IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF TEXAS
`FORT WORTH DIVISION
`
`MIDAS GREEN TECHNOLOGIES, LLC
`
`Plaintiff,
`
`v.
`
`IMMERSION SYSTEMS LLC
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Case No. 4:20-cv-00555-O
`
`Judge Reed O’Connor
`
`DECLARATION OF DR. ISSAM MUDAWAR ON
`DISPUTED CLAIM TERMS
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by Immersion Systems LLC (“Immersion”) through my
`
`consulting business, Mudawar Thermal Systems, Inc., in connection with the above captioned
`
`litigation (“Litigation”) brought by Midas Green Technologies, LLC (“MGT”).
`
`2.
`
`I make this declaration (“Declaration”) based upon my personal knowledge. The
`
`statements herein include my opinions and the bases for those opinions.
`
`3.
`
`I understand that in the Litigation, MGT has asserted claims of patent infringement
`
`of U.S. Patent No. 10,405,457 (the “‘457 Patent”) and U.S. Patent No. 10,820,446 (the “‘446
`
`Patent,” collectively the “Patents-in-Suit”).
`
`4.
`
`I understand that in the Litigation, MGT has asserted that Immersion has infringed
`
`upon Claims 1, 5, 6, 10, 11, and 14 of the ‘457 Patent, and Claims 1, 5, 6, and 10 of the ‘446 Patent
`
`(collectively, the “Claims-in-Suit”).
`
`5.
`
`Immersion has requested that I provide this Declaration in support of certain of its
`
`claim construction positions with regards to the Claims-in-Suit within the Litigation, namely, how
`
`a person of ordinary skill in the art (“POSITA”) would interpret certain disputed terms in the
`
`1
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`1 of 54
`
`

`

`Claims-in-Suit. I reserve the right to supplement this Declaration if and when new information
`
`becomes available after this Declaration is signed, including, but not limited to, additional
`
`discovery or documents, opinions of the Court, and the opinions and testimony of other experts or
`
`witnesses in the Litigation, including in connection with claim construction. I reserve the right to
`
`respond to any opinions offered by other experts and to any testimony offered at trial. I reserve the
`
`right to create graphics or demonstratives to support my opinions if called to testify at a hearing.
`
`6.
`
`I am being compensated for my time at my standard hourly consulting rate in 2021
`
`of $372.90 per hour, which is based upon a direct labor fee of $200 per hour and multiplied by the
`
`overhead and general and administrative rates approved by the Department of Defense Contract
`
`Audit Agency (DCAA) which I apply to all engagements.
`
`7.
`
`8.
`
`I do not have a conflict of interest with respect to Immersion or MGT.
`
`I am over the age of eighteen and competent to make this Declaration.
`
`II. QUALIFICATIONS
`
`9.
`
`I am a mechanical engineer with over forty years of experience in fluid mechanics,
`
`thermodynamics, heat transfer, and immersion cooling. I received my BS in Mechanical
`
`Engineering in 1978 from the American University of Beirut. Subsequently, I received my MS in
`
`1980 and my Ph.D. in 1984 from the Massachusetts Institute of Technology (MIT).
`
`10.
`
`I joined the School of Mechanical Engineering at Purdue University in 1984 as an
`
`Assistant Professor. I was subsequently promoted to an Associate Professor in 1989 and a full
`
`Professor in 1993. In 2015 I was appointed as the Betty Ruth and Milton B. Hollander Family
`
`Professor of Mechanical Engineering, a career professorship named for outstanding research
`
`accomplishments.
`
`11.
`
`Since joining Purdue University, I have founded two groups aimed at advancing
`
`the field of high-density electronics cooling through immersion cooling. In 1984 I founded the
`
`
`
`2
`
`
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`2 of 54
`
`

`

`Purdue University Two-Phase Flow Laboratory (PU-IECA), and the Purdue University
`
`International Electronic Cooling Alliance (PU-IECA).
`
`12.
`
`During my time as a Professor, I have taught classes on the fundamentals of heat
`
`transfer, engineering design of cooling systems, and boiling and immersion cooling. I also have
`
`directly supervised over 75 Ph.D. and M.S. students and Visiting Scholars, as well as written 4
`
`handbooks, 257 archival journal papers, 9 book chapters, and numerous conference papers and
`
`technical reports. The vast majority of the aforementioned publications are directed to immersion
`
`cooling of electronics.
`
`13. My work in immersion cooling of high-power electronics in computers, data
`
`centers, hybrid vehicle power electronics, aircraft avionics, spacecraft avionics, and defense
`
`electronics has earned me numerous honors and awards, including: (a) the American Society of
`
`Gravitational Space Research (ASGSR) “Founder’s Award” in 2013, (b) the American Society of
`
`Mechanical Engineers (ASME) “Heat Transfer Memorial Award” in 2013, (c) 75th Anniversary
`
`Medal from the ASME Heat Transfer Division in 2013, (d) being named a Thomson Reuters
`
`“Highly Cited Researcher” and on Thomson Reuters’ list of “The World’s Most Influential
`
`Scientific Minds” in 2015, (e) American Institute of Aeronautics and Astronautics (AIAA) Space
`
`Processing Award in 2019, and (f) ASME Allan Kraus Thermal Management Medal in 2021.
`
`14.
`
`I also am presently the President of Mudawar Thermal Systems Inc., which was
`
`founded in 1992, through which I provide consulting services primarily relating to: (a) research
`
`and development of liquid cooling systems for computer and aerospace electronics; (b) research
`
`and development of phase-change (boiling and condensation) devices and systems; (c) thermal
`
`testing and obtaining heat transfer data for customers; (d) modeling and analysis of complex
`
`
`
`3
`
`
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`3 of 54
`
`

`

`thermal systems; and (e) design, fabrication, and instrumentation of high-heat-flux heaters and
`
`thermal test facilities.
`
`15.
`
`During my over forty years in the practice of research and development I have
`
`engaged in a number of projects which have provided me with relevant experience and expertise
`
`in the foundational technology and industry within the scope of the Patents-in-Suit.
`
`16.
`
`For example, I have performed research and development in the area of immersion
`
`cooling of electronics for an array of different business and governmental entities, including, IBM,
`
`3M Company, McDonnell Douglas, Raytheon, Ford, CTS Microelectronics, the National Science
`
`Foundation, the Naval Air Warfare Center, the Air Force Office of Scientific Research, the U.S.
`
`Department of Energy, NASA, the Air Force Research Laboratory, the Office of Naval Research,
`
`Motorola, Intel Corporation, Advance Micro Devices, Delta Design, Wakefield Engineering,
`
`Rolls-Royce, Northrop Grumman, the U.S. Navy, the Ballistic Missile Defense Organization, the
`
`Office of Secretary of Defense, the National Renewable Energy Laboratory, and the Missile
`
`Defense Agency.
`
`17.
`
`During the previous 4 years, I have not served in any other cases or litigations as
`
`an expert at trial or by deposition.
`
`18.
`
`A copy of my Curriculum Vitae, which contains further details on my education,
`
`experience, publications, including a list of all publications I have authored in the previous 10
`
`years, and other qualifications to render an expert opinion, is attached as Exhibit 1.
`
`III. MATERIALS CONSIDERED
`
`19.
`
`In connection with this Declaration, I considered the following materials related to
`
`the Patents-in-Suit:
`
`A.
`
`B.
`
`The ‘457 Patent. (See MGT000853-867).
`
`The Prosecution History of the ‘457 Patent. (See MGT00001-579).
`
`
`
`4
`
`
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`4 of 54
`
`

`

`C.
`
`D.
`
`The ‘446 Patent. (See Dkt. 34-2).
`
`The Prosecution History of the ‘446 Patent. (See MGT000580-698).
`
`20.
`
`Finally, in forming my opinions in this Declaration, I also drew upon my research
`
`and experience in the field of art implicated by the Patents-in-Suit, including fluid mechanics,
`
`thermodynamics, heat transfer, and immersion cooling.
`
`IV.
`
`STATEMENT OF OPINIONS
`
`A.
`
`21.
`
`Level of Ordinary Skill in the Art
`
`I have been asked to provide my opinion about the experience and background of
`
`a POSITA of the Patents-in-Suit at the time the claimed inventions were made, that is between the
`
`filing date of the first provisional application, December 14, 2012, and the filing date accorded to
`
`the ‘457 Patent on December 13, 2013.
`
`22.
`
`As such, for the purposes of this Declaration, I consider December 2012–December
`
`2013 to be the “Relevant Period.”
`
`23.
`
`I considered several factors to determine the skill level of a POSITA of the Patents-
`
`in-Suit as of the Relevant Period including the types of problems encountered in the art, the
`
`solutions to those problems, the pace of innovation in the field, the sophistication of the technology,
`
`and the education level of active workers in the field.
`
`24.
`
`In my opinion a POSITA, as of the Relevant Period, would have had either a (a)
`
`Bachelor’s degree in mechanical engineering, or an equivalent degree, with five years of liquid
`
`cooling systems experience including responsibility for designing such systems, or (b) Master’s
`
`Degree in mechanical engineering, or an equivalent degree, including liquid cooling systems
`
`research and system design. A POSITA would also have had, through education or experience,
`
`familiarity, in particular, with immersion cooling systems. Additional education could
`
`compensate for less practical experience and vice versa.
`
`
`
`5
`
`
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`5 of 54
`
`

`

`25.
`
`Based on my education and experience, I meet this definition of one with ordinary
`
`skill in the art, and I believe that I am qualified to provide opinions about how a POSITA at the
`
`relevant time would have interpreted and understood the Patents-in-Suit.
`
`26.
`
`Specifically, I meet this definition because I hold a Ph.D. in mechanical engineering
`
`from MIT and have extensive familiarity with liquid cooling systems, including immersion cooling
`
`systems, through both my education and work experience. See Section II.
`
`27.
`
`Although my qualifications and experience exceed those of a POSITA, both in
`
`Relevant Period and today, I have nevertheless applied the perspective of a POSITA in rendering
`
`my opinions below. My opinions below explain how a POSITA would have understood the
`
`technology described in the Patents-in-Suit and the Relevant Period.
`
`B.
`
`“Weir…Having An Overflow Lip Adapted To Facilitate Substantially
`Uniform Recovery…” And “Weir… Adapted To Facilitate Substantially
`Uniform Recovery…”
`
`28.
`
`I have been asked to review the Claims-in-Suit and offer my opinion as to how a
`
`POSITA would understand the meaning of and any difference between the claim phrases
`
`“weir…having an overflow lip adapted to facilitate substantially uniform recovery” and
`
`“weir…adapted to facilitate substantially uniform recovery” with reasonable certainty so as to
`
`avoid infringement.
`
`i.
`
`Requirements of 35 U.S.C. § 112(b)
`
`29.
`
`I understand from counsel for Immersion that: (a) 35 U.S.C. § 112(b) requires the
`
`inventor to “particularly point[] out and distinctly claim[] the subject matter” which the inventor
`
`claims as the invention; (b) to satisfy 35 U.S.C. § 112(b), the scope of the claimed invention must
`
`be distinctly claimed so as to inform a POSITA the scope of the invention with reasonable
`
`certainty; (c) the purpose of this statute is to ensure a POSITA would understand where the claimed
`
`invention ends so that a POSITA may avoid infringement; and (d) claim terms which do not meet
`
`
`
`6
`
`
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`6 of 54
`
`

`

`this requirement are referred to as being indefinite.
`
`30. While I also understand from counsel for Immersion that 35 U.S.C. § 112(a)
`
`requires the inventor to set forth a written description of the invention such that the “manner and
`
`process of making and using it” is “full, clear, concise, and exact” so as to “enable any person
`
`skilled in the art to which it pertains,” I have not been requested to provide an opinion on this in
`
`the current Declaration. Rather, counsel for Immersion has informed me that they may have me
`
`assist in such analysis in a future report or declaration within this Litigation in accordance with the
`
`Court’s schedule.
`
`ii.
`
`Prosecution History of the ‘457 Patent
`
`31.
`
`I understand from counsel for Immersion that the prosecution history is particularly
`
`relevant to determining if claims are indefinite.
`
`32.
`
`It is my understanding that during the prosecution of the ‘457 Patent, on January
`
`31, 2017, the applicant amended its application to add the “overflow lip” element found in Claims-
`
`in-Suit 1, 5, 6, and 10 of the ‘457 Patent. (See MGT000149-55). It is also my understanding that
`
`applicant added this “overflow lip” element in an attempt to overcome the Examiner’s November
`
`4, 2016 Office Action which asserted that the Pfahnl reference taught the claimed “weir”. (See
`
`MGT000149-55; MGT000162-68).
`
`33.
`
`Additionally, it is my understanding that the applicant asserted that support for its
`
`amendment could be found in Paragraph [0029], which I understand from counsel for petitioner
`
`directs the Examiner to Paragraph [0029] of the applicant’s foreign patent application
`
`PCT/US2013/075126. (See MGT000155).
`
`34.
`
`Paragraph [0029] reads as follows:
`
`
`
`7
`
`
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`7 of 54
`
`

`

`
`
`
`
`
`
`8
`
`
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`8 of 54
`
`

`

`
`
`(See MGT000222-23).
`
`35.
`
`Based on my review of Paragraph [0029], it is my opinion that a POSITA would
`
`not understand there to be any description in that paragraph of what an overflow lip is and how it
`
`would be “adapted to facilitate substantially uniform recovery of the dielectric fluid flowing
`
`through each appliance slot.” (emphasis added), as applicant does not provide any description of
`
`the “overflow lip” and its characteristics, including how it has been “adapted to facilitate
`
`substantially uniform recovery of the dielectric fluid.”
`
`36.
`
`It is my understanding that the discussion in Paragraph [0029] related to uniform
`
`dielectric fluid flow relates to the plenum, not the weir. (See MGT000223, ¶ [0029], "In general,
`
`the plenum plate 36a comprises at least one row of orifices vertically aligned with each appliance
`
`slot 18a, with the dimensions and flow rates of each set being adapted to provide substantially
`
`equal flow of the dielectric fluid upwardly into each appliance slot 18a. Preferably, each appliance
`
`slot 18a is supplied via several rows of orifices, thus generally tending to reduce the volume of the
`
`dielectric fluid exiting each orifice and to make the flow of dielectric fluid more uniform upwardly
`
`through the appliance slots 18.") (emphasis added). Instead, in that paragraph, the term “overflow
`
`lip” is used only to describe the position of the dielectric fluid recovery reservoir with respect to
`
`the weir. (See MGT000223 ¶ [0029], "One further shared component is the dielectric fluid
`
`recovery facility 40 (Fig. 2) comprising a dielectric fluid recovery reservoir 42 (see, Fig. 3, Fig. 4
`
`and Fig. 13) positioned vertically beneath the overflow lip of the weir 22 and adapted smoothly to
`
`receive the dielectric fluid as it flows over the weir 22; the dielectric fluid recovery reservoir 42 is
`
`further adapted to allow the recovered fluid to be removed from the reservoir 42 via redundant
`
`
`
`9
`
`
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`9 of 54
`
`

`

`recovery ports 44a and 44b (only port 44a can be seen in Fig. 2 as the port 44b is obscured by the
`
`heat exchanger 32a; but see Fig. 12)." (emphasis added).
`
`37.
`
`I understand that the Examiner in his Office Action on June 11, 2008, identified
`
`that even with respect to the dielectric fluid recovery facility 42, there is no description as to how
`
`it is "adapted smoothly to receive the dielectric fluid as it flows over the weir," thus rejecting the
`
`claims under 35 U.S.C. §112(b). (See MGT000038-47). The applicant then amended the claims
`
`to remove the word “smoothly,” but never explained what that term meant. (See MGT000029). If
`
`a POSITA were to consider the applicant’s acceptance of the Examiner’s point (that the term
`
`“smoothly” does not provide reasonable certainty), then such a POSITA would similarly lack
`
`reasonable certainty as to how the claimed weir or overflow lip is adapted to facilitate substantially
`
`uniform recovery of the dielectric fluid. Figures 3 and 12 confirm that the element 42 "adapted
`
`smoothly" is the reservoir itself:
`
`(See MGT000237).
`
`
`
`
`
`10
`
`
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`10 of 54
`
`

`

`
`
`(See MGT000241).
`
`38.
`
`It is my understanding that on May 17, 2017, the Examiner rejected applicant’s
`
`argument that the addition of “overflow lip” to the claims distinguished the Pfahnl reference,
`
`pointing out that the “overflow lip” element was merely the “bottom surface” of applicant’s “weir”.
`
`(See MGT000144-45). It is my opinion that a POSITA, given their familiarity with immersion
`
`cooling systems including the flow of liquid over a weir, would understand and agree with the
`
`Examiner’s analysis that the “overflow lip” element in applicant’s “weir” is merely the “bottom
`
`surface” of the “weir”. I also understand that in this rejection, the Examiner invited the applicant
`
`to identify any further structural limitation associated with applicant’s “weir”. (See MGT000145).
`
`To my knowledge, applicant did not identify any further structural limitation.
`
`39.
`
`Finally, of particular relevance to my analysis below, it is my understanding that
`
`the applicant did not add this “overflow lip” element to Claims-in-Suit 11 or 14 of the ‘457 Patent
`
`(see MGT000100-08), nor any Claims-in-Suit from the ‘446 Patent (see 34-2, p. 15).
`
`
`
`11
`
`
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`11 of 54
`
`

`

`iii.
`
`The Meaning of and Difference Between a “Weir…adapted to facilitate
`substantially uniform recovery….” and a “Weir…having an overflow
`lip adapted to facilitate substantially uniform recovery…” is Not
`Reasonably Certain
`
`40.
`
`I understand from counsel for Immersion that in claim construction, absent
`
`evidence to the contrary, claim terms are presumed to have meaning, and that different terms are
`
`presumed to have different meanings.
`
`41.
`
`I also understand from counsel that claim terms having different meanings is a
`
`different concept than claim terms corresponding to different structures.
`
`42.
`
`I am not aware of any evidence that the applicant intended the terms
`
`“weir…adapted” and “weir…having an overflow lip adapted” to have the same meaning. Rather,
`
`the applicant indicated that they believed an “overflow lip” so adapted would distinguish the
`
`invention from Pfahnl where the “weir” so adapted would not, or would be less likely to,
`
`distinguish from Pfahnl.
`
`43.
`
`Upon review of the ‘457 Patent, I understand that Claims-in-Suit 1, 5, 6, and 10
`
`state: “a weir…having an overflow lip adapted to facilitate substantially uniform recovery….” (See
`
`MGT000866). Upon review of Claims-in-Suit 11 and 14 of the ‘457 Patent, and all Claims-in-Suit
`
`of the ‘446 Patent, I understand these Claims-in-Suit to state: “a weir…adapted to facilitate
`
`substantially uniform recovery….” (See MGT000866-67; ‘466 Patent Claims 1, 5, 6, and 10).
`
`44.
`
`It is my opinion that a POSITA during the Relevant Period would understand that
`
`the applicant’s assertion that a “weir… having an overflow lip adapted to facilitate substantially
`
`uniform recovery of the dielectric fluid” was a specific attempt to distinguish the invention over
`
`that of the prior art cited by the Examiner, and as such, the “overflow lip” was meant to connote
`
`an important distinction. Additionally, a POSITA would understand that this attempt to distinguish
`
`the claimed weir from the prior art was an attempt to draw the boundaries of what is claimed and
`
`
`
`12
`
`
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`12 of 54
`
`

`

`what is not claimed by the invention with reasonable certainty.
`
`45.
`
`However, the applicant never explained this distinction, even after the Examiner
`
`requested the applicant do so.
`
`46.
`
`Additionally, the “overflow lip” is only referenced once in the specification of each
`
`of the patents (‘457 Patent, see MGT000863, 4:30-32; ‘446 Patent, see Dkt. 34-2, 4:32-34). Even
`
`more, the passing mention of “overflow lip” is only used to describe the position of the dielectric
`
`fluid recovery reservoir with respect to the weir, but fails to provide any details concerning the
`
`characteristics of the “overflow lip.”
`
`47.
`
`Further, because the applicant failed to include the “overflow lip” limitation in the
`
`Claims-in-Suit 11 and 14 of the ‘457 Patent, and all Claims-in-Suit of the ‘446 Patent, it is my
`
`opinion that a POSITA at the Relevant Period would lack reasonable certainty as to the meaning
`
`of the phrases a “weir…adapted to facilitate substantially uniform recovery…”, and
`
`“weir…having an overflow lip adapted to facilitate substantially uniform recovery…,” and how
`
`they differ, so as to understand the scope of the claims in order to, for example, avoid infringement.
`
`iv.
`
`“adapted to facilitate substantially uniform recovery…”
`
`48.
`
`As discussed above, it is my understanding that applicant identified the
`
`“overflow lip” as the part of the weir that has been “adapted to facilitate substantially uniform
`
`recovery.” (See MGT000155). However, because the “overflow lip” element is absent from certain
`
`claims, it is my opinion that a POSITA would not understand what within “weir…adapted to
`
`facilitate substantially uniform recovery” found in Claims-in-Suit 11 and 14 of the ‘457 Patent,
`
`and Claims-in-Suit 1, 5, 6, and 10 of the ‘446 Patent has been “adapted to facilitate substantially
`
`uniform recovery….”
`
`49.
`
`Additionally, I am not aware of any further description within the Patents-in-Suit,
`
`the ‘457 Prosecution History, or the ‘446 Prosecution History describing how “weir” and/or
`
`
`
`13
`
`
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`13 of 54
`
`

`

`“overflow lip” have been “adapted to facilitate substantially uniform recovery.” Further, it is my
`
`understanding that the Examiner requested applicant to “point out” further “structural limitations”
`
`that should be associated with the term “weir” (see MGT000145), but to my knowledge, applicant
`
`never added any further limitations.
`
`50.
`
`As such, it is my opinion a POSITA, at the Relevant Period, would not understand
`
`the applicant’s meaning for either a “weir…having an overflow lip adapted to facilitate
`
`substantially uniform recovery” (Claims 1, 5, 6, and 10 of the ‘457 Patent) (emphasis added) or a
`
`“weir…adapted to facilitate substantially uniform recovery” (Claims 11 and 14 of the ‘457
`
`Patent, and Claims 1, 5, 6, and 10 of the ‘446 Patent) (emphasis added) with reasonable certainty.
`
`C. MGT’s Proposed Alternative Constructions Do Not Cure the Lack of
`Reasonable Certainty Necessary for POSITA to Understand the Scope of the
`Claims
`
`51.
`
`I understand from counsel for Immersion that MGT proposes that a “weir…having
`
`an overflow lip adapted to facilitate substantially uniform recovery” and a “weir…adapted to
`
`facilitate substantially uniform recovery” are not indefinite and are fully supported by the
`
`specification such that they should be afforded their ordinary and customary meaning. For the
`
`purposes of this Declaration, I have been requested by counsel for Immersion to provide my
`
`opinion as to whether these alternative constructions are appropriate and to explain how a POSITA
`
`would have understood the claim terms with reasonable certainty.
`
`52.
`
`As I explained in Section IV.B.ii-iv above, a POSITA, at the Relevant Period,
`
`would lack reasonable certainty as to the meaning of the phrases “a weir…adapted to facilitate
`
`substantially uniform recovery…”, and “a weir…having an overflow lip adapted to facilitate
`
`substantially uniform recovery…,” and how they differ, so as to avoid infringement. It is my
`
`opinion that the same analysis would apply to MGT’s proposed alternative constructions and lead
`
`to the same conclusion.
`
`
`
`14
`
`
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`14 of 54
`
`

`

`53.
`
`In particular, I understand that, with regards to the “weir…having an overflow lip
`
`adapted to facilitate substantially uniform recovery,” (emphasis added), MGT has proposed an
`
`alternative construction such that the “overflow lip” portion of the claim term be construed as an
`
`“overflow edge or boundary of the weir.” (See Joint Claim Construction and Prehearing
`
`Statement, Section III) (emphasis added).
`
`54.
`
`In my opinion a POSITA at the Relevant Period would lack reasonable certainty as
`
`to the meaning of and difference between a “weir…having an overflow edge or boundary of the
`
`weir…” (emphasis added) and a “weir” without an “overflow edge or boundary of the weir…”
`
`(emphasis added) so as to understand the boundaries of the claims and be able to avoid
`
`infringement.
`
`55.
`
`I understand that with regards to a “weir…having an overflow lip adapted to
`
`facilitate substantially uniform recovery” (emphasis added) and a “weir…adapted to facilitate
`
`substantially uniform recovery” (emphasis added), MGT has proposed an alternative construction
`
`that the “adapted to facilitate substantially uniform recovery” language of the claim term be
`
`construed as “capable of easing or helping.” (Id.) (emphasis added.)
`
`56.
`
` In my opinion, a POSITA at the Relevant Period would lack reasonable certainty
`
`as to how the claimed “weir” or “overflow lip” is “capable of easing or helping” (emphasis added)
`
`the “substantially uniform recovery of the dielectric fluid” so as to avoid infringement. There is no
`
`explanation in the prosecution history or the specification of the ‘457 Patent or the ‘446 Patent as
`
`to how the “weir” or “overflow lip” is “capable of easing or helping” (emphasis added) with the
`
`“substantially uniform recovery of the dielectric fluid,” and MGT has not identified any. To the
`
`extent any such identifications are offered later, I reserve my right to respond.
`
`
`
`
`
`15
`
`
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`15 of 54
`
`

`

`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`Executed this 6th day of July 2021, in West Lafayette, Indiana..
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`______________________
`Dr. Issam Mudawar
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`16 of 54
`
`

`

` CERTIFICATE OF SERVICE
`
`I, Alexander G. Karl, an attorney for Immersion Systems LLC, hereby certify that on July
`6, 2021, I caused the Declaration of Dr. Issam Mudawar on Disputed Claim Terms to be served
`on Plaintiff through its’ counsel of record by email to the following:
`
`
`Artie Pennington
`State Bar No. 24090324
`e-Mail: aapennington@hpkdlaw.com
`Hunt Pennington Kumar & Dula, PLLC
`609 Castle Ridge Rd., Ste. 315
`Austin, TX 78746
`Telephone: (512) 766-6082
`Facsimile: (512) 233-2699
`
`
`Dated: July 6, 2021
`
`
`
`
`
`Respectfully submitted,
`
`
`
`By:
`
`
`
`
`
`
`
`/s/ Alexander G. Karl
`Peter M. Spingola
`(Admitted Pro Hac Vice)
`Illinois Bar No. 6243942
`E-Mail: pspingola@chapmanspingola.com
`Alexander Karl
`(Admitted Pro Hac Vice)
`Illinois Bar No. 6329903
`E-Mail: akarl@chapmanspingola.com
`Suhani Mehrotra
`(Admitted Pro Hac Vice)
`E-Mail: smehrotra@chapmanspingola.com
`CHAPMAN SPINGOLA, LLP
`190 South LaSalle Street, Suite 3850
`Chicago, IL 60603
`Telephone:
`(312) 630-9202
`Facsimile:
`(312) 630-9233
`
`-and-
`
`Kenneth C. Riney
`Texas Bar No. 24046721
`E-Mail: kriney@krcl.com
`Andrew D. Robertson
`Texas Bar No. 24090845
`E-Mail: drobertson@krcl.com
`
`KANE RUSSELL COLEMAN LOGAN PC
`
`
`
`
`
`
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`17 of 54
`
`

`

`
`
`
`
`
`
`
`
`
`901 Main Street, Suite 5200
`Dallas, Texas 75202
`Telephone:
`(214) 777-4200
`Facsimile:
`(214) 777-4299
`
`COUNSEL FOR DEFENDANT
`IMMERSION SYSTEMS LLC
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`18 of 54
`
`

`

`EXHIBIT 1 – CV OF DR. ISSAM MUDAWAR
`
`
`
`
`
`
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`19 of 54
`
`

`

`
`
`
`
`
`Professional Vita (updated June 2021)
`
`ISSAM MUDAWAR
`(Formerly Issam Mudawwar)
`
`Purdue University
`School of Mechanical Engineering
`585 Purdue Mall
`West Lafayette, IN 47907-2088
`Tel: (765) 494-5705
`Fax: (765) 494-0539
`E-mail: mudawar@ecn.purdue.edu
`Web Pages: https://engineering.purdue.edu/mudawar
`
`
`PERSONAL:
`
`
`EDUCATION:
`1980-1984
`
`1978-1980
`
`1974-1978
`
`
`EXPERIENCE:
`2015-present
`2014-2016
`2000-2001
`1993-2015
`1992-present
`1989-1993
`1984-1989
`1984-present
`
`1984-present
`
`
`
`CITATION RECORD:
`ISI:
`ISI:
`
`Google Scholar:
`
`
`American Citizen
`Wife: Jane Ausman-Mudawar, daughter: Alexine
`
`
`Massachusetts Institute of Technology - Cambridge, Massachusetts: Ph.D. in Mechanical
`Engineering, with minor in Management received February 1984; thesis entitled "Boiling
`Heat Transfer in Rotating channels with Reference to Gas Turbine Blade Cooling"
`Massachusetts Institute of Technology - Cambridge, Massachusetts: M.S. in Mechanical
`Engineering received May 1980; thesis entitled "Transverse Waves in MHD Slag Flows"
`American University of Beirut, Lebanon: B.E. in Mechanical Engineering received June
`1978
`
`Betty Ruth and Milton B. Hollander Family Professor of Mechanical Engineering
`Chairman, Heat Transfer Area, Purdue University
`Chairman, Heat Transfer Area, Purdue University
`Professor of Mechanical Engineering, Purdue University, West Lafayette, Indiana
`President, Mudawar Thermal Systems Inc., West Lafayette, Indiana
`Associate Professor of Mechanical Engineering, Purdue University
`Assistant Professor Mechanical Engineering, Purdue University
`Founder and Director of the Purdue University International Electronic Cooling Alliance
`(PUIECA)
`Founder and Director of the Purdue University Boiling and Two-Phase Flow Laboratory
`(BTPFL)
`
`Thomson Reuters Highly Cited Researcher, 2015
`Included in Thomson Reuters list of “The World’s Most Influential Scientific Minds
`2015”
`23,942 citations, h-index: 94
`
`PROFESSIONAL BACKGROUND:
`
`Immersion Systems LLC – Ex. 1024
`PGR 2021-00104 (U.S. 10,820,446 B2)
`20 of 54
`
`

`

`
`
`-2-
`
`Since joining Purdue University in 1984, Prof. Issam Mudawar founded both the Purdue University Boiling and
`Two-Phase Flow Laboratory (PU-BTPFL) and the Purdue University International Electronic Cooling Alliance (PU-
`IECA). He also served as principal investigator for NASA’s Flow Boiling and Condensation Experiment (FBCE)
`for the International Space Station (ISS) and co-principal investigator for both the Rolls Royce Purdue University
`Center in High Mach Propulsion and the Hydrogen Storage Laboratory. He has supervised over 75 Ph.D. and M.S.
`students and Visiting Scholars, and written 4 handbooks, 240 archival journal papers, 9 book chapters, and
`numerous conference papers and technical reports. He is also a Thomson Reuters Highly Cited Researcher. He has
`made signification contributions to ASME, AIAA, ASGSR and other engineering societies in the capacity of
`keynote speaker, author, reviewer and conference session chair.
`Prof. Mudawar is internationally recognized for his theoretical and experimental research on phase change
`mechanisms and applications in energy, intelligent materials processing, space and electronics thermal management.
`Following are brief descriptions of his contributions in each of these areas.
`Theoretical Two-Phase Research: His theoretical research encompasses virtually every aspect of phase change.
`Examples include theory of initiation of nucleate boiling, critical heat flux (CHF), minimum film boiling point,
`contact angle, turbulence in the vicinity of moving interfaces, pool boiling, wavy falling films, thin film
`condensation, heating, evaporation and boiling, channel flow boiling, flow boiling on curved surfaces, boiling in
`rotating systems, droplet impact dynamics, sprays, jets, and enhanced surfaces. He is also credited for auth