UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IMMERSION SYSTEMS LLC,
`Petitioner,
`
`v.
`
`MIDAS GREEN TECHNOLOGIES, LLC,
`Patent Owner.
`
`
`Case No. PGR2021-00104
`Patent No. 10,820,446
`
`PETITION FOR POST GRANT REVIEW
`
`

`

`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ................................................................................ vi
`
`LIST OF EXHIBITS ............................................................................................. vii
`
`I. Relief Requested ............................................................................................... 1
`
`II.
`
`Identification of Challenge and Statement of Precise Relief Requested .... 2
`
`III.
`
`The '446 Patent ............................................................................................. 3
`
`A. Background of the Art.................................................................................... 3
`
`B. The Prosecution of the '446 Patent ................................................................ 4
`
`1. The '446 Patent is Not Entitled to its Claimed Priority Dates ................... 4
`
`2. Ex Parte Prosecution .................................................................................. 6
`
`C. Level of Ordinary Skill in the Art ................................................................10
`
`IV. Claim Construction ....................................................................................10
`
`V. The Challenged Claims are Unpatentable and Should Be Cancelled .......13
`
`A. Ground 1: Claims 1, 5, 6, and 10 are rendered Obvious by Best in view of
`Krajewski and/or Cray. ........................................................................................13
`
`1. Claim 1 .....................................................................................................14
`
`i. Preamble 1[pre]: “An appliance immersion cooling system comprising:”
`
`14
`
`ii. Limitation 1[a]: “a tank adapted to immerse in a dielectric fluid a
`plurality of electrical appliances,” ...............................................................14
`
`Limitation 1[b]: “each in a respective appliance slot distributed
`iii.
`vertically along, and extending transverse to, a long wall of the tank,” ......15
`
`Limitation 1[c]: “the tank comprising: a weir, integrated horizontally
`iv.
`into the long wall of the tank adjacent all appliance slots, adapted to facilitate
`substantially uniform recovery of the dielectric fluid flowing through each
`appliance slot;” .............................................................................................16
`
`
`
`i
`
`

`

`
`
`
`
`v. Limitation 1[d]: “a primary circulation facility adapted to circulate the
`dielectric fluid through the tank, comprising: a plenum, positioned adjacent
`the bottom of the tank, adapted to dispense the dielectric fluid substantially
`uniformly upwardly through each appliance slot;” .....................................21
`
`Limitation 1[e]: “a secondary fluid circulation facility adapted to
`vi.
`extract heat from the dielectric fluid circulating in the primary circulation
`facility, and to dissipate to the environment the heat so extracted; and” ....24
`
`vii. Limitation 1[f]: “a control facility adapted to coordinate the operation
`of the primary and secondary fluid circulation facilities as a function of
`temperature of the dielectric fluid in the tank.” ...........................................26
`
`2. Claim 5: “The system of claim 1 wherein the control facility further
`comprises a communication facility adapted to facilitate monitoring and control
`of the control facility from a remote location.” ...............................................28
`
`3. Claim 6 .....................................................................................................29
`
`4. Claim 10: “10. The module of claim 6 wherein the control facility further
`comprises a communication facility adapted to facilitate monitoring and control
`of the control facility from a remote location.” ...............................................30
`
`5. Rationale and Motivation to Combine Best with Krajewski or Cray ......30
`
`B. Ground 2: Claims 1, 5, 6, and 10 are rendered obvious by Best in Light of
`Oktay. ...................................................................................................................35
`
`1. Claim 1 .....................................................................................................35
`
`system
`immersion cooling
`i. Limitation 1[pre]: “An appliance
`comprising:” .................................................................................................35
`
`ii. Limitation 1[a]: “a tank adapted to immerse in a dielectric fluid a
`plurality of electrical appliances” ................................................................36
`
`Limitation 1[b]: “each in a respective appliance slot distributed
`iii.
`vertically along, and extending transverse to, a long wall of the tank” .......36
`
`Limitation 1[c]: “the tank comprising: a weir, integrated horizontally
`iv.
`into the long wall of the tank adjacent all appliance slots, adapted to facilitate
`substantially uniform recovery of the dielectric fluid flowing through each
`appliance slot” ..............................................................................................37
`
`ii
`
`

`

`
`
`
`
`v. Limitation 1[d]: “a primary circulation facility adapted to circulate the
`dielectric fluid through the tank, comprising: a plenum, positioned adjacent
`the bottom of the tank, adapted to dispense the dielectric fluid substantially
`uniformly upwardly through each appliance slot” .......................................39
`
`Limitation 1[e]: “a secondary fluid circulation facility adapted to
`vi.
`extract heat from the dielectric fluid circulating in the primary circulation
`facility, and to dissipate to the environment the heat so extracted” ............39
`
`vii. Limitation 1[f]: “a control facility adapted to coordinate the operation
`of the primary and secondary fluid circulation facilities as a function of the
`temperature of the dielectric fluid in the tank.” ...........................................39
`
`2. Claim 5: “5. The system of claim 1 wherein the control facility further
`comprises a communication facility adapted to facilitate monitoring and control
`of the control facility from a remote location.” ...............................................40
`
`3. Claim 6 .....................................................................................................40
`
`4. Claim 10: “10. The module of claim 6 wherein the control facility further
`comprises a communication facility adapted to facilitate monitoring and control
`of the control facility from a remote location.” ...............................................41
`
`5. Rationale and Motivation to Combine Best with Oktay ..........................41
`
`C. Ground 3: Claims 1, 5, 6, and 10 are rendered obvious by Best in view of
`Gryzhin. ................................................................................................................45
`
`1. Claim 1 .....................................................................................................45
`
`system
`immersion cooling
`i. Limitation 1[pre]: “An appliance
`comprising:” .................................................................................................45
`
`ii. Limitation 1[a]: “a tank adapted to immerse in a dielectric fluid a
`plurality of electrical appliances,” ...............................................................45
`
`Limitation 1[b]: “each in a respective appliance slot distributed
`iii.
`vertically along, and extending transverse to, a long wall of the tank,” ......46
`
`Limitation 1[c]: “the tank comprising: a weir, integrated horizontally
`iv.
`into the long wall of the tank adjacent all appliance slots, adapted to facilitate
`substantially uniform recovery of the dielectric fluid flowing through each
`appliance slot;” .............................................................................................47
`
`iii
`
`

`

`
`
`v. Limitation 1[d]: “a primary circulation facility adapted to circulate the
`dielectric fluid through the tank, comprising: a plenum, positioned adjacent
`the bottom of the tank, adapted to dispense the dielectric fluid substantially
`uniformly upwardly through each appliance slot;” .....................................49
`
`Limitation 1[e]: “a secondary fluid circulation facility adapted to
`vi.
`extract heat from the dielectric fluid circulating in the primary circulation
`facility, and to dissipate to the environment the heat so extracted; and” ....50
`
`vii. Limitation 1[f]: “a control facility adapted to coordinate the operation
`of the primary and secondary fluid circulation facilities as a function of the
`temperature of the dielectric fluid in the tank.” ...........................................51
`
`2. Claim 5: “5. The system of claim 1 wherein the control facility further
`comprises a communication facility adapted to facilitate monitoring and control
`of the control facility from a remote location.” ...............................................52
`
`3. Claim 6 .....................................................................................................52
`
`4. Claim 10: “10. The module of claim 6 wherein the control facility further
`comprises a communication facility adapted to facilitate monitoring and control
`of the control facility from a remote location.” ...............................................53
`
`5. Rationale and Motivation to Combine Best with Gryzhin.......................53
`
`D. Ground 4: Claims 1, 5, 6, and 10 are rendered obvious by Best. ................55
`
`E. Ground 5: Claims 1, 5, 6 and 10 are invalid as indefinite pursuant to 35
`U.S.C. §112(b) .....................................................................................................57
`
`F. Ground 6: Claims 1, 5, 6 and 10 are invalid for lack of written description
`pursuant to 35 U.S.C. §112(a)..............................................................................65
`
`VI. Discretionary Non-Institution is Not Warranted ....................................67
`
`A. The Board Should Not Decline Institution Under §325(d) .........................67
`
`B. Discretionary Denial Under Fintiv is Not Warranted ..................................70
`
`VII. Mandatory Notices .....................................................................................71
`
`A. Real Parties in Interest .................................................................................71
`
`B. Related Matters ............................................................................................71
`
`
`
`iv
`
`

`

`
`
`C. Lead and Backup Counsel ...........................................................................71
`
`D. Service Information ......................................................................................72
`
`VIII. Fees ..............................................................................................................72
`
`IX.
`
`Standing ......................................................................................................72
`
`X. Certification Under 37 C.F.R. § 42.24(d) .....................................................72
`
`XI. Conclusion ...................................................................................................72
`
`
`
`
`
`
`
`
`v
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`Cases
`Agrinomix, LLC v. Mitchell Ellis Products, Inc., IPR2017-00525, Paper 6 (PTAB
`Jun. 14, 2017) .......................................................................................................67
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) ....................70
`
`Atl. Research Mktg. Sys., Inc. v. Troy, 659 F.3d 1345 (Fed. Cir. 2011) .................... 4
`
`Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722 (2002)
` ..............................................................................................................................59
`
`Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008) ....60
`
`Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014) ..............................59
`
`Nevro Corp. v. Boston Scientific Corporation, 955 F.3d 35 (Fed. Cir. 2020) ........60
`
`PowerOasis, Inc. v. T- Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008) .............. 4
`
`Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) ...............................11
`
`Univ. Of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916 (Fed. Cir. 2004) ......65
`
`Statutes
`§ 42.24(d) .................................................................................................................72
`
`35 U.S.C. § 102(a) (pre-AIA) .................................................................................... 2
`
`35 U.S.C. § 102(b) (pre-AIA) .................................................................................... 1
`
`35 U.S.C. § 102(e) (pre-AIA) ................................................................................1, 2
`
`35 U.S.C. §112(a) ....................................................................................................65
`
`35 U.S.C. §112(b) ....................................................................................................57
`
`37 C.F.R. § 42.15(a) .................................................................................................72
`
`37 C.F.R. § 42.24 .....................................................................................................72
`
`
`
`
`
`
`
`vi
`
`

`

`
`
`LIST OF EXHIBITS
`
`Exhibit No.1 Description
`
`1001
`
`U.S. Patent No. 10,820,446 (the “‘446 Patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`Prosecution History for the ‘457 Patent (Parent Application No.
`14/355,533)
`
`Original Complaint, Midas Green Technologies, LLC v.
`Immersion Systems LLC, No. 4:20-cv-00555-O, (N.D. Tex. May
`29, 2020), ECF No. 1
`
`Affidavit of Service of Complaint, Midas Green Technologies,
`LLC v. Immersion Systems LLC, No. 4:20-cv-00555-O, (N.D. Tex.
`May 29, 2020), Served June 23, 2020, ECF No. 8
`
`Amended Complaint, Midas Green Technologies, LLC v.
`Immersion Systems LLC, No. 4:20-cv-00555-O, (N.D. Tex. Nov.
`24, 2020), ECF No. 34
`
`1006
`
`U.S Patent No. 10,123,463 to Best et. al. (“Best”)
`
`1007
`
`U.S. Patent No. 5,167,511 to Krajewski et. al. (“Krajewski”)
`
`1008
`
`U.S. Patent No. 4,590,538 to Cray, Jr. (“Cray”)
`
`1009
`
`U.S. Patent No. 3,406,244 to Oktay (“Oktay”)
`
`1010
`
`1011
`
`1012
`
`Russian Federation Patent No. 2500013C1
`(“Gryzhin”) (Russian Version)
`
`to Gryzhin
`
`Russian Federation Patent No. 2500013C1
`(“Gryzhin”) (English Translated Version)
`
`to Gryzhin
`
`Verification of Translation of Russian Federation Patent No.
`2500013C1 to Gryzhin
`
`
`1 Citations to U.S. Patents (Exhibits 1001, 1006, 1007, 1008, 1009, and 1023) will be made by reference to the Exhibit
`No. followed by a column and line cite. Citations to the Prosecution History (Exhibit 1002, 1021) will be made by
`reference to the Exhibit No. followed by the Bates No. provided to the document in the litigation between Petitioner
`and Patent Owner. Citations to Exhibit 1011 will be made by PDF page number, followed by a line citation. Citations
`to Exhibits 1020 and 1022 will be to Paragraph No. All other Exhibits will be made by reference to the PDF page
`number.
`
`
`
`vii
`
`

`

`
`
`
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`P. E. Tuma, "The merits of open bath immersion cooling of
`datacom equipment," 2010 26th Annual IEEE Semiconductor
`Thermal Measurement and Management Symposium (SEMI-
`THERM),
`2010,
`pp.
`123-131,
`doi:
`10.1109/STHERM.2010.5444305.
`R. C. Chu, R. E. Simons, M. J. Ellsworth, R. R. Schmidt and V.
`Cozzolino, "Review of cooling technologies for computer
`products," in IEEE Transactions on Device and Materials
`Reliability, vol. 4, no. 4, pp. 568-585, Dec. 2004, doi:
`10.1109/TDMR.2004.840855.
`Liu, C.; Yu, H. Evaluation and Optimization of a Two-Phase
`Liquid-Immersion
`Cooling
`System
`for
`Data
`Centers. Energies 2021, 14,
`1395.
`https://doi.org/10.3390/en14051395.
`Chin-Chi Cheng, Po-Chun Chang, Hsing-Chieh Li, Fu-I Hsu,
`"Design of a single-phase immersion cooling system through
`experimental and numerical analysis", International Journal of
`Heat and Mass Transfer, Volume 160, 2020, 120203, ISSN 0017-
`9310.
`M. Matsuoka, K. Matsuda and H. Kubo, "Liquid immersion
`cooling technology with natural convection in data center," 2017
`IEEE 6th International Conference on Cloud Networking
`(CloudNet), 2017, pp. 1-7, doi: 10.1109/CloudNet.2017.8071539.
`Claim Limitation Summary of the ‘446 Patent, Claim 1
`
`1019
`
`Curriculum Vitae of Dr. Issam Mudawar
`
`1020
`
`Declaration of Dr. Issam Mudawar (“Mudawar”)
`
`1021
`
`Prosecution History for the ‘446 Patent
`
`1022
`
`1023
`
`1024
`
`Declaration of Maurice J. Marongiu on Disputed Claim Terms,
`Midas Green Technologies, LLC v. Immersion Systems LLC, No.
`4:20-cv-00555-O, (N.D. Tex. Oct. May. 29, 2020)
`U.S. Patent No. 10,405,457 (the “‘457 Patent”)
`
`Declaration of Dr. Issam Mudawar, Midas Green Technologies,
`LLC v. Immersion Systems LLC, No. 4:20-cv-00555-O, (N.D. Tex.
`Oct. May. 29, 2020)
`
`
`
`viii
`
`

`

`I.
`
`RELIEF REQUESTED
`
`Petitioner Immersion Systems LLC requests review under 35 U.S.C. §321 of
`
`claims 1, 5, 6, and 10 of U.S. Patent No. 10,820,446 and cancellation under 35
`
`U.S.C. §112 and 35 U.S.C. §103 based upon the following prior art:
`
`Exhibit 1006 – U.S Patent No. 10,123,463 to Best et. al. (“Best”) filed on
`
`August 10, 2009, published on February 18, 2011, and issued on November 6, 2018.
`
`Best qualifies as prior art under at least 35 U.S.C. §§ 102(b) and 102(e) (pre-AIA).
`
`Exhibit 1007 – U.S. Patent No. 5,167,5112 to Krajewski et. al. (“Krajewski”)
`
`filed on November 27, 1990, and issued on December 1, 1992. Krajewski qualifies
`
`as prior art under at least 35 U.S.C. §§ 102(b) and 102(e) (pre-AIA).
`
`Exhibit 1008 – U.S. Patent No. 4,590,538 to Cray, Jr. (“Cray”) filed on
`
`November 18, 1982, and issued on May 20, 1986. Cray qualifies as prior art under
`
`at least 35 U.S.C. §§ 102(b) and 102(e) (pre-AIA).
`
`Exhibit 1009 – U.S. Patent No. 3,406,244 to Oktay (“Oktay”) filed on June
`
`7, 1966, and issued on October 15, 1968. Oktay qualifies as prior art under at least
`
`35 U.S.C. §§ 102(b) and 102(e) (pre-AIA).
`
`Exhibit 1011 – Russian Federation Patent No. 2500013C1 to Gryzhin
`
`(“Gryzhin”) filed on March 19, 2012 and published on November 27, 2013. A
`
`Person of Ordinary Skill in The Art (“POSITA”) interested in the subject matter of
`
`
`2 Krajewski incorporates Cray by reference. Ex-1007, 5:5-10. Ex-1002, ¶¶129,160-161. Thus, as a legal matter,
`Krajewski and Cray may be treated as a single reference.
`
`

`

`PGR2021-00104
`U.S. Patent No. 10,820,446 B2
`
`Gryzhin could have located Gryzhin through exercise of ordinary diligence—for
`
`example, Gryzhin (including an English language abstract and machine translation)
`
`is accessible through Espacenet and Google Patents. Gryzhin qualifies as prior art
`
`under at least 35 U.S.C. §§ 102(a) and 102(e) (pre-AIA).
`
`II.
`
`IDENTIFICATION OF CHALLENGE AND STATEMENT OF
`PRECISE RELIEF REQUESTED
`
`Ground 1
`
`Claims 1, 5, 6, and 10
`
`Ground 2
`
`Claims 1, 5, 6, and 10
`
`Ground 3
`
`Claims 1, 5, 6, and 10
`
`Ground 4
`
`Claims 1, 5, 6, and 10
`
`Ground 5
`
`Ground 6
`
`Claims 1, 5, 6, and 10
`
`Claims 1, 5, 6, and 10
`
`35
`under
`Invalidity
`U.S.C. § 103, rendered
`obvious by Best in view
`of Krajewski and/or Cray.
`Invalidity
`under
`35
`U.S.C. § 103, rendered
`obvious by Best in light of
`Oktay.
`35
`under
`Invalidity
`U.S.C. § 103, rendered
`obvious by Best in view
`of Gryzhin.
`35
`under
`Invalidity
`U.S.C. § 103, rendered
`obvious by Best
`Invalidity
`under
`U.S.C. §112(b)
`Invalidity
`under
`U.S.C. §112(a)
`
`35
`
`35
`
`In making these challenges, the Petitioner relies on the exhibits cited herein,
`
`including the Declaration of Dr. Issam Mudawar. Ex-1020.
`
`
`
`2
`
`

`

`PGR2021-00104
`U.S. Patent No. 10,820,446 B2
`
`III.
`
`THE '446 PATENT
`
`A. Background of the Art
`
`As Dr. Mudawar (“Mudawar”) explains, effective removal of heat from
`
`electrical appliances has long been a key concern, becoming even more important
`
`with the development of the first electronic digital computers in the 1940s. Ex-1020,
`
`¶33. Driven by advances in technology leading to higher-density electronics,
`
`alternatives to air cooling were necessary, leading to an increased use of liquid
`
`cooling. Id., ¶36; Ex-1014, 4. Liquid cooling has many advantages to air cooling,
`
`including “reduc[tion] of the aforementioned causes of inefficiency; facilitat[ing]
`
`waste heat recovery; and increas[ing] the thermodynamic availability of the heat
`
`removed.” Ex-1020, ¶36; Ex-1013, 2.
`
`One form of liquid cooling, immersion cooling—the art in which the ‘446
`
`Patent is directed— has been well known for decades. Ex-1020, ¶42. Immersion
`
`cooling is a subset of liquid cooling in which the heat-generating electronic
`
`appliances are submerged into fluid, and the heat generated by the electronic
`
`appliance is removed from the system by circulating the fluid throughout the system
`
`to continually dissipate the heat. Ex-1020, ¶¶39-40; Ex-1016, 2; Ex-1014, 5. Based
`
`on the type of dielectric liquid used in the immersion system, the immersion cooling
`
`system can be classified as single-phase or two-phase based upon whether the fluid
`
`changes state (i.e. boils) during the cooling process. Ex-1020, ¶41; Ex-1016, 2.
`
`
`
`3
`
`

`

`PGR2021-00104
`U.S. Patent No. 10,820,446 B2
`
`
`While there are many different types of immersion systems commonly used,
`
`one common system involves the use of “slots” to promote stable operation, cooling,
`
`and allow for easier maintenance of the servers within the data centers. Ex-1017, 1.
`
`B.
`
`The Prosecution of the '446 Patent
`
`1.
`
`The '446 Patent is Not Entitled to its Claimed Priority Dates
`
`The application that became the ‘446 Patent was filed on January 9, 2019. Ex-
`
`1001, Code 22. That application claimed priority to earlier-filed application no.
`
`14/355,533 (“'533 Application”) and to a provisional application: 61/831,211, filed
`
`on 6/7/2013 (“Second Provisional”). While the '533 Application claimed priority to
`
`an earlier provisional 61/737,200, filed on 12/14/2012 (“First Provisional”), the
`
`application leading the '446 Patent dropped the claim to the First Provisional, thus
`
`making the '446 Patent subject to the AIA. Ex-1021, MGT000689.
`
`The disclosure in a priority document must support the “full scope” of the
`
`claim. Atl. Research Mktg. Sys., Inc. v. Troy, 659 F.3d 1345, 1355 (Fed. Cir. 2011).
`
`A patent challenger has the burden of showing an ancestor's lack of full scope for a
`
`claim, and then the Patent Owner bears the burden of coming “forward with evidence
`
`to prove entitlement to claim priority to an earlier filing date.” PowerOasis, Inc. v.
`
`T- Mobile USA, Inc., 522 F.3d 1299, 1305-06 (Fed. Cir. 2008).
`
`
`
`4
`
`

`

`PGR2021-00104
`U.S. Patent No. 10,820,446 B2
`
`
`After analyzing the disclosures of the Second Provisional against the claim of
`
`the ‘446 Patent, Mudawar concludes that it does not provide a written description
`
`supporting the full scope of any Challenged Claim. Ex-1020, ¶¶48-56.
`
`Mudawar concludes that the Second Provisional fails to satisfy the written
`
`description requirements. Id., ¶56. For example, the Second Provisional Application
`
`fails to provide a written description for "a primary circulation facility adapted to
`
`circulate the dielectric fluid through the tank, comprising: a plenum, positioned
`
`adjacent the bottom of the tank, adapted to dispense the dielectric fluid substantially
`
`uniformly upwardly through each appliance slot,” which is contained in all
`
`Challenged Claims. Id., ¶¶53-54.
`
`In reaching this conclusion, Mudawar states: “the Second Provisional
`
`Application discloses blueprints showing the flow of fluid from a tank to cooling
`
`facility, but does not disclose a plenum.” Id., ¶ 54. Finally, Mudawar also identifies
`
`that the Second Provisional Application does not disclose the weir limitation (Id., ¶¶
`
`54-55), and states that the Second Provisional “discloses blueprints showing the flow
`
`of fluid from a tank to cooling facility, but not a weir.” Id., ¶ 55.
`
`Accordingly, December 13, 2013 is the earliest priority date for the ‘446
`
`Patent.
`
`
`
`5
`
`

`

`PGR2021-00104
`U.S. Patent No. 10,820,446 B2
`
`
`2.
`
`Ex Parte Prosecution
`
`The application leading to the '446 Patent received a single office action (a
`
`rejection based on double patenting compared to the claims of the prior '457 patent)
`
`before grant. Ex-1021, MGT000604-08. The parent '533 Application leading to the
`
`'457 Patent was itself subject to three office actions: The Examiner issued the first
`
`office action on November 4, 2016, rejecting Claims 1-10 (including Challenged
`
`Claims 1, 5, 6, and 10). Ex-1002, MGT000162-68. The Examiner, in relevant
`
`portion, rejected Claims 1-10 as anticipated by Best (US 2011/0132579).3 Id. The
`
`Examiner asserted that Best taught each and every element of the claims. Id.,
`
`MGT000165-166.
`
`In the alternative, the Examiner rejected Claims 1-10 as being obvious over
`
`Best in view of Pfahnl et al. (US 2006/0126292), stating that “[i]f it is not accepted
`
`that Best positively discloses the weir, Pfahnl” disclosed a weir and that it would
`
`have been obvious to form the manifold of Best with the weir taught by Pfahnl:
`
`It would have been obvious to one of ordinary skill in the art at the time
`of the invention to form the manifold of Best with the weir formed as a
`bottom wall of said manifold with holes opening between each of the
`electronic device slots, as taught by Pfahnl, such that the dielectric fluid
`would still be directed in its proper flow direction despite the lack of a
`full rack of electronic devices.
`
`Id., MGT000166.
`
`
`3 Best (US 2011/0132579) is the published U.S. Patent Application which ultimately resulted in the issuance of U.S
`Patent No. 10,123,463 to Best.
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`6
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`Finally, the Examiner asserted that Best taught all of the elements of
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`dependent Claims 2-5 and 7-10. Id., MGT000166-67.
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`On December 7, 2016, the Examiner held an interview with applicant during
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`which they discussed the Best and Pfahnl references and differences between the
`
`weir disclosed in the application and in Pfahnl, but did not come to an agreement.
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`Id., MGT000159-60.
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`In an attempt to distinguish the claimed “weir” from the disclosure of Pfahnl,
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`applicant, on January 31, 2017, applicant responded to the November 4, 2016 office
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`action amending independent Claims 1 and 6 to add the term “overflow lip,”
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`asserting that was “adapted to facilitate substantially uniform recovery.” Id.,
`
`MGT000155. Disagreeing with the Examiner’s assertion that the “common
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`manifold area” between the tops of the devices and the surface of the fluid in Best
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`corresponded to applicant’s weir and that the "common manifold area" between the
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`bottoms of the devices and the bottom of the tank corresponded to applicant’s
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`plenum, applicant described each “common manifold area[]” as a “pseudo-
`
`structures”, whereas the weir and plenum in Claims 1 and 6 “required physical
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`structures … even in the absence of fluid.” Id. MGT000154 (emphasis in original).
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`Of note in applicant’s response is that applicant did not challenge: (i) either
`
`the Examiner’s assertion that Best taught all of the elements of dependent Claims 2-
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`5 and 7-10, or that Best lacked any other elements of the independent claims, such
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`as, appliance slots, a primary circulation facility, a secondary circulation facility, a
`
`control facility, or the ability to remotely control the control facility, or (ii) the
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`combinability of the cited references.
`
`On May 17, 2017, the Examiner issued a final office action maintaining the
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`rejection of Claims 1-10 as anticipated by Best or, in the alternative, as obvious over
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`Best in view of Pfahnl. Id., MGT000139-146. Relying on Best, the Examiner added
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`additional citations to the to support the rejection. Id., MGT000142. The Examiner
`
`also rejected applicant’s "pseudo structure" argument, and disagreed with
`
`applicant’s assertion that the weir in the prior art does not lie adjacent all appliance
`
`slots, stating that the phrase "adjacent all appliance slots" modifies "the long wall of
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`the tank" and not the weir. Id. As a result, the Examiner emphasized that the weir in
`
`Best still resulted in even flow through the devices. Id.
`
`Further, with respect to the addition of the term “overflow lip” to the
`
`independent claims, the Examiner stated that the weir described in applicant’s
`
`application is merely “an opening in a wall” and its lip is “never defined as more
`
`than the bottom surface of that opening.” Id., MGT000145. Although the Examiner
`
`invited applicant to identify further structural limitations associated with applicant’s
`
`weir, applicant never made any further limitations or attempts to distinguish its weir
`
`from Best’s.
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`
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`8
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`On July 6, 2017, the Examiner held an interview with applicant during which
`
`they discussed a new reference JP 5956100 (“JP ‘100”). Id., MGT000118-38. The
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`Examiner’s interview summary stated that “[t]he features of the "plenum" and "weir"
`
`of Claim 1 were discussed with relation to the art currently of record and the newly
`
`appended JP reference” and that “[n]o agreement as to patentability was reached.”
`
`Id., MGT000119.
`
`On August 24, 2017, that applicants filed a preliminary amendment. Id.,
`
`MGT000100-13. In the amendment, applicant amended independent Claims 1 and
`
`6 to add the new limitation “a dielectric fluid recovery reservoir positioned vertically
`
`beneath the overflow lip of the weir and adapted smoothly to receive the dielectric
`
`fluid as it flows over the weir.” Id., MGT000101.
`
`The Examiner issued a Non-Final Office Action on June 11, 2018 rejecting
`
`Claims 1-16 as obvious over Best in view of JP ‘100. Id., MGT000041-46. However,
`
`JP '100 was not prior art. While it is unclear how the Examiner mistook JP ‘100 as
`
`prior art, it appears that the Examiner was informed of this in a teleconference by
`
`counsel, and thus issued a notice of allowance for the ‘457 Patent.
`
`In the application leading to the '446 Patent, no prior art was substantively
`
`addressed by the Examiner in any office action. In fact, Gryzhin was not before the
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`office at all. Oktay was identified in search results but does not appear to have been
`
`addressed in substance. Best was considered in each office action, and this Petition
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`accepts the conclusions reached by the Examiner in all respects of his analysis of
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`Best.
`
`Most importantly, the claims as presented in the '446 Patent eliminated every
`
`limitation added to overcome prior art in the earlier '533 Application. Even though
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`the same examiner had rejected substantially the same claims over prior art of record
`
`in that case, the applicant did not divulge to the Examiner that he was re-presenting
`
`such claims, and the Examiner did not explain what had changed between the earlier
`
`rejections and the '446 allowance and did not identify any reasons for allowance.
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`C. Level of Ordinary Skill in the Art
`
`A POSITA as of December 13, 2013 would have had a 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. Ex-1020, ¶68. A POSITA would
`
`also have had, through education or experience, familiarity and experience in
`
`particular with immersion cooling systems. Id. Additional education could
`
`compensate for less practical experience and vice versa. Id.
`
`IV.
`
`CLAIM CONSTRUCTION
`
`No terms need to be construed to resolve the question of unpatentability, and
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`thus the Board does not need to offer an express construction for any term beyond
`
`
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`10
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`its ordinary meaning under the Markman/Phillips standard. See Realtime Data, LLC
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`v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) ("The Board is required to construe
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`“only those terms ... that are in controversy, and only to the extent