations in height among the fins and thereby can -- and
`thereby can reduce or eliminate the need for secondary
`machining operations to make the distal ends of the fins
`uniform and coplanar with the manifold plate.
` In the ’266 Patent the inventor explicitly described
`the plate as rigid and the ’266 Patent also expressly
`disclosed exemplary materials for insert (334) like silicone.
`Therefore the plate in the 2007 provisional and the later
`disclosed compliant insert (334) are not equivalent or
`comparable. The compliant insert (334) provides a specific
`advantage that is not provided by the plate (240) and this
`was spelled out very clearly in the 2011 provisional and then
`later in the ’266 Patent.
` Your Honors, nor is there an inherent disclosure
`for compliance surfaces in the 2007 provisional because the
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`plate is not necessarily or unavoidably compliant. As shown
`in Petitioner's slide 13, Patent Owner admitted that the
`plate can be made of a rigid or compliant material. So
`inherency simply cannot be found here. Patent Owner,
`however, puts a spin on it and takes some very unscientific
`positions which are shown in slide 14. In a nutshell, Patent
`Owner's position is that compliancy or rigidity lies in a
`continuum that any material that can bend or deform under
`applied stress is compliant. Under Patent Owner's
`interpretation even an aluminum or steel plate that bends is
`compliant. But Patent Owner has provided no objective
`evidence from textbooks or articles, et cetera, to support
`this argument that bendability is the same as compliancy. It
`is not. They are different concepts.
` Moreover, the claims say the manifold surfaces are
`compliant. The claim does not say that the manifold is
`bendable so Patent Owner's discussion of compliance or
`bendability of a structure is completely irrelevant because
`the claim requires compliancy of the surfaces. And moreover,
`Your Honor, the 2007 provisional does not show that the plate
`(240) is bendable. It only shows the bend -- that there are
`tabs (240) that are bendable, but the tabs and the plate are
`not necessarily or unavoidably made of the same material in a
`continuous monolithic fashion. So even if the tabs are
`bendable it does not necessarily or unavoidably mean the plate
`is bendable. So again, inherency cannot be found even if we
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`take the unscientific position that bendability same as
`compliancy. Even then, because the plate and the tabs do not
`have to be made of the same material, bendability of the tabs
`does not say anything about the material properties of the
`plate, that the plate is compliant.
` Now turning to Petitioner's slide 17. The ’266
`Patent describes that a compliant surface has to conform to
`and seal against adjacent surfaces, but Patent Owner has
`presented no evidence that plate (240) of the 2007 provisional
`is able to conform to or seal against adjacent surfaces. So
`even assuming plate (240) is bendable, even though with that
`assumption it does not mean that the surface of plate 240 is
`compliant and can conform to the tops of the microchannel fins
`to prevent fluid bypass.
` And more importantly, Your Honors, as I mentioned
`before, bendability is not same as compliancy. As shown in
`Petitioner's slide 18, petitioner has presented objective
`evidence from textbooks and articles that a compliant material
`by definition has a low modulus of elasticity and so only a
`minor stress is required to produce a considerable strain. So
`in other words, a compliant material like rubber or silicone
`is easy to deform or distort. A rigid material by definition
`has a high modulus of elasticity so they are harder to bend or
`deform.
` But Patent Owner has provided no evidence that
`plate 240 is formed of a material with low elastic modulus and
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`is easy to bend. Just because the tabs were bent during
`manufacturing does not mean that they were made of a material
`with low elastic modulus that bends easily. As Petitioner's
`expert has testified, even a rigid plate will bend when
`sufficient force is applied. So the bent tabs do not imply
`that the plate itself is compliant.
` Now in sum, there can be no dispute that there is
`no actual or inherent disclosure of compliant surfaces in the
`2007 provisional and that should be the end of the written
`description inquiry but of course Patent Owner does not stop
`there. They argue in the sur-reply that the 2007 provisional
`explicitly discloses that the inventor had possession of a
`compliant plate in 2007. Patent Owner, however, presents no
`case law explaining what is meant by or required by implicit
`disclosure and how it is different from actual or inherent
`disclosure. They merely cite the MPEP which in term does not
`cite any cases or explain what is meant by implicit within
`description.
` And contrary to Patent Owner's assertion in its
`slides, neither Ariad nor Hologic says anything about implicit
`disclosure. And surely the plate could be compliant cannot be
`the test for implicit disclosure. The plate or the device
`disclosed in the 2007 provisional can have many
`characteristics. Patent Owner cannot come later and say
`because the device or the plate could be, could have a certain
`characteristic that there is disclosure for it. The
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`requirement for disclosure is to signal for sure that the
`inventor had possession of the claim subject matter. Just
`saying it could have a certain characteristic doesn't get you
`there.
` And moreover, Patent Owner's arguments fail on the
`merits about this whole implicit disclosure. As shown on
`Petitioner's slide 21, Patent Owner identifies three
`disclosures in the 2007 provisional which Patent Owner refers
`to as blaze marks showing possession of compliant surfaces,
`but each of the disclosures fail to show possession. First,
`as discussed in slide 22, there is no dispute that the tabs
`242 are permanently bent and because compliant materials like
`silicone have a low modulus of elasticity they undergo elastic
`that is non-permanent deformation so when the force is removed
`the material returns to its original shape. Rigid materials
`like aluminum and steel undergo permanent deformation.
`Therefore, the permanently bent tabs (242) would have
`indicated to one skilled in the art that the tabs were made
`for rigid material rather than a compliant material. And
`Patent Owner has not addressed this point at all nor can they.
` Next, as shown in slide 23, Patent Owner argues
`that the function of the plate is to close up the
`microchannels so the plate has to be compliant. They suggest
`incorrectly that within a single device or single embodiment
`the height of the fins may vary from a few microns to a few
`millimeters. That is simply incorrect and, frankly,
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`nonsensical. The 2007 provisional does not say anything about
`varying fin heights within a single embodiment. They just
`simply provide a range of fin heights and microchannel widths
`that can -- for different embodiments.
` And moreover, the 2011 provisional, the 2007, '11
`provisional, and the ’266 Patent both explain that if the plate
`is rigid and there is variation in fin height the top of the
`fins can be machined so that the plate can fit evenly over the
`fins and there are no gaps to which the liquid can bypass. So
`even a rigid plate can close off the microchannels. A
`compliant material removes that extra machining step but the
`compliant material is not necessarily required to close up the
`microchannels. Even a rigid plate can close off the
`microchannels. So this function of the plate that Patent
`Owner relies on would not lead a person skilled in the art to
`think that the material necessarily has to be compliant.
` Likewise, as discussed in slide 24, the seal (230)
`could be compliant but it does not have to be. As Your Honors
`correctly found in the institution decision, even a non-
`compliant seal could be fused to the underside of the housing
`to prevent fluid bypass. In fact, the seal and the plate does
`not have to be made of the same material at all. So even if
`the seal were compliant, it does not mean the plate is
`compliant. Your Honors, the 2007 provisional specifically
`says that the seal is installed as a portion of the plate or
`separate. So it is installed. There is no disclosure in the
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`2007 provisional that a seal is integral or continuous with
`the plate or anything. So there's no requirement that the
`seal and the plate be made of the same material but -- and
`moreover, the seal doesn't have to be compliant. Even a non-
`compliant seal could be fused to the underside of the housing.
` Moreover, Your Honor, Patent Owner is thoroughly
`incorrect about the blaze mark case law. Blaze marks are
`required to point out -- to pinpoint what the invention is
`among the whole gamut of disclosure in an original
`application. In the Seminole Perdue Pharma case the Federal
`Circuit explained that one cannot disclose a forest in the
`original application and then later pick a tree out of the
`forest and say here is my invention. Blaze marks must direct
`one skilled in the art to that tree that is later claimed as
`the invention. And such blaze marks are required even for
`characteristics that are expressly disclosed in an
`application. So where a characteristic was not even discussed
`in passing, as is the case here, there can be no written
`description support for it.
` And here, Your Honors, absolutely nothing in the
`2007 provisional, not the bent tabs, not the seal (230) shows
`that the inventor considered compliant manifold surfaces to be
`an aspect of his invention in 2007. This material was
`introduced later in the 2011 provisional. And Your Honors,
`I'm just going to pause here to see if Your Honors have any
`questions about this written description issue and if not I'll
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`move to grounds 5 and 6.
` JUDGE MOORE: None here.
` MS. BHATTACHARYYA: So I will spend the rest of my
`time discussing grounds 5 and 6 then.
` JUDGE IPPOLITO: You have about 18 minutes left.
` MS. BHATTACHARYYA: Thank you, Your Honor. So with
`respect to grounds 5 and 6 Patent Owner contends that Kang and
`Anderson do not disclose a seal on the plate. That is not
`correct. Both Kang and Anderson have seals that connect and
`press their manifold plates to the fins so that there is no
`fluid bypass. The Kang and Anderson devices would not even
`operate without seals. And as shown in Petitioner's slide 28,
`Kang's plate (40) is press fitted into a shoulder (39) thereby
`sealing the inlet section (31) from the outlet section. So
`the portion of the plate that press fits into the shoulder,
`that functions as a seal by preventing fluid bypass. And even
`shoulder 39 itself is also a seal. It's a component that
`fills a gap and it prevents fluid bypass from the inlet
`section (31) to the outlet section (33). And whether that
`shoulder (39) is provided as an extension of the housing or it
`is provided on the plate itself doesn't make any difference.
`It's a design choice. The whole purpose of a seal is to
`prevent fluid bypass and whether the seal is on the plate or
`the housing is not an innovative point and there is no dispute
`about that.
` Similarly, Your Honors, Anderson shows seals on the
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`plate and I'll turn to Petitioner's slide 36. Slide 36 shows
`that Anderson's manifold plate has raised structures that
`press fit into the microchannel plate to provide mechanical
`contact between the fins and the manifold plate and thus
`prevent fluid short circuiting. And this -- the press fitting
`of the raised structures on the manifold plate with the
`microchannel plate enhances the mechanical contact that is
`also provided by a gasket that is between the fins and the
`plate. So there are two forms of seal in Anderson. And
`Patent Owner has not disputed or contended why the mechanical
`structures on Anderson's manifold plate, the raised structure
`that press fits on the microchannel plate, is not a seal. It
`is a seal and the purpose is to provide mechanical contact
`between the manifold plate and the fins.
` Now turning back to slide 29, I want to address the
`limitation that the bifurcated sub flows are received by the
`first and second outlet regions adjacent to microchannel ends.
`Your Honors had said in the institution decision that you
`wanted that argument to be more developed so I want to spend
`some time here.
` First of all, Your Honors, claim 30 requires the
`first and second outlet regions to be adjacent to microchannel
`ends, not at the microchannel ends. And Patent Owner does not
`dispute that both Kang and Anderson have outlet regions
`adjacent to microchannel ends. They use the word at the ends
`in their arguments but the claim does not require the outlet
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`regions to be at the ends and the claim only requires the
`outlet regions to be adjacent to the ends and both Kang and
`Anderson has that.
` Also, there can be no dispute that in both Kang and
`Anderson fluid exiting the outlet regions recombine in an
`outlet passage before exiting the device. In Kang, this fluid
`outlet passage is the outlet section (33). And there is also
`no dispute between the parties that a portion of the liquid
`entering a given inlet will continue to flow down the
`microchannels, past the other inlets and outlets, and exit
`adjacent the microchannel ends. Petitioner's expert has
`testified this is because of mixing of the fluid in the
`microchannels and patent owner does not dispute this
`reasoning. Patent Owner, however, argues that the entirety of
`each subflow must exit adjacent the microchannel ends but
`there is no such requirement in claim 13 and it is undisputed
`that some liquid from each sub flow will exit adjacent the
`microchannel ends.
` JUDGE MOORE: But counselor, the claim does require
`the flow bifurcate into two subflows. So we have to divide a
`flow into two subflows. And then it requires that one of
`those subflows exit at the first outlet region and the
`second -- and the other of the subflows exit at the second
`outlet region. It doesn’t say a portion of the subflows has
`to exit. It doesn't say substantially all. It says there's
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`two subflows. The subflow exits at one and the other subflow exits at
`the second region. So how does that not require
`the entire subflow --
` MS. BHATTACHARYYA: But, Your Honor, the word --
` JUDGE MOORE: -- entire first subflow exit one
`region and the entire second one exit at the other region?
` MS. BHATTACHARYYA: Your Honor, Petitioner is
`reading the claim to require some portion of the subflows,
`but if Your Honors interpret the subflow, that limitation to
`require the entirety of the subflows to exit at the
`microchannel ends, that's why Petitioner has presented an
`alternative argument which would still render claim 13
`obvious. And this alternative --
` JUDGE MOORE: Okay. I understand.
` MS. BHATTACHARYYA: And this alternative argument
`is shown on slide 30 of Kang and slide 38 for Anderson. It is
`undisputed that Patent Owner's claimed invention is a
`simplification of Kang and Anderson where instead of having
`multiple inlets and outlets the claim system has a single
`inlet and two outlets. And in this simplified version of Kang
`and Anderson where there is a single split flow, there is a
`single inlet and two outlets, that is in our petition, the
`entirety of the two sub flows will exit at the outlet regions
`that are at adjacent ends of the microchannels.
` And as discussed on slide 31, such single split
`flows having one inlet and two outlets were well known.
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`Patent Owner did not invent single split flow. Single split
`flows were known back in the 1990s, just having a single inlet
`and two outlets at the end. That was done. And that is what
`Patent Owner's claim requires to have a single inlet and two
`outlets with a single outflow which is nothing but a
`simplification of Kang and Anderson that has the multiple
`split flows. That is multiple inlets and outlets.
` Your Honor, it is well established that
`simplification of an existing prior art device is not
`patentable. As multiple CCPA, Federal Circuit, and PTAB cases
`have found, elimination of a prior art feature along with
`omission of that feature's function does not give rise to
`patentability if that function is not desired. And this is
`discussed in slide 32. Here the function of Kang and
`Anderson's multiple split flows is to reduce pressure drop and
`flow resistance to the microchannels. What the multiple
`inlets and outlets do is that they reduce the flow into the
`microchannels so liquid doesn't have to go all the way to the
`outlets at the end. They exit near -- they flow to very short
`distances and this reduces the pressure drop. And so
`elimination of the multiple split flows eliminates that
`function and related performance advantages.
` But nevertheless, one would have been motivated to
`do so to reduce manufacturing costs and complexities, but that
`is not an innovation, simplification of a prior art device
`when the functions of the prior art device has been eliminated
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`does not give rise to an invention. And as Petitioner's
`expert testified in his initial declaration at paragraphs 164
`through 166, 194 to 196, and 216, one skilled in the art in
`August 2007 would have recognized that eliminating Kang and
`Anderson's multiple split flows would still have been
`reasonable for microchannels of smaller length and/or if
`pressure drops could have been minimized using microchannels
`of larger hydraulic diameters and/or if pressure drop could be
`compensated using a higher capacity pump.
` Whether to use a single split flow as claimed or
`the multiple split flows as shown in Kang and Anderson is a
`matter of routine engineering calculations. It's not a matter
`of innovation. And all the Patent Owner has done and claimed
`is simplification of Kang and Anderson to have one inlet and
`two outlets instead of multiple inlets and outlets. That is
`not patentable especially because Patent Owner has not
`identified any advantage of their single split flow design
`over the multiple split flows of Kang and Anderson. They have
`not compensated for the functional advantages of Kang and
`Anderson's design of having the multiple split flows through
`some other -- through some other claimed features. It's
`simply an inferior version of Kang and Anderson. And that
`point is not disputed.
` I just want to quickly address claims 14 and 15.
`There, Your Honor, the dispute is whether the extent of the
`outlet regions. Patent Owner argues that it's only the region
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`above the microchannels but they have taken inconsistent
`positions in their infringement contentions where they have
`considered even the areas outside the microchannel exits and
`ends as part of the outlet regions and even the inventor
`has -- during his deposition has testified that the outlet
`regions are more than the regions just above the microchannel.
`It includes the regions that the liquid has to flow to reach
`the fluid outlet passage.
` So with that interpretation what the petition shows
`does meet the requirement of claims 14 and 15 because the
`outlet region includes the area the liquid has to flow from
`the point of exit to reach the outlet passage. And with that
`interpretation claims 14 and 15 are met by both Kang and
`Anderson. And with that, Your Honor, I'm happy to answer any
`questions otherwise I'll reserve the rest of my time for
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