Case: 22-1221 Document: 69 Page: 1 Filed: 03/07/2024
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`
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`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`COOLIT SYSTEMS, INC.,
`Appellant
`
`v.
`
`KATHERINE K. VIDAL, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARK OFFICE,
`Intervenor
`______________________
`
`2022-1221
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2020-
`00747, IPR2020-00825.
`______________________
`
`Decided: March 7, 2024
`______________________
`
`REUBEN H. CHEN, Cooley LLP, Palo Alto, CA, argued
`for appellant. Also represented by HEIDI LYN KEEFE;
`DUSTIN KNIGHT, Washington, DC; LLOYD L. POLLARD, II,
`Workman Nydegger, Salt Lake City, UT.
`
` MONICA BARNES LATEEF, Office of the Solicitor, United
`States Patent and Trademark Office, Alexandria, VA,
`
`

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`COOLIT SYSTEMS, INC. v. VIDAL
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`argued for intervenor. Also represented by PETER J. AYERS,
`MAI-TRANG DUC DANG, FARHEENA YASMEEN RASHEED.
` ______________________
`
`Before LOURIE, BRYSON, and STARK, Circuit Judges.
`LOURIE, Circuit Judge.
`CoolIT Systems, Inc. (“CoolIT”) appeals from a final
`written decision of the United States Patent and Trade-
`mark Office (“PTO”) Patent Trial and Appeal Board (“the
`Board”) holding claims 1–3, 5, 7, and 25 of U.S. Patent
`9,057,567 (the “’567 patent”) unpatentable. Asetek Dan-
`mark A/S v. CoolIT Sys., Inc., IPR2020-00747, 2021 WL
`4861000 (P.T.A.B. Sept. 30, 2021) (“Decision”). For the fol-
`lowing reasons we vacate and remand.
`BACKGROUND
`The challenged patent claims priority from two provi-
`sional applications, Provisional Application 61/512,379
`(the “2011 Provisional”) and Provisional Application
`60/954,987 (the “2007 Provisional”). It is directed to a sys-
`tem for fluid heat transfer to cool electronic devices. ’567
`patent, Abstract. Representative claim 1 is reproduced be-
`low.
`1. A heat exchange system comprising:
`a heat sink having a plurality of juxtaposed fins
`defining a corresponding plurality of microchan-
`nels between adjacent fins, wherein the heat sink
`defines a recessed groove extending transversely
`relative to the fins;
`a housing member defining a first side and a sec-
`ond side, wherein the second side defines a re-
`cessed region;
`a compliant member matingly engaged with the
`second side of the housing member, wherein the
`compliant member at least partially defines an
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`COOLIT SYSTEMS, INC. v. VIDAL
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`opening positioned over the groove, wherein the
`compliant member and the groove together de-
`fine a portion of an inlet manifold configured to
`hydraulically couple in parallel each of the micro-
`channels to at least one other of the microchan-
`nels, and wherein the housing member further
`defines a portion of an inlet plenum,
`wherein the inlet plenum and the inlet manifold
`are together configured to convey a fluid in a di-
`rection generally transverse to the fins and
`thereby to distribute the fluid among the plural-
`ity of microchannels and to convey the fluid into
`the plurality of microchannels in a direction gen-
`erally parallel to the fins,
`wherein a portion of the compliant member occu-
`pies a portion of the recessed region defined by the
`second side of the housing member and urges
`against a corresponding wall of the recessed re-
`gion while leaving a portion of the recessed re-
`gion defined by the second side of the housing
`member unoccupied to define first and second ex-
`haust manifold regions positioned opposite to
`each other relative to the recessed groove and
`opening from end regions of the microchannels.
`’567 patent, col. 19 ll. 16–46 (emphases added).
`The term “matingly engaged” appeared for the first
`time in the 2011 Provisional. See Appellant’s Br. at 5–10.
`According to CoolIT, such a connection is depicted in Fig-
`ures 7–12 of the ’567 patent, which also first appeared in
`the 2011 Provisional. Id. According to CoolIT, Figures 2–6
`of the ’567 patent purportedly show an alternative means
`of connection, i.e., fusing, that was disclosed in the 2007
`Provisional. Id. In another, now-final inter partes review
`(“IPR”) decision from the same panel as on review here, the
`Board found that the 2007 Provisional disclosed only a sin-
`gle approach for connecting the housing with the plate and
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`COOLIT SYSTEMS, INC. v. VIDAL
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`seal: by fusing. Asetek Danmark A/S v. CoolIT Sys., Inc.,
`IPR2020-00825, 2021 WL 4868406 at *10 (P.T.A.B. Oct. 12,
`2021) (“[T]his language only describes one method of con-
`necting components—overall fusing techniques. It does not
`follow from this language that the inventor envisioned a
`second method of connecting components in which compli-
`ant surfaces would have been desirable.”).
`Asetek Danmark A/S (“Asetek”) petitioned for IPR of
`the ’567 patent, asserting anticipation based on Bezama1
`and obviousness based on Lyon2 in combination with
`Bezama. Decision at *3. Lyon has the same inventor as
`the ’567 patent and also claims priority from the 2007 Pro-
`visional, but not from the 2011 Provisional. In its petition,
`Asetek argued that the challenged claims of the ’567 patent
`were not entitled to a priority date earlier than the filing of
`the 2011 Provisional, which CoolIT did not dispute. Inter-
`venor’s Br. at 5 n.6; see also Decision at *3 n.3.
`The parties disputed the meaning of the term “mat-
`ingly engaged.” CoolIT argued that it should be construed
`as “mechanically joined or fitted together to interlock.” Id.
`at *6. Asetek initially proposed no construction, but then
`argued in its reply brief that “matingly engaged” should be
`construed as “joined or fitted together to make contact,” en-
`compassing “[a]ll methods of joining or fixing two surfaces.”
`Id. CoolIT responded that Asetek’s construction requiring
`mere contact read “matingly” out of the limitation, as parts
`that are joined or fitted together would always “make con-
`tact” with one another. Id. at *7. CoolIT further argued
`that, regardless of the construction, neither Lyon nor
`Bezama disclosed that limitation because its components
`
`
`1 U.S. Patent Application Publication 2010/0012294,
`published Jan. 21, 2010 (“Bezama”)
`2 U.S. Patent Application Publication 2009/0071625,
`published Mar. 19, 2009 (“Lyon”).
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`were fused together or merely abutting, rather than “fitted
`together.” Id. at *11.
`The Board found CoolIT’s proposed construction of
`“matingly engaged” to be too narrow and Asetek’s to be too
`broad. Decision at *7–8. It did not determine the meaning
`or precise metes and bounds of “matingly engaged,” but
`“partial[ly] constru[ed]” the term as at least being satisfied
`“when at least a portion of the recited compliant member is
`fitted within the recessed region defined by the second side
`of the housing member.” Id. at *9 (“This partial construc-
`tion is sufficient to resolve the issues in dispute.”). The
`Board acknowledged that both parties agreed that the term
`encompasses parts that are “joined or fitted together” in
`some fashion, as the parties agreed that the term “mate”
`meant “join or fit together,” but disagreed on the term “en-
`gage.” Id. at *7. The Board found that the term was not
`“so broad as to encompass any method of joining or [fitting]
`surfaces,” but did not reach the question whether or not
`“matingly engaged” could encompass other forms of en-
`gagement besides fitting. Id. at *8. It rejected CoolIT’s use
`of the word “interlock” because, in part, it believed that
`CoolIT was arguing without evidentiary support that such
`construction would require a connection that would take
`force to break. Id. at *6−8.
`Applying its partial construction, the Board found that
`Lyon disclosed a compliant member that is “matingly en-
`gaged” with the bottom side of the housing. Decision at
`*11. The Board determined that Lyon “teaches or at least
`suggests” a plate that is “fitted to the recessed region on
`the bottom of Lyon’s housing.” Id. The Board found that it
`was of no consequence that “the term ‘matingly engaged’
`was first added in the 2011 Provisional, and is not used in
`Lyon,” because Lyon still “teaches or at least suggests mat-
`ing engagement of the type required by claim 1.” Id. at *12.
`It also explained that CoolIT’s argument that Lyon’s fusing
`of its plate/seal to its cover would not constitute mating en-
`gagement was “not persuasive” because its decision did
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`COOLIT SYSTEMS, INC. v. VIDAL
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`“not rely on Lyon’s teaching that the [parts] may be fused
`together.” Id. The Board therefore found that the chal-
`lenged claims were unpatentable as obvious based on Lyon
`in combination with Bezama. Id. For that reason, it did
`not reach the ground of anticipation based on Bezama. Id.
`at *13.
`CoolIT timely appealed. Asetek filed a responsive brief
`and separately cross-appealed from the final written deci-
`sion in IPR2020-00825, which was consolidated with this
`appeal. However, Asetek has since moved to voluntarily
`dismiss the cross-appeal and withdraw from the case upon
`privately settling its dispute with CoolIT. Both motions
`were granted. The PTO intervened and filed its own re-
`sponsive brief.
`We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
`DISCUSSION
`CoolIT argues that the Board erred in construing the
`term “matingly engaged,” and that, under either its pro-
`posed construction or the Board’s construction, Lyon fails
`to satisfy the “matingly engaged” limitation. We address
`each argument in turn.
`
`I
`We review a Board’s construction of a claim term, and
`any supporting determinations made based on the intrinsic
`record, de novo. Personalized Media Commc’ns, LLC v. Ap-
`ple Inc., 952 F.3d 1336, 1339 (Fed. Cir. 2020). Any factual
`findings the Board made regarding extrinsic evidence are
`reviewed for substantial evidence. Id.
`CoolIT argues that the term “matingly engaged” should
`be construed as “mechanically joined or fitted together to
`interlock” (or, alternatively, “mesh” or “otherwise engage”).
`Appellant’s Br. at 32. Relying first on intrinsic evidence, it
`asserts that its proposed construction properly accounts for
`the differences between the 2007 Provisional and the 2011
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`Provisional, in that the latter allegedly provides an im-
`provement over the former: components that are matingly
`engaged, rather than fused. Id. at 25–33. It further points
`to the purpose of the invention, and argues that the lan-
`guage of claim 1 requires a specific type of joining or fitting
`between the compliant member and the housing to force
`the coolant into the restrictive microchannels, rather than
`allowing it to flow past them. Id. at 23–25. In CoolIT’s
`view, to work properly, the compliant member of claim 1
`must partition features that convey coolant to the micro-
`channels (e.g., an “inlet manifold”) and features that re-
`ceive coolant from the microchannels (e.g., an “exhaust
`manifold region”). Id. CoolIT also supports its proposed
`construction with extrinsic evidence: (1) expert testimony,
`(2) other tribunals’ constructions of “engage,” and (3) dic-
`tionary definitions of “engage.” Id. at 33–35; see also J.A.
`3846 (defining “engage” as including “interlocking”); Lisle
`Corp. v. A.J. Mfg. Co., 398 F.3d 1306, 1314 (Fed. Cir. 2005)
`(construing “engaged” as “interlocked”).
`The PTO responds that CoolIT’s proposed construction
`improperly reads a limitation from the specification into
`the claim, effectively restricting “matingly engaged” to only
`the interlocking of complementary contoured features to
`the exclusion of other forms of engagement. Intervenor’s
`Br. at 24–26. It argues that neither the claims nor the
`specification uses the word “interlock,” and that the speci-
`fication makes clear that Figures 7–12 are merely exem-
`plary embodiments. Id. at 25–27. It also disputes CoolIT’s
`contention that the 2007 Provisional only shows fusion,
`contending that its Figure 3 shows plate 102 and seal 130
`fitted within the recessed region of the housing such that
`they are matingly engaged. Id. at 21–22. The PTO argues
`that there was no clear and unambiguous disavowal or nar-
`rowing of claim scope. Id. at 26–29. However, notably, the
`PTO does not propose a construction of “matingly engaged”
`aside from defending the Board’s partial construction.
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`It is clear that the term requires more than mere abut-
`ment. And as the Board found, “mating engagement” does
`not encompass “contact between two flat surfaces, or the
`joining together of two flat surfaces.” Decision at *9. Nor
`does it “merely require contact or attachment.” Id. The
`Board correctly found that “[c]laim 1 does not encompass”
`all “type[s] of engagement. It requires a specific type of en-
`gagement: mating engagement.” Id. But from there, the
`Board’s analysis went awry.
`As an initial matter, the Board’s partial construction
`largely renders superfluous other portions of the claim.
`The Board’s partial construction found that “matingly en-
`gaged” includes when “at least a portion of the recited com-
`pliant member is fitted within the recessed region defined
`by the second side of the housing member.” Decision at *9.
`However, the claim elsewhere requires “wherein a portion
`of the compliant member occupies a portion of the recessed
`region defined by the second side of the housing member
`and urges against a corresponding wall of the recessed re-
`gion while leaving a portion of the recessed region defined
`by the second side of the housing member unoccupied.”
`’567 patent, col. 19 ll. 38–43. Although these are not an
`exact match, it is the differences that are almost more trou-
`bling. For if the compliant member must be fitted within
`the recessed region, of what significance is the later re-
`quirement that a portion of the compliant member occupy
`a portion of the same recessed region? Even if “fitted
`within” was interpreted as narrower than “occupy,” the
`rest of the limitation requires that the portion of the com-
`pliant member also “urges against” a portion of the hous-
`ing. Taken together, those two limitations seem akin to
`“fitted within.”
`The only explanation that the PTO seems to provide for
`the apparent redundancy is that the “occupies” language
`defines how the manifold is formed, and not how the com-
`pliant member and the housing are fitted together. See
`Oral
`Arg.
`at
`20:28–21:08
`available
`at
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`https://cafc.uscourts.gov/home/oral-argument/listen-to-
`oral-arguments/. We disagree.
`Both portions of the claim plainly refer to the place-
`ment of the same compliant member in relation to the same
`second side of the housing. And when asked to define “fit-
`ted within,” the PTO fared no better, explaining only that
`the compliant member “has to be fitted within such that
`the coolant can’t escape out of the inlet and the outlet.” Id.
`at 18:38–45; see also id. at 17:49–18:13. As we pointed out
`at oral argument, that is a functional description and pro-
`vides little insight. The PTO has thus failed to explain how
`“fitted within the recessed region,” Decision at *9, is differ-
`ent from “occupies a portion of the recessed region . . . and
`urges against [a portion of it],” ’567 patent, col. 19 ll. 38–41
`(emphasis added). We are therefore persuaded that “mat-
`ingly engaged” must carry greater meaning than “fitted
`within.”
`As the Board acknowledged, the parties do not appear
`to dispute that mating engagement requires “joining or fit-
`ting together” in some fashion. Decision at *7; see also J.A.
`3847 (defining “mate” as “to join or fit together”). Indeed,
`the Board found that “nothing in [Asetek’s expert declara-
`tions] adequately justifies a plain and ordinary meaning-
`based construction that would encompass parts that are
`not, at the very least, fitted together.” Decision at *8. It
`also found that the intrinsic evidence was consistent with
`the expert testimony that “matingly engaged” “refers to
`parts that are fit together.” Id. But notably, the Board’s
`partial construction does not use the phrase “join or fit to-
`gether.” Id. at *9. We find that to be error. Although the
`Board’s partial construction does use the phrase “fitted
`within,” we find that that phrase does not necessarily have
`the same meaning. Moreover, at one point the Board uses
`the phrase “fitted to,” which also carries yet another dis-
`tinct meaning. Id. at *11 (“Lyon teaches or at least sug-
`gests a distribution/collection plate that is fitted to the
`recessed region on the bottom of Lyon’s housing” (emphasis
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`added)). The construction should include “joined or fitted
`together.”
`But something more must also be included in the con-
`struction, for we must give weight to both “matingly” and
`“engaged.” However, we are not persuaded that “interlock”
`is the answer. Although we acknowledge that the diction-
`ary definitions show that “engage” can mean to “interlock
`with,” “cause (mechanical parts) to mesh,” or “to come to-
`gether and interlock (as of machinery parts),” J.A. 3846, we
`have concerns that that word choice may cause more con-
`fusion than clarity.
`Indeed, the Board seemed to misapprehend CoolIT’s
`position on what that term meant. It noted that:
`Patent Owner further explains that the term “in-
`terlock” in its construction requires a Lego®-like
`connection in which two components having com-
`plementary shapes are engaged with one another.
`During the oral hearing, Patent Owner clarified
`that its construction also requires that the compo-
`nents with complementary shapes be engaged with
`one another in such a manner that it would take
`force to separate them.
`Decision at *6 (citations omitted). However, the transcript
`of the oral hearing before the Board reveals that counsel
`for CoolIT had been referring to a specific example of com-
`ponents that were matingly engaged, a highlighter and its
`cap, when discussing a press fit arrangement, rather than
`all forms of mating engagement, J.A. 1651–53 (“I think in
`this example it does require force, right.”), and later clari-
`fied that point, J.A. 1656–57 (“There has to be at least in
`some direction force that’s necessary to pull those two
`pieces apart but not necessarily in all directions.”). And at
`oral argument, counsel for CoolIT further clarified that it
`was only asserting that force in one direction was required.
`Oral Arg. at 2:06–2:09 (“I do think that it is, it is interlock-
`ing because it cannot move in one particular direction.”).
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`That is consistent with CoolIT’s position, both before us
`and the Board, that a tongue-and-groove connection would
`constitute mated engagement. See Appellant’s Br. at 44;
`Decision at *7–8.
`But even with that misunderstanding resolved, CoolIT
`and the PTO still disagree over what the term “interlock”
`means. CoolIT seems to assert that complementary con-
`toured shapes are not required. Oral Arg. at 6:35–42
`(“There are ways to interlock that don’t require comple-
`mentary contoured [sic] shapes, like the highlighter exam-
`ple.”). Whereas the PTO asserts that they are. Id. at
`28:05–10 (“The way I understand [interlock] is that you
`have contoured pieces, complementary contoured pieces,
`like Legos.”); id. at 28:32–35 (“I literally think there needs
`to be contoured complementary pieces that lock together.”).
`The term “interlock” would therefore provide little guid-
`ance as to what “matingly engaged” means.
`In view of the record before us, we conclude that the
`correct construction of “matingly engaged” should be “me-
`chanically joined or fitted together.” Although that exact
`phrasing was not urged by either party or the Board, we
`find that it accurately captures the meaning of the term
`and various arguments of the parties.
`For example, at one point in its decision, the Board con-
`templated a “dictionary-based construction” of “mechani-
`cally joined or fitted together by overlapping or fitting
`together,” which is similar to what we have settled on here.
`Decision at *8. The Board found that that construction
`would “encompass[] parts that are fit together as well as
`parts that are joined by overlapping” without requiring “a
`tongue-in-groove or Lego®-like connection accomplished
`via complementary, contoured shapes.” Id. Notably, we
`review the Board’s evaluation of extrinsic evidence, like
`dictionaries, for substantial evidence. Personalized Media,
`952 F. 3d at 1339. Substantial evidence, indeed, supports
`the Board’s interpretation of the dictionaries. But, as the
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`Board acknowledged, that dictionary-based construction is
`“somewhat-redundant” in its phrasing, and it ultimately
`did not use that construction. Decision at *8. “Mechani-
`cally joined or fitted together” is consistent with the dic-
`tionary definitions (and the Board’s interpretation of them)
`but eliminates the redundancy of the Board’s contemplated
`construction. It also encompasses parts that are “joined by
`overlapping,” as well as parts that are “interlocking” or
`with “complementary shapes,” but is not limited to such.
`The construction is not unlimited, however, and does
`give weight to the term “engaged.” For example, the use of
`“mechanically” properly excludes connection via chemical
`bonds. CoolIT has stressed that “matingly engaged” is not
`the same thing as either (a) sealing, such as through glue,
`solder, or another intermediary filler which separates the
`components, or (b) welding, which joins two components to
`make them one. Appellant’s Reply Br. at 23; Oral Arg. at
`10:06–46. Instead, CoolIT alleges, those were examples of
`chemically, rather than mechanically, joining components
`together, as exemplified by the inability to later decouple
`the components. Id.
`We agree that those examples are not within the scope
`of “matingly engaged” as it is used in the claims. The PTO
`does not appear to dispute the exclusion of those scenarios.
`See Oral Arg. at 30:07–20 (“Under the partial construction
`that is before us today, ‘fitted together,’ [sic] I think sealing
`would probably be too far.”); id. at 30:20–23 (agreeing that
`“sealing” would not be “fitted together”). The patent also
`distinguishes between mating engagement and sealing, as
`it describes the connection between the compliant member
`and second side of the housing as “sealingly engaged” in
`independent claim 28, rather than “matingly engaged” as
`in independent claim 1. Compare ’567 patent, col. 22 ll.
`11–12 (“a compliant member sealingly engaged with the
`second side of the housing member”) with id. col. 19 ll.
`23–24 (“a compliant member matingly engaged with the
`second side of the housing member”). We believe that the
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`inclusion of “mechanically” in our construction of “matingly
`engaged” therefore properly excludes those scenarios (e.g.,
`sealing and welding).3
`We therefore reverse the Board’s partial construction
`of “matingly engaged” and hold that is properly construed
`as “mechanically joined or fitted together.”
`II
`The Board has not considered whether or not Lyon dis-
`closes “a compliant member matingly engaged with the sec-
`ond side of the housing member” under our construction of
`“matingly engaged.” Nor did it reach Asetek’s second as-
`serted ground and consider whether or not Bezema alone
`disclosed that feature. We therefore remand to the Board
`for consideration of those issues, as necessary, in accord-
`ance with our opinion.
`CONCLUSION
`For the foregoing reasons, the decision of the Board is
`vacated and remanded.
`VACATED AND REMANDED
`COSTS
`
`No costs.
`
`
`3 We do not reach the issue as to whether “fusing” is
`or is not the same as sealing or welding and/or qualifies as
`mating engagement under the correct construction of “mat-
`ingly engaged.” We believe that requires factual determi-
`nations more appropriate for the Board to consider on
`remand if necessary.
`
`