Trials@uspto.gov
`571-272-7822
`
`Paper 50
`Entered: October 12, 2021
`
`
`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
`
`
`
`
`
`
`
`
`
`Before FRANCES L. IPPOLITO, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`MOORE, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Granting Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64
`
`
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`IPR2020-00825
`Patent 10,274,266 B2
`
`INTRODUCTION
`I.
`Asetek Danmark A/S (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 1, 2, 4, 5, 9, and 13–15 of U.S. Patent No.
`10,274,266 B2 (Ex. 1001, “the ’266 Patent”). Paper 2 (“Pet.”). CoolIT
`Systems, Inc. (“Patent Owner”) filed a preliminary response. Paper 6.
`Pursuant to our authorization, Petitioner filed a reply to Patent Owner’s
`preliminary response (Paper 7), and Patent Owner filed a sur-reply in
`support of its preliminary response (Paper 10). We instituted an inter partes
`review as to all claims and grounds set forth in the Petition. Paper 12
`(“Institution Decision”).
`After institution, Patent Owner filed a response to the Petition (Paper
`25, “Response” or “Resp.”), Petitioner filed a reply to the response (Paper
`28, “Reply”), and Patent Owner filed a sur-reply (Paper 34, “Sur-Reply”).
`In addition, Patent Owner filed a motion to exclude (Paper 35, “Motion to
`Exclude”), Petitioner filed an opposition to the motion to exclude (Paper 38),
`and Patent Owner filed a reply in support of the motion to exclude (Paper
`43). An oral hearing was held on June 22, 2021, and a transcript of the
`hearing is in the record. Paper 49 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
`follow, we determine that Petitioner has shown by a preponderance of the
`evidence that claims 1, 2, 4, 5, and 9 are unpatentable, but has not shown by
`a preponderance of the evidence that claims 13–15 are unpatentable. We
`also grant Patent Owner’s Motion to Exclude.
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`IPR2020-00825
`Patent 10,274,266 B2
`Related Matters
`A.
`Patent Owner sued Petitioner for infringement of the ’266 Patent in
`Asetek Danmark A/S v. CoolIT Systems, Inc., Case No. 3:19-cv-00410-EMC
`(N.D. Cal) (the “district court case”). Pet. 106. Petitioner points out that the
`’266 Patent is related to issued patents U.S. 9,909,820 B2, U.S. 9,453,691
`B2, and U.S. 8,746,330 B2. Id. at 106.
`The ’266 Patent, filed March 5, 2018, as U.S. Application 15/912,478,
`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 continuation-in-part of U.S. Patent
`No. 8,746,330 B2 (Ex. 1004, “the ’330 Patent”). Ex. 1001, codes (21), (22),
`(63). The ’330 Patent issued from U.S. Application No. 12/189,476, which
`was published as U.S. Publication No. 2009/0071625 A1. Id.; Ex. 1011
`(“Lyon”), codes (10), (21), (43).
`The ’266 Patent claims priority to U.S. Provisional Application No.
`61/512,379 (Ex. 1006, “the 2011 Provisional”) and U.S. Provisional
`Application No. 60/954,987 (Ex. 1005, “the 2007 Provisional”). Ex. 1001,
`code (60); see also Paper 6, 9.
`Patent Owner points out that the “[t]he Board confirmed patentability
`of all challenged claims of the ’330 patent . . . in a Final Written Decision
`following trial on the merits” in IPR2015-01276. Paper 6, 44.
`On March 26, 2020, Petitioner filed a separate petition requesting
`inter partes review of claims 1, 2, 3, 5, 7, 25 of U.S. Patent No. 9,057,567
`B2 (“the ’567 Patent”). See IPR2020-00747 (“the ’747 IPR”), Papers 2, 3.1
`The ’567 Patent is a continuation of U.S. Application No. 10/166,657, which
`
`1 Petitioner also originally challenged claim 28, but Patent Owner
`subsequently filed a statutory disclaimer of that claim, eliminating it from
`the proceeding. See ’747 IPR, Paper 42, 6.
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`IPR2020-00825
`Patent 10,274,266 B2
`is a continuation of U.S. Application No. 13/401,618, which is a
`continuation-in-part of the ’330 Patent. Id., Paper 2, 21. We issued a final
`written decision in the ’747 IPR determining that Petitioner had shown by a
`preponderance of the evidence that all challenged claims of the ’567 Patent
`were unpatentable. ’747 IPR, Paper 42 (Sept. 30, 2021).
`The ’266 Patent
`B.
`The ’266 Patent is generally directed to a fluid heat exchange system
`for accepting and dissipating thermal energy to cool electronic and other
`devices. Ex. 1001, 1:20–28.
`Figure 1, reproduced below, depicts such a system.
`
`
`Figure 1 is a diagram of a fluid circuit configured to transfer heat using a
`circulating liquid. Ex. 1001, 5:31–32. In Figure 1, liquid circulates through
`fluid circuit 10 by entering inlet 21, moving through heat exchanger 11, and
`exiting outlet 22. Id. at 6:56–67, 7:44–67. Heat exchanger 11 has manifolds
`13, 15 and passages 14. Id. at 7:55–60.
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`IPR2020-00825
`Patent 10,274,266 B2
`Figure 2, reproduced below, depicts an exemplary embodiment of a
`heat exchanger.
`
`
`Figure 2 is a top plan view of internal components of fluid heat exchanger
`100. Ex. 1001, 5:33–35. Fluid 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. Id. at 8:3–9, 9:35–11:9, 12:19–22. Each microchannel 103 is defined
`by a recessed groove extending transversely between adjacent fins. Id. at
`2:45–48. Heat exchanging fluid F flows in the directions indicated by the
`arrows. Id. at 11:50–53. Heat exchanging fluid F enters microchannels 103
`and splits into two sub flows in opposite directions to pass outwardly from
`inlet opening 114 towards outlet fluid opening 124. Id. at 11:34–12:2.
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`IPR2020-00825
`Patent 10,274,266 B2
`Figure 4, reproduced below, shows a sectional view along line II–II of
`Figure 2. Ex. 1001, 5:36.2
`
`
`Figure 4 depicts housing 109 including heat spreader plate 102 (which
`operates as an outer limit of a heat sink), and heat exchanging fluid F
`flowing in two opposite directions within microchannels 103. Id. at 8:3–9,
`11:34–12:2. Seal 130 separates fluid inlet passage 104 from fluid outlet
`passage 106 so that fluid F must pass through microchannels 103 and past
`surface 102a of heat spreader 102. Id. at 12:19–22.
`Figure 6, reproduced below, shows an exploded perspective view of
`an embodiment of a heat exchanger.
`
`
`
`
`2 The ’266 Patent incorrectly refers to “line II–II of FIG. 3” rather than “of
`FIG. 2.” Ex. 1001, 5:37.
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`IPR2020-00825
`Patent 10,274,266 B2
`Ex. 1001, 5:38–41.3 The depicted heat exchanger has inlet opening 214,
`plate 240, seal 230, and heat spreader plate 202. Id. at 12:26–46. “Seal 230
`may be installed as a portion of plate 240 or separately.” Id. at 12:43–44.
`Challenged Claims
`C.
`Petitioner challenges claims 1, 2, 4, 5, 9, and 13–15. Claims 1 and 13
`are independent claims. Claim 1, reproduced below, is representative.
`1. A heat exchange system comprising:
`a housing defining a recessed region and an outlet port fluidicly
`coupled with the recessed region;
`a heat sink having a plurality of juxtaposed fins defining a
`corresponding plurality of microchannels between adjacent
`fins;
`a manifold body at least partially defining an opening overlying
`the microchannels,
`wherein the manifold body defines a pair of compliant
`surfaces flanking the opening,
`wherein the compliant surfaces urge against the fins, defining
`a flow boundary of the microchannels,
`wherein the opening extends transversely relative to the fins
`and is configured to distribute a working fluid among the
`microchannels,
`wherein the manifold body partially occupies the recessed
`region of the housing, leaving a pair of opposed portions
`of the recessed region unfilled, defining opposed exhaust
`manifold portions flanking the opening and being
`configured to receive the working fluid from the
`microchannels, and
`
`
`3 The ’266 Patent incorrectly identifies Figure 5 as an exploded, perspective
`view and Figure 6 as a top plan view without a top cap. Ex. 1001, 5:38–41.
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`Patent 10,274,266 B2
`wherein the housing further defines an outlet plenum
`configured to receive the working fluid from the exhaust
`manifold portions and to convey the working fluid to the
`outlet port.
`Ex. 1001, 19:62–20:20.
`
`D. Challenged Claims and Asserted Grounds
`Petitioner asserts the following unpatentability grounds (Pet. 23–105):
`Claim(s)
`35 U.S.C. §4
`Reference(s)/Basis
`Challenged
`1, 9
`1, 9
`2, 4, 5
`2, 4, 5
`
`102(b)
`103(a)
`103(a)
`103(a)
`
`Bezama5
`Bezama and Lyon6
`Bezama and Chiang7
`Bezama, Lyon, and
`Chiang
`Kang8
`Anderson9
`
`13–15
`13–15
`
`103(a)
`103(a)
`
`
`4 The ’266 Patent issued from an application filed March 5, 2018 and claims
`priority to the 2007 and 2011 Provisionals. See Ex. 1001, codes (22), (60).
`Thus, the pre-AIA version 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, “Bezama”).
`6 U.S. Pat. Appl. Pub. No. 2009/0071625 A1, published Mar. 19, 2009 (Ex.
`1011, “Lyon”).
`7 U.S. Pat. No. 7,688,589 B2, issued Mar. 30, 2010 (Ex. 1013, “Chiang”).
`8 U.S. Pat. Appl. Pub. No. 2006/0096738 A1, published May 11, 2006 (Ex.
`1014, “Kang”).
`9 U.S. Pat. Appl. Pub. No. 2008/0301941 A1, published Dec. 11, 2008 (Ex.
`1015, “Anderson”).
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`IPR2020-00825
`Patent 10,274,266 B2
`
`II. ANALYSIS
`
`A.
`
`Principles of Law
`Burden
`1.
`In an inter partes review, the burden of proof is on the petitioner to
`show that the challenged claims are unpatentable, and that burden never
`shifts to the patentee. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l,
`Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (citing Dynamic Drinkware, LLC
`v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)).
`Anticipation
`2.
`For a claim to be found unpatentable under 35 U.S.C. § 102, each and
`every element in a claim, arranged as recited in the claim, must be found in a
`single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
`1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242
`F.3d 1376, 1383 (Fed. Cir. 2001). “A reference anticipates a claim if it
`discloses the claimed invention ‘such that a skilled artisan could take its
`teachings in combination with his own knowledge of the particular art and
`be in possession of the invention.’” In re Graves, 69 F.3d 1147, 1152 (Fed.
`Cir. 1995) (emphasis omitted).
`Obviousness
`3.
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person of ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness.10 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In determining obviousness when all elements of a claim are found in
`various pieces of prior art, “the factfinder must further consider the factual
`questions of whether a person of ordinary skill in the art would be motivated
`to combine those references, and whether in making that combination, a
`person of ordinary skill would have had a reasonable expectation of
`success.” Dome Patent L.P. v. Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015);
`see also WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed.
`Cir. 1999) (“When an obviousness determination relies on the combination
`of two or more references, there must be some suggestion or motivation to
`combine the references.”). “Both the suggestion and the expectation of
`success must be founded in the prior art, not in the applicant’s disclosure.”
`In re Dow Chemical Co., 837 F.2d 469, 473 (Fed. Cir. 1988).
`Level of Ordinary Skill in the Art
`B.
`The level of skill in the art is “a prism or lens” through which we view
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001) (“the level of skill in the art is a prism or lens
`through which a judge, jury, or the Board views the prior art and the claimed
`invention”).
`Petitioner asserts that a person of ordinary skill in the art at the time of
`the invention of the ’266 Patent (a “POSITA”) would have had the following
`education and experience: (i) “completed college level course work in
`
`
`10 Patent Owner does not contend that any such objective evidence is present
`in this case. See generally Resp. (not alleging that any objective indicia are
`present); see also Ex. 1003 ¶ 224 (“I am not aware of any secondary indicia
`of non-obviousness tied to the claimed invention.”).
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`Patent 10,274,266 B2
`thermodynamics, fluid mechanics, and heat transfer,” and (ii) “attained two
`or more years of experience in designing liquid cooling systems for
`computers, servers, or other electronic devices, or very similar technology,
`or one with a more advanced degree in the above fields may have had less
`practical experience.” Pet. 9.
`Patent Owner contends that a POSITA “would have earned at least a
`bachelor’s degree, such as a B.S. (bachelor of science), or equivalent
`thereof, in mechanical engineering or a closely related field and possessed at
`least three years of specialized experience in heat transfer devices for
`thermal management in electronics and computer systems, or in similar
`systems.” Resp. 3. Patent Owner represents, however, that none of its
`arguments or its declarant’s opinions turn on any differences between the
`parties’ alternative formulations concerning the level of ordinary skill in the
`art. Id. at 3 n.1.
`In its Reply, Petitioner does not respond to Patent Owner’s alternative
`formulation, or identify any issues in this case that might turn on differences
`between the parties’ alternative formulations. See generally Reply.
`On this record, we adopt Petitioner’s proposed formulation regarding
`the level of ordinary skill in the art, which we find is consistent with the
`level of skill reflected in the cited prior art references. See Okajima, 261
`F.3d at 1355. We note, however, that the differences between the parties’
`proposed formulations are not material with respect to any disputed issue.
`All of the findings and conclusions expressed herein would have been the
`same had we instead applied Patent Owner’s proposed formulation.
`Claim Construction
`C.
`We construe claims using the same claim construction standard that
`would be used to construe the claims in a civil action under 35 U.S.C.
`
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`§ 282(b). 37 C.F.R. § 42.100 (2019). In 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, 1312–13 (Fed. Cir. 2005) (en banc)
`(citation omitted). When construing a claim term, “we look principally to
`the intrinsic evidence of record, examining the claim language itself, the
`written description, and the prosecution history, if in evidence.” DePuy
`Spine, Inc. 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,” however, that a claim term carries its ordinary and customary
`meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
`Cir. 2002).
`Petitioner proposes constructions for the following terms (Pet. 9–15):
`“exhaust manifold” in claims 1 and 5,
`“aperture in the plate” in claim 13,
`“outlet opening” in claim 15,11 and
`“seal” in claim 13.
`Patent Owner proposes a different construction for the term “seal,”
`asserts that we need not construe “exhaust manifold,” and asks us to give the
`claim terms “outlet opening” and “aperture in the plate” their plain and
`ordinary meanings. Resp. 14–17. Patent Owner also asks us to construe the
`claim term “microchannels.” Id. at 20.
`
`
`11 The Petition asserts that “outlet opening” appears in claims 13 and 15 (see
`Pet. 13), but claim 13 does not recite an outlet opening (see Ex. 1001, 21:8–
`36).
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`Patent 10,274,266 B2
`Seal
`1.
`Petitioner contends that a POSITA would understand “seal” to mean
`“the housing and the plate are fitted so that fluid cannot flow between them.”
`Pet. 13 (citing Ex. 1003 (Tilton declaration) ¶ 60). Petitioner further
`contends that a “seal” can be formed by placing two components in “fluid-
`tight contact and/or fusing those components together,” and that a seal does
`not itself need to be “a component.” Pet. at 13–14 (citing Ex. 1003 ¶ 60).
`Patent Owner contends that we should reject Petitioner’s proposed
`construction, and instead construe “seal” as the district court allegedly did in
`Asetek Danmark A/S v. CoolIT Systems, Inc., Case No. 19-cv-00410-EMC
`(N.D. Cal.). See Resp. 16–17 (citing Ex. 2029 (district court claim
`construction order), 42–44). Patent Owner further clarifies that its proposed
`construction, “a component that fills a gap to prevent leakage through the
`gap,” requires that the seal be “a structure,” a “part,” or a “component.” See
`Id. at 17–20.
`We begin our analysis with the claims. Claim 13 recites “a seal,
`wherein the seal is a portion of the plate” (see Ex. 1001, 21:15), and the
`specification frequently uses the term “seal” to describe a component (see id.
`at 12:19–20 (describing the seal as a component that separates passages),
`12:43–46 (describing the seal as a component that may be part of plate 240
`or separate); 13:15–16 (stating that the seal can be “e.g., an O-ring”)). The
`claim’s recitation of “a seal, wherein the seal is a portion of the plate” does
`not merely describe a state in which the plate and the housing are fitted
`together in a way that prevents fluid flow, as Petitioner suggests. This claim
`language recites that the “seal” is a physical portion or component of the
`recited plate, which is consistent with the district court construction
`proposed by Patent Owner.
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`We also note that claim 13 does not recite a housing, and neither party
`has identified any lexicographic definition or explicit disclaimer of claim
`scope that would be sufficient to limit the scope of claim 13 so as to require
`a housing. See Pet. 13–15; Resp. 16–20. Petitioner’s proposed construction,
`which requires a housing, is inappropriate for this additional reason.
`The district court’s construction also more accurately captures
`additional aspects of the recited seal. Both parties make clear in their
`constructions that a seal prevents or blocks fluid flow or leakage. See Pet.
`13; Resp. 17. Claim 13 also provides that the seal “separates the fluid inlet
`passage from the fluid outlet passage.” Ex. 1001, 21:26–28. Thus, the seal
`of claim 13 at least partially fills the space, or gap, between the fluid inlet
`passage and the fluid outlet passage. For each of these reasons, the district
`court’s construction, “a component that fills a gap to prevent leakage
`through the gap,” accurately describes the nature of the seal recited in claim
`13. Accordingly, we adopt the district court’s construction and apply it in
`this proceeding.
`One additional clarification is appropriate in view of the evidence and
`arguments put forth by the parties in this proceeding. The specification of
`the ’266 Patent makes clear that a “seal” need not completely eliminate
`leakage in order to constitute a “seal.” See Ex. 1001, 13:16–20 (describing a
`seal that is positioned “to reduce and/or eliminate leakage of the working
`fluid.”) Accordingly, though the function of a seal is to prevent leakage, we
`determine that a seal need not completely eliminate leakage.
`Other Claim Terms
`2.
`On this record, and except to the extent we address the meaning of
`claim terms in the analysis below, we decline to further construe any claim
`terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
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`(Fed. Cir. 1999) (holding that “only those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy”);
`see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter
`partes review).
`D. Overview of the Asserted References
`Bezama (Ex. 1010)
`1.
`Bezama is a reference entitled “Structure and Apparatus for Cooling
`Integrated Circuits Using Co[p]per Microchannels.” Ex. 1010, Title.
`Figures 3A and 3B, reproduced below, describe such an apparatus.
`
`
`Figures 3A and 3B are perspective views of an assembly for cooling
`integrated circuits 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.
`Lyon (Ex. 1011)
`2.
`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
`
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`the ’330 Patent, as discussed previously. Id. at code (60). As Lyon is
`related to the ’266 Patent, Lyon’s heat exchanger has similar components as
`that of the ’266 Patent.
`Figure 1, reproduced below, shows a heat exchanger according to an
`exemplary embodiment.
`
`
`Figure 1 is 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. Id. ¶¶ 15,
`17, 21, 28, 37. 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 inlet
`opening 114 toward outlet fluid opening 124. Id. ¶¶ 34–35. Seal 130
`separates fluid inlet passage 104 and fluid outlet passage 106 so that fluid
`must pass through microchannels 103. Id. ¶ 37.
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`Figure 5, reproduced below, shows a heat exchanger according to
`another embodiment.
`
`
`Figure 5 is an exploded, perspective view of a heat exchanger. Ex. 1011
`¶ 13.12 The depicted heat exchanger includes top cap 244 with side walls
`that extend downward, plate 240, seal 230, walls 210, and heat spreader
`plate 202. Id. ¶¶ 38, 40–42. “Seal 230 may be installed as a portion of plate
`240 or separately.” Id. ¶ 41. Plate 240 “has portions removed to create inlet
`and outlet openings.” Id. ¶ 40.
`Chiang (Ex. 1013)
`3.
`Chiang is entitled “Water Cooled Heat Dissipation Module for
`Electronic Device.” Ex. 1013, Title. Figure 1, reproduced below, shows a
`
`
`12 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.
`
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`water cooled heat dissipation module according to an exemplary
`embodiment. Id. at 2:25–27.
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`The water cooled heat dissipation module of Figure 1 includes guide fan A7,
`water suction disk A5, and base disk A3. Id. at 2:51–57. Water suction disk
`includes water guide A6, and base disk A3 includes cooling strips A31. Id.
`In operation, coolant enters from an inlet port to water guide A6, is driven
`by guide fan A7, moves through channels formed by cooling strips A31, and
`exits from an outlet port. Id. at 3:34–49, 3:62–4:3, 4:4–8.
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`Kang (Ex. 1014)
`4.
`Kang is entitled “Liquid Cold Plate Heat Exchanger.” Ex. 1014, Title.
`Figures 1–3 of Kang are reproduced below.
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`Figures 1 and 2 depict exploded top and bottom perspective views,
`respectively, of a heat exchanger, and Figure 3 depicts a section view of the
`heat exchanger of Figure 1. Id. ¶¶ 19, 21, 22. The depicted embodiments
`include cooling plate 10 having heat collection surface 11 for placing against
`an object to be cooled, and opposing heat transfer surface 12. Id. ¶ 28. Heat
`transfer surface 12 includes an array of parallel microfins 14 upstanding
`from surface 12. Id.
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`Cover 20 fits over cooling plate 10 and includes inlet nipple 26, outlet
`nipple 28, and recesses 32 and 38 for receiving flow distributor 40. Ex.
`1014 ¶ 28. When flow distributor 40 is received in the recesses of cover 20
`and fitted over cooling plate 10, inlet section 31 and outlet section 33 are
`formed. Id. ¶¶ 28–29. Flow distributor 40 includes parallel slots 44 (inlet
`channels) extending between inlet section 31 and outlet section 33. Id. ¶ 29.
`Flow distributor 40 further includes outlet channels 47 that separate a
`plurality of coplanar lands 46 spaced from heat transfer surface 12 by gaps
`48. Id. Fluid travels downward through slots 44, through gaps 48, and
`through outlet channels 47. Id. ¶ 30.
`Anderson (Ex. 1015)
`5.
`Anderson is entitled “Method of Manufacturing a Cold Plate Heat
`Exchanger Assembly Having a Metallic Compliant Gasket.” Ex. 1015,
`Title. Figure 2, reproduced below, shows an exploded view of components
`of a cold plate heat exchanger assembly according to an exemplary
`embodiment. Id. ¶ 17.
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`Figure 2 depicts cold plate heat exchanger assembly including inlet/outlet
`pipes 400, manifold cover 200, base plate 100, and manifold plate 300
`positioned between manifold cover 200 and base plate 100. Id. ¶ 27.
`
`Figure 4, reproduced below, shows an enlarged perspective view of
`surfaces of manifold plate 300 and base plate 100. Ex. 1015 ¶ 20.
`
`
`Figure 4 depicts base plate 100 including micro-channels 140 formed
`between micro-fins 150, and manifold plate 300 including channels 320. Id.
`¶¶ 28, 30. Coolant enters alternating channels 320, flows down into micro-
`channels 140, and exits up into adjacent alternating channels 320. Id. ¶ 32.
`Priority Date of ’266 Patent Claims 1, 2, 4, 5, and 9
`E.
`Petitioner’s challenges to claims 1, 2, 4, 5, and 9 are based on Bezama
`and Lyon, which were published in 2010 and 2009, respectively, and
`Chiang, which issued in 2010. See Ex. 1010, code (43); Ex. 1011, code
`(43); Ex. 1013, code (45). Though the face of the ’266 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 “manifold body defin[ing] a pair of compliant surfaces” as recited
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`in independent claim 1 and incorporated by way of dependence into claims
`2, 4, 5, and 9. Pet. 17–18 (alteration in original). According to Petitioner,
`the first disclosure of any compliant surface13 took place in the separate
`2011 Provisional, filed on July 27, 2011. Pet. 19–20; Ex. 1006, 1.14
`Because Bezama and Lyon were published prior to the filing of the 2011
`Provisional, Petitioner contends both references qualify as prior art to
`independent claim 1 and dependent claims 2, 4, 5, and 9. Pet. 20, 23, 39.
` Patent Owner argues in response that claims 1, 2, 4, 5, and 9 are
`entitled to the priority date of the 2007 Provisional, and that Lyon, Bezama,
`and Chiang thus do not qualify as prior art. Resp. 20–21, 36.
`“[A] patent application is entitled to the benefit of the filing date of an
`earlier filed application only if the disclosure of the earlier application
`provides support for the claims of the later application, as required by 35
`U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299,
`1306 (Fed. Cir. 2008) (quoting In re Chu, 66 F.3d 292, 297 (Fed. Cir.
`1995)). The test for determining compliance with the written description
`requirement under 35 U.S.C. § 112 is whether the original disclosure of the
`earlier-filed application reasonably would have conveyed to a person of
`ordinary skill in the art that the inventor had possession of the claimed
`subject matter at the time of the earlier-filed application. Ariad Pharm., Inc.
`v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). This
`
`
`13 Petitioner further contends that the 2011 Provisional does not adequately
`support the “manifold body defin[ing] a pair of compliant surfaces”
`limitation (see Pet. 18 (alteration in original)), but we need not address that
`argument here because Lyon and Bezama were published before the 2011
`Provisional was filed.
`14 Our citations to the 2007 and 2011 Provisional refer to the exhibit page
`numbers stamped at the bottom of each page.
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`analysis requires “an objective inquiry into the four corners of the
`specification.” Id. Possession of the claimed subject matter is shown “by
`such descriptive means as words, structures, figures, diagrams, formulas,
`etc., that fully set forth the claimed invention.” Lockwood v. Am. Airlines,
`Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Possession may not be
`demonstrated by merely showing that the claimed subject matter “would be
`obvious over what is expressly disclosed.” Id.
`For the reasons that follow, we determine that the 2007 Provisional
`does not contain a disclosure that would have conveyed to a POSITA that
`the inventor had possession of a “manifold body defin[ing] a pair of
`compliant surfaces” of the type required by claim 1. Accordingly, the
`earliest-possible priority date of the ’266 Patent is July 27, 2011, the filing
`date of the 2011 Provisional.15
`Patent Owner alleges that the 2007 Provisional reasonably conveys to
`a POSITA that the inventor had possession of a manifold body made of
`compliant material, namely plate 240. Resp. 21. The paragraphs from the
`2007 Provisional specification that discuss plate 240 are reproduced below.
`A plate 240 may be installed over the walls 210 to close off the
`channels across the upper limits of walls 210. Plate 240 has
`portions removed to create openings 214 and 224 in the final heat
`
`15 The only other pre-2012 application to which the ’266 Patent claims
`priority is U.S. Patent Application No. 12/189,476 (see Ex. 1001, codes (60),
`(63)), which was subsequently published as the Lyon reference (see Ex.
`1011, code (21)). Patent Owner never argues that the ’266 Patent is entitled
`to the priority date of this application, or contends that this application
`contains any additional disclosure of a “manifold body defin[ing] a pair of
`compliant surfaces” beyond that set forth in the 2007 Provisional. See Resp.
`20–30. Accordingly, any such argument is deemed waived. See Paper 13, 8
`(“Patent Owner is cautioned that any arguments not raised in the response
`may be deemed waived.”)
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`exchanger. Tabs 242 may be used to assist with the positioning
`and i