IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF TEXAS
`FORT WORTH DIVISION
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`DECLARATION OF MAURICE J. MARONGIU ON DISPUTED CLAIM TERMS
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`MIDAS GREEN TECHNOLOGIES, LLC,
` PLAINTIFF,
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`V.
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`IMMERSION SYSTEMS LLC,
` DEFENDANT.
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`
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`CASE NO. 4:20-cv-00555-O
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`JURY TRIAL DEMANDED
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`PATENT CASE
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`Table of Contents
`I. Qualifications, Experience, and Publications .............................................................. - 3 -- 3 -
`II. Compensation .............................................................................................................. - 5 -- 5 -
`III.
`Prior Testimony ....................................................................................................... - 5 -- 5 -
`IV. Materials Considered. .............................................................................................. - 6 -- 6 -
`V. Summary of Opinions .................................................................................................. - 6 -- 6 -
`VI.
`The Patents-in-Suit and Relevant Technology ........................................................ - 7 -- 7 -
`A. Background Technology .......................................................................................... - 7 -- 7 -
`B. The Claims ............................................................................................................... - 7 -- 7 -
`VII. Claim Construction Principles ............................................................................. - 10 -- 10 -
`VIII. Level of Skill in the Art ....................................................................................... - 11 -- 11 -
`IX.
`Background Information ...................................................................................... - 11 -- 11 -
`X. Two Disputed Claim Terms/Phrases: ...................................................................... - 19 -- 19 -
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`I, Maurice J Marongiu, declare, under penalty of perjury, as follows:
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`1. I am a consulting engineer and expert on the subject of thermal management and
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`engineering for electronics. I submit this Declaration in relation to Plaintiff’s Brief on Disputed
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`Claim Terms for Construction of MIDAS GREEN TECHNOLOGIES, LLC, ("MGT" or
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`“Plaintiff”). In particular, I submit this Declaration to provide relevant background information
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`regarding the technology at issue in U.S. Patent No. 10,405,457 (the ‘457 Patent or "Patent-in-
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`Suit") (attached as Exhibit 1), and U.S. Patent No. 10,820,446 (the ‘446 Patent or "Patent-in-Suit")
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`(attached as Exhibit 2) and to set forth my opinions about the meaning of certain disputed claim
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`terms in the ‘457 Patent and ‘446 Patent from the perspective of a person of ordinary skill in the
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`pertinent field.
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`I. Qualifications, Experience, and Publications
`2. The following is a brief summary of my background and qualifications. My background
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`and qualifications are more fully set out in my curriculum vitae (CV), attached as Exhibit 3.
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`3. My current position is President of MJM Engineering Co. and PCM Thermal Solutions.
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`MJM Engineering Co. is a consulting firm specialized in the design and development of thermal
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`management systems for electronics and telecommunications applications. PCM Thermal
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`Solutions is a consulting firm specialized in the analysis, design, and development of thermal
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`engineering applications.
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`4. I received my B.S. degree in Mechanical Engineering from the University of Illinois at
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`Urbana-Champaign in 1980. I received in 1982 my M.S. in Mechanical Engineering and, in 1985,
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`I earned a doctorate in Mechanical Engineering, both degrees from the University of Illinois at
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`Urbana-Champaign. The emphasis in my graduate studies was experimental/analytical methods
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`applied to thermal and fluid mechanics problems to include electronics and telecom systems.
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`5. I have over 10 years of engineering teaching experience in the thermal engineering areas.
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`I was a visiting assistant professor of mechanical engineering at Texas A&M University at College
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`Station, TX and adjunct assistant professor at Illinois Institute of Technology (IIT) in Chicago, as
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`well as graduate teaching assistant at the University of Illinois at Urbana-Champaign. I have taught
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`heat transfer, fluid mechanics, thermodynamics, thermal systems, thermal management,
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`experimental methods, and other courses at the undergraduate and graduate levels as well as
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`conducted research projects in thermal management, heat transfer and fluid mechanics.
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`6. In 1995, I founded MJM Engineering Co. after several years of performing part-time
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`consulting projects for the electronics/telecommunications industry in the Chicago area. My area
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`of expertise is the thermal analysis, design, development, and troubleshooting of thermal
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`management systems of electric, electronic and telecommunication components and systems as
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`well as other engineering applications. My expertise includes heat exchanger design, thermal
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`system design and optimization, fluid mechanics and convection heat transfer, and cooling of
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`electronic systems, including phase change materials. I have been active professionally, being a
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`member of ASME (American Society of Mechanical Engineers), IEEE (Institute of Electrical and
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`Electronics Engineers), ISHM (International Society of Hybrid and Microelectronics), IEPS
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`(International Electronics Packaging Society), Cryogenics Society of America, and AIAA
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`(American Institute of Aeronautics and Astronautics). I was chairman of ASME Fox Valley Local
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`Section and member of ASME Ad Hoc Computational Heat Transfer Committee. I am currently a
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`contributor in Electronics Cooling, which is a paper and online magazine. I have taught
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`undergraduate and graduate courses concerning fluid mechanics, heat transfer, thermodynamics,
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`and thermal systems for over 10 years.
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`7. As shown in my CV, I have authored or co-authored over 20 publications. I am an inventor
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`of a U.S. patent (US 8,541,721) titled “Wake Generating Elements for Joule Heating or Infrared
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`Heating”.
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`II. Compensation
`8. I am being compensated for my time spent on this matter at the rate of $150/hr. plus
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`reasonable expenses. My compensation is not related to the outcome of this action, and I have no
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`financial interest in this case.
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`III. Prior Testimony
`9. Although I have been hired to consult as expert (with the intention to provide testimony as
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`requested), I have not testified as an expert in any litigation during the last four years. However, I
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`have served as an expert witness in the following cases in the last 4 years:
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`a) LINDA ANDREW a/k/a JANE DOE, a Florida resident, Plaintiff, v. RADIANCY, INC.,
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`a foreign corporation; PHOTOMEDEX, INC., a foreign corporation; and DOLEV
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`RAFAELI, a New Jersey Resident, Case Nr. 6:16-CV-1061-ORL-37GJK, UNITED
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`STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF FLORIDA,
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`ORLANDO DIVISION, 2017;
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`b) Manufacturing Resources International, Inc. Plaintiff, v. Civiq Smartscapes, LLC, Civiq
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`Holdings, LLC, Comark, LLC, and Comark Holdings, LLC, Case Nr. 17 cv-00269-UN,
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`UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE 2018;
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`and
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`c) 3M COMPANY, Plaintiff, v. NEOLOGY, INC. and EQUITY PARTNERS VI, L.P.,
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`Case Nr. C.A. No. N18C-07-089 AML CCLD, SUPERIOR COURT FOR THE STATE
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`OF DELAWARE, 2020.
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`IV. Materials Considered.
`10. In preparing this declaration, I have considered the ‘457 Patent and its prosecution history,
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`as well as the prosecution histories of family member patents related to the ‘457 Patent, including
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`provisional application numbers 61/737,200 and 61/832,211. I have considered the ‘446 Patent,
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`its prosecution history, as well as the prosecution histories of family member patents related to the
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`‘446 Patent, including application number 14/355,533 and provisional application 61/832,211. I
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`have also considered PCT application PCT/US2013/075126 corresponding to U.S. application
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`14/355,533. I have considered the parties' claim construction disclosures, and the other materials
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`identified in Exhibit 4 – Exhibit 10 attached to this Declaration. I also relied upon my over 35
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`years of general experience in the field, though the testimony I offer is from the person of ordinary
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`skill as I have defined it below.
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`V. Summary of Opinions
`11. I understand that MGT has filed the present lawsuit against IMMERSION SYSTEMS,
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`INC. (“Defendant” or “Immersion”) and alleges infringement of claims 1, 5, 6, 10, 11 and 14 of
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`the ‘457 Patent and claims 1, 5, 6 and 10 of the ‘446 Patent.
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`12. I understand the parties dispute the meaning of the following terms/phrases used in the
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`claims of the ‘457 and ‘446 Patents:
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` "overflow lip ... adapted to facilitate [substantially uniform recovery]"
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` "weir ... adapted to facilitate [substantially uniform recovery]"
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`13. If called as a witness to testify at a claim construction hearing, I expect to testify on the
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`following topics and provide opinions and testimony on what is summarized in this declaration:
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` The ‘457 and ‘446 Patents including their specifications, claims and prosecution history,
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`and the science underlying what is disclosed in the ‘457 and ‘446 Patents.
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` The level of ordinary skill in the art to which the ‘457 and ‘446 Patents are directed.
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` My opinions on how the disputed terms/phrases identified in paragraph above would
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`have been interpreted by a person of ordinary skill in the art at the time of invention.
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`14. In my opinion, a person of ordinary skill in the art on the earliest priority date (i.e.,
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`December 14, 2012) for claims in the ‘457 Patent and '446 Patent would have no trouble to
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`ascertaining the meaning of these two terms/phrases. In particular, such a person of ordinary skill
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`in the art would have interpreted the terms as set forth below:
`
`
`1.
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`2.
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`Claim Term
`“a weir … having an overflow lip adapted to
`facilitate substantially uniform recovery”
`
`“a weir … adapted to facilitate substantially
`uniform recovery”
`
`Proper Interpretation
` “a weir … having an overflow edge or boundary
`capable of easing or helping substantially uniform
`recovery”
` “weir … capable of easing or helping substantially
`uniform recovery”
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`VI. The Patents-in-Suit and Relevant Technology
`15. The '457 Patent is titled APPLIANCE IMMERSION COOLING SYSTEM and generally
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`relates to cooling of electric/electronic appliances. The '446 Patent is titled APPLIANCE
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`IMMERSION COOLING SYSTEM and generally relates to cooling of electric/electronic
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`appliances.
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`A. Background Technology
`16. For the purposes of this case, it is useful to have a basic understanding of thermal
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`management of electronics components to include the following relevant technologies: heat
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`transfer, fluid mechanics, thermal systems, and control systems for thermal systems.
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`B. The Claims
`17. The '457 Patent contains 16 total claims, consisting of 3 independent claims and 13
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`dependent claims. As noted above, I understand that MGT is asserting infringement of claims 1,
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`5, 6, 10 and 14. The ‘446 Patent contains 10 claims, consisting of 2 independent claims and 8
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`dependent claims. As noted above, I understand that MGT is asserting infringement of claims 1,
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`5, 10.
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`18. The disputed claim terms identified in Paragraph 12, above, appear in the asserted claims
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`as follows:
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`a) Claim 1 of the ‘457 Patent:
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`“An appliance immersion cooling system comprising:
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`a tank adapted to immerse in a dielectric fluid a plurality of electrical appliances, each in a
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`respective appliance slot distributed vertically along, and extending transverse to, a long wall
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`of the tank, the tank comprising:
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`a weir, integrated horizontally into the long wall of the tank adjacent all appliance slots, having
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`an overflow lip adapted to facilitate substantially uniform recovery of the dielectric
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`fluid flowing through each appliance slot; and;
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`a dielectric fluid recovery reservoir positioned vertically beneath the overflow lip of the weir
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`and adapted to receive the dielectric fluid as it flows over the weir;
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`a primary circulation facility adapted to circulate the dielectric fluid through the tank, comprising:
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`a plenum, positioned adjacent the bottom of the tank, adapted to dispense the dielectric fluid
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`substantially uniformly upwardly through each appliance slot;
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`a secondary fluid circulation facility adapted to extract heat from the dielectric fluid circulating in
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`the primary circulation facility, and to dissipate to the environment the heat so extracted; and
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`a control facility adapted to coordinate the operation of the primary and secondary fluid circulation
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`facilities as a function of the temperature of the dielectric fluid in the tank.”
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`
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`b) Claim 5 of the ‘457 Patent:
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`“The system of claim 1 wherein the control facility further comprises a communication facility
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`adapted to facilitate monitoring and control of the control facility from a remote location.”
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`
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`c) Claim 6 of the ‘457 Patent:
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`“A tank module adapted for use in an appliance immersion cooling system, the tank module
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`comprising:
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`a tank adapted to immerse in a dielectric fluid a plurality of electrical appliances, each in a
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`respective appliance slot distributed vertically along, and extending transverse to, a long wall
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`of the tank, the tank comprising:
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`a weir, integrated horizontally into the long wall of the tank adjacent all appliance slots, having
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`an overflow lip adapted to facilitate substantially uniform recovery of the dielectric
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`fluid flowing through each appliance slot; and;
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`a dielectric fluid recovery reservoir positioned vertically beneath the overflow lip of the weir
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`and adapted to receive the dielectric fluid as it flows over the weir;
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`a primary circulation facility adapted to circulate the dielectric fluid through the tank, comprising:
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`a plenum, positioned adjacent the bottom of the tank, adapted to dispense the dielectric fluid
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`substantially uniformly upwardly through each appliance slot; and
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`a control facility adapted to control the operation of the primary fluid circulation facility as a
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`function of the temperature of the dielectric fluid in the tank.”
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`
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`d) Claim 10 of the ‘457 Patent:
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`“The module of claim 6 wherein the control facility further comprises a communication facility
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`adapted to facilitate monitoring and control of the control facility from a remote location.”
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`
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`e) Claim 14 of the ‘457 Patent:
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`“The module of claim 11 wherein the control facility further comprises a communication facility
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`(62, 64) adapted to facilitate monitoring and control of the control facility from a remote
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`location.”
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`
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`f) Claim 1 of the ‘446 Patent:
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`“An appliance immersion cooling system comprising:
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`a tank adapted to immerse in a dielectric fluid a plurality of electrical appliances, each in a
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`respective appliance slot distributed vertically along, and extending transverse to, a long wall
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`of the tank, the tank comprising:
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`a weir, integrated horizontally into the long wall of the tank adjacent all appliance slots,
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`adapted to facilitate substantially uniform recovery of the dielectric fluid flowing
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`through each appliance slot;
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`a primary circulation facility adapted to circulate the dielectric fluid through the tank, comprising:
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`a plenum, positioned adjacent the bottom of the tank, adapted to dispense the dielectric fluid
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`substantially uniformly upwardly through each appliance slot;
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`a secondary fluid circulation facility adapted to extract heat from the dielectric fluid circulating in
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`the primary circulation facility, and to dissipate to the environment the heat so extracted; and
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`a control facility adapted to coordinate the operation of the primary and secondary fluid circulation
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`facilities as a function of the temperature of the dielectric fluid in the tank.”
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`
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`g) Claim 5 of the ‘446 Patent:
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`“The system of claim 1 wherein the control facility further comprises a communication facility
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`adapted to facilitate monitoring and control of the control facility from a remote location.”
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`
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`h) Claim 10 of the ‘446 Patent:
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`“The module of claim 6 wherein the control facility further comprises a communication facility
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`adapted to facilitate monitoring and control of the control facility from a remote location.”
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`
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`VII. Claim Construction Principles
`19. I understand that claim construction is the process by which a court determines, as a matter
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`of law, the scope and meaning of terms used in the claims of a patent. I further understand that the
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`goal of this process is to give claim terms the meaning they would have had to a person of ordinary
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`skill in the art (“POSA”) at the time of the invention, after reading the entire patent and prosecution
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`history.
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`20. I further understand that it is possible that the patent specification and/or file prosecution
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`history may reveal a special definition given to a claim term by the patentee that differs from the
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`meaning it would otherwise have to a POSA. In such cases, I understand that the patentee's
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`definition usually controls.
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`21. I understand that the prosecution history of a patent can inform the meaning of some claim
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`language and must be taken into account in construing the claims.
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`22. I understand that, in some cases, the court may consider extrinsic evidence, such as
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`technical dictionaries, treatises, and expert opinions, to understand the underlying technology and
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`the way in which claim terms would be understood by a POSA at the relevant time. However, I
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`also understand that such extrinsic evidence should not be used to vary, contradict, expand, or limit
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`the claim language from how it is defined in the specification or prosecution history.
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`23. I understand that a patent can be held invalid for indefiniteness if its claims, viewed in light
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`of the specification and prosecution history, fail to inform with reasonable certainty those skilled
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`in the art about the scope of the invention. I further understand that definiteness is to be evaluated
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`from the perspective of someone with skill in the relevant art at the time that the patent was filed.
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`VIII. Level of Skill in the Art
`24. Having reviewed the ‘457 and ‘446 Patents and their prosecution history, in my opinion, a
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`person of ordinary skill in the art would have had at least a B.S. degree in the field of mechanical
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`engineering, or a similar science or engineering degree, and 5-10 years of experience with thermal
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`systems and thermal management of electronics. For the purpose of this declaration, I understand
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`the time of invention to be late in the year 2012.
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`IX. Background Information
`25. A background of the words “weir” and “plenum” is appropriate when considering the
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`contested terms as summarized in Section V.
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`a) “weir”
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`26. The term “weir” appears in claims 1, 5, 6, 10, 11, 14 of the ‘457 Patent and also appears in
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`claims 1, 5, 6, 10 of the ‘446 Patent. The term “weir,” means “an overflow structure or barrier that
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`determines the level of liquid.”
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`27. The term “weir” appears in the ‘457 Patent specification and drawings at: Abstract, FIGS.
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`5, 6, 11, 12, 13; Column/line – 3:1-6, 3:16-19, 3:23-25, 3:39-63, 4:30-34, 4:57-58, 8:22, 9:7-24,
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`9:37-46, 10:20-29, and 10:65-11:3. The term appears in the ‘446 Patent specification and drawings
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`at: Abstract; FIGS. 5, 6, 11, 12, 13; Column/line – 3:3-8, 3:18-21, 3:25-27, 3:38-58, 4:29-34, 4:57-
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`60, 8:25, 9:10-27, 9:42-45, and 10:26-29.
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`28. A weir, generally, can be (and was at the time the ’457 patent was filed) a structure used
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`in open channels that carry liquids, to control flow and determine the level of the liquid, such as
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`water. Holding ponds and industrial tanks for handling liquids may include a weir. As one
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`exemplary reference (hereafter, the “CTG Website”) teaches “in industrial cleaning systems, weirs
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`perform two basic functions. The first is to establish and control liquid level in a tank or other
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`vessel. The other is to selectively remove floating contaminants from the surface of a liquid.”
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`29. A basic weir as used in industrial cleaning applications as taught by the CTG Website.
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`When the liquid level in the tank exceeds that of the weir, liquid overflows the weir. Figure 1
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`(below) illustrates two arrangements of industrial tanks for handling liquids, where each liquid
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`tank includes a weir. As shown in Figure 2 from the CTG Website , weirs may be used to
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`determine the liquid level in a tank and regulate the flow or discharge of liquid from the tank to
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`another location.
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`Figure 1 Illustration of Weir Operation1
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`
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`Figure 2 Example of Weirs used to Transfer Liquid to Another Location2
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`
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`30. Weirs generally are structures that have horizontal, vertical and thickness components or
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`dimensions. The horizontal and vertical components are perpendicular to the channel flow or tank.
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`Furthermore, weirs have a vertical component from the bottom of the upstream liquid body to the
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`overflow height. These points are illustrated by another exemplary reference, hereafter
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`1 Cleaning Technologies Group, LLC, publisher https://techblog.ctgclean.com/2014/10/weirs/, accessed April
`18, 2021
`2 Cleaning Technologies Group, LLC, publisher https://techblog.ctgclean.com/2014/10/weirs/, accessed April
`18, 2021
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`Thermopedia. Figure 3 illustrates the 3-dimensionality of channel flow control provided by a
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`typical weir.
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`
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`Figure 3 Illustration of Weir 3-Dimensionality3
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`31. In general, weirs have been classified as simple or complex; what they have in common is
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`a boundary that separates a body of liquid from the targeted discharge. Furthermore, simple weirs’
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`vertical walls may cause the liquid to overflow along edges along the boundary. In complex weirs,
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`the edge changes along the horizontal component; in other words, complex weirs have divided
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`horizontal component sections, and when the vertical component exceeds the edge, it is a separator
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`of the segments of the edge. This is shown in Figure 4, below, excepted from the
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`Openchannelflow.com website.
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`32. Complex weirs can be composed of consecutive orifices (circular weirs), slots (both
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`vertical and horizontal), holes, notches, or "saw-tooth" edges deployed along the horizontal edge
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`of a boundary; these may be contiguous or separated by a preselected distance. In another example,
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`from the Nano-Reef.com website, Figure 5 shows an example of a weir using slots; moreover,
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`circular weirs are variant of these slotted holes.
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`3 Thermopedia-TM, Jader R Barbosa, Executive Editor, https://thermopedia.com/content/1259/, Accessed
`April 18, 2021
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`Figure 4 Photograph of Segmented Weir along Horizontal Boundary4
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`Figure 5 Weir on 3 Walls made of Slots5
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`
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`33. Furthermore, circular weirs are variant of the slotted weirs. Figure 6 below, from the
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`Openchannelflow.com website, shows a circular weir adapted to control flow in a culvert. Figure
`
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`4 Openchannelflow.com/tracomfrp, publisher, https://www.openchannelflow.com/blog/circular-weirs-for-
`measuring-flows-in-partially-full-pipes, Accessed April 18, 2021
`5 Nano-Reef.com Community, Christopher Marks Founder, https://www.nano-reef.com/forums/topic/25717-
`third-diy-overflow-box/, accessed April 18, 2021
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`7 below, from the thesis paper by Armond Dudley Barefoot, shows still another example of a
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`circular hole operating as a weir. Similarly, Figure 8 shows a series of circular weirs. It is of note
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`that weirs vertical components may end at the fluid level or may be submerged.
`
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`Figure 6 Circular Weir Inside a Culvert6
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`
`
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`6 Openchannelflow.com/tracomfrp, publisher, https://www.openchannelflow.com/blog/circular-weirs-for-
`measuring-flows-in-partially-full-pipes, Accessed April 18, 2021
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`Figure 7 Example of a Single Circular Weir7
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`Figure 8 Example of Multiple Circular Weirs8
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`
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`7 M.S. Thesis, "The Hydraulic Properties of Orifices and Circular Weirs with a 45 Degree Slope," by Armond
`Dudley Barefoot, MS Degree, Oklahoma State University, Stillwater, OK, 1953, p16
`8 M.S. Thesis, "The Hydraulic Properties of Orifices and Circular Weirs with a 45 Degree Slope," by Armond
`Dudley Barefoot, MS Degree, Oklahoma State University, Stillwater, OK, 1953, p40
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`b) “plenum”
`
`34. The term “plenum” appears in claims 1, 5, 6, 10, 11, 14 in the ‘457 Patent and claims 1, 5,
`
`6, and 10 of the ‘446 Patent. The term “plenum” means “a structure for dispensing liquid.”
`
`35. The term “plenum” also appears in the ‘457 Patent specification and drawings at: Abstract;
`
`FIGS. 1, 5, 6, 11, 13; Column/line – 3:1-6, 3:13-19, 3:52-56, 4:17-26, 4:27-32, 4:55-58, 6:45, 6:49-
`
`54, 7:12-19, 8:22, 9:7-24, 9:38-42, 10:21-25, and 10:66-11:3. The term appears in the ‘446 Patent
`
`specification and drawings at: Abstract; FIGS. 1, 5, 6, 11, 13; Column/line – 3:1-6, 3:13-19, 3:52-
`
`56, 4:17-26, 4:27-32, 4:55-58, 6:45, 6:49-54, 7:12-19, 8:22, 9:10-27, 9:42-45, and 10:26-29.
`
`36. In tanks for handling liquids, generally, a plenum is a structure having a space to collect
`
`incoming liquid for the subsequent dispensing of the liquid to various locations. As described in
`
`the specification and shown in FIGS. 1, 7, 8, and 9 of the ‘457 Patent and ‘446 Patent, the plenum
`
`is a structure that collects the incoming liquid (e.g., dielectric fluid) and dispenses the liquid (e.g.,
`
`dielectric fluid) substantially uniformly upwardly through each appliance slot.
`
`37. One function of the plenum is to change the liquid flow from the incoming liquid velocity
`
`to discharge velocity based on the inlet and outlet cross-sectional areas. As shown, for example,
`
`in FIG. 8 of the ‘457 Patent, the liquid (e.g., dielectric fluid) is constrained to collect and then exit
`
`through predesigned outlets such as orifices or nozzles. As shown, for example, in FIG. 10 of the
`
`‘457 Patent, the outlets are located and sized to direct the flow of liquid towards various locations.
`
`A definition is considered, which is “plenum”: the whole of space regarded as being filled with
`
`matter (opposed to vacuum,) Merriam-Webster.9
`
`
`9 “Plenum - a space or all space every part of which is full of matter” Merriam-Webster's Unabridged
`Dictionary, Merriam-Webster, https://unabridged.merriam-webster.com/unabridged/plenum. Accessed May 4,
`2021.
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`38. Additionally, a POSA would understand that a plenum will include non-chamber structures
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`for dispensing a liquid such as a network of pipes used to collect and then dispense liquid as
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`illustrated in Figure 9.
`
`Figure 9 Illustration of Plenum Structure Embodiment
`
`
`
`
`
`X. Two Disputed Claim Terms/Phrases:
` “a weir … having an overflow lip adapted to facilitate substantially uniform
`
`recovery”
`
` “a weir … adapted to facilitate substantially uniform recovery”
`
`39. The first term/phrase above -- “a weir … having an overflow lip adapted to facilitate
`
`substantially uniform recovery” -- appears in the ‘457 Patent claims 1, 5, 6, 10.This first
`
`term/phrase also appears in the specification and drawings in the ‘457 Patent Specification at:
`
`Abstract, FIGS. 1, 5, 6, 11, 12, 13; Column/line – 2:59-61, 3:1-6, 3:13-19, 3:23-25, 3:39-63, 4:30-
`
`34, 4:57-58, 8:22, 9:7-24, 9:37-46, 10:20-29; and 10:65-11:3.
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`40. Each of the words in the above first term/phrase has a plain and ordinary meaning that a
`
`POSA will easily comprehend. The term “weir” has the meaning discussed above, i.e., an overflow
`
`structure or barrier that determines the level of a liquid. Obviously, from the context, the “overflow
`
`lip” is part of the weir. The overflow lip is the part of the weir over which liquid flows. Therefore,
`
`a person having ordinary skill in the art will understand that “a weir … having an overflow lip”
`
`means an “overflow edge or boundary of the weir.”
`
`41. The term “adapted to” simply means “suitable for” or “capable of.” The term “facilitate”
`
`means “to make easier” or “to help bring about.”10
`
`42. So the above phrase simply means “a weir…having an overflow edge or boundary capable
`
`of easing or helping to bring about the substantially uniform recovery (of the dielectric fluid
`
`flowing through each appliance slot).” A POSA should have no problem understanding the
`
`meaning of this phrase.
`
`43. The second term/phrase above --“a weir … adapted to facilitate substantially uniform
`
`recovery" appears in claims 1 and 6 of the ‘446 Patent.
`
`44. The term also appears throughout the specifications of both of the patents-in-suit, for
`
`example, in the ‘457 Patent specification and drawings at: Abstract, FIGS. 5, 6, 11, 12, 13;
`
`Column/line – 3:1-6, 3:16-19, 3:23-25, 3:39-63, 4:30-34, 4:57-58, 8:22, 9:7-24, 9:37-46, 10:20-
`
`29, and 10:65-11:3, and in the ‘446 Patent specification and claims at: Abstract; FIGS. 5, 6, 11,
`
`12, 13; Column/line – 3:3-8, 3:18-21, 3:25-27, 3:38-58, 4:29-34, 4:57-60, 8:25, 9:10-27, 9:42-45,
`
`and 10:26-29.
`
`
`10 Facilitate – “to make easier : help bring about” Merriam-Webster's Unabridged Dictionary, Merriam-
`Webster, https://www.merriam-webster.com/dictionary/facilitate Accessed May 27, 2021
`
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`45. Similar to the above, each of the words in the above second term/phrase has a plain and
`
`ordinary meaning that a POSA will easily comprehend. As before, the term “weir” has the
`
`meaning discussed above, i.e., an overflow structure or barrier that determines the level of a liquid.
`
`46. As before, the term “adapted to” simply means “suitable for” or “capable of.” And as
`
`before, the term “facilitate” means “to make easier” or “to help bring about.”
`
`47. So the above second disputed term/phrase simply means “a weir… capable of easing or
`
`helping to bring about the substantially uniform recovery (of the dielectric fluid flowing through
`
`each appliance slot).” Again, in my opinion, a POSA should have no problem understanding the
`
`meaning of this phrase.
`
`48. I am informed that Immersion has taken the position that the above two terms/phrases
`
`found in various claims of the two patents-in-suit render the two patents to be indefinite.
`
`49. I understand that a patent is indefinite if its claims, read in light of the specification and the
`
`prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope
`
`of the invention. It is my opinion that there is nothing in the above two phrases that fail to inform
`
`a POSA about the scope of the claimed invention with reasonable certainty. Indeed, as
`
`demonstrated above, the proper meaning of these two phrases is simple to understand.
`
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`PGR 2021-00104 (U.S. 10,820,446 B2)
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`Immersion Systems LLC – Ex. 1022
`PGR 2021-00104 (