UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`COOLER MASTER CO., LTD.
`Petitioner
`
`v.
`
`AAVID THERMALLOY LLC,
`Patent Owner.
`
`
`
`
`Patent No. 7,100,679 to Dussinger et al.
`
`IPR Case No.: IPR2019-00146
`
`
`PETITIONER’S REPLY
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`COOLER MASTER CO., LTD.
`Petitioner
`
`v.
`
`AAVID THERMALLOY LLC,
`Patent Owner.
`
`
`
`
`Patent No. 7,100,679 to Dussinger et al.
`
`IPR Case No.: IPR2019-00146
`
`
`PETITIONER’S REPLY
`
`
`
`
`
`
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`Patent No. 7,100,679
`IPR2019-00146
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`Petitioner’s Reply
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`
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`TABLE OF CONTENTS
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`TABLE OF EXHIBITS .......................................................................................... iii
`INTRODUCTION .......................................................................................... 1
`I.
`POSITA .......................................................................................................... 1
`II.
`III. CLAIM CONSTRUCTION ........................................................................... 2
`“Vapor chamber” .................................................................................. 2
`A.
`“Spreading heat” ........................................................................ 3
`
`“Vacuum sealed” ........................................................................ 6
`“Capillary action” ...................................................................... 7
`“Chamber” ............................................................................... 12
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`“Lip” ................................................................................................... 12
`B.
`“Spacer” .............................................................................................. 14
`C.
`IV. NAKAMURA IS A PRINTED PUBLICATION ........................................ 16
`GROUND 1 - NAKAMURA RENDERS OBVIOUS CLAIMS 1, 2,
`V.
`AND 4 ........................................................................................................... 17
`VI. GROUND 2 - NAKAMURA IN VIEW OF TAKAHASHI
`RENDERS OBVIOUS CLAIMS 1, 2, 4 AND 5 ......................................... 24
`CERTIFICATE OF SERVICE ............................................................................... 31
`WORD COUNT CERTIFICATION ...................................................................... 32
`
`
`
`ii
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`Patent No. 7,100,679
`IPR2019-00146
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`Petitioner’s Reply
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`TABLE OF EXHIBITS
`
`Ex. No.
`1001
`1002
`1003
`1004
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`1005
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`1006
`1007
`1008
`
`1009
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`1010
`1011
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`1012
`1013
`1014
`1015
`1016
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`1017
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`1018
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`1019
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`Description of Document
`U.S. Patent No. 7,100,679
`Declaration of Dr. Himanshu Pokharna
`File Wrapper of U.S. Patent No. 7,100,679
`Nakamura (Japanese Unexamined Utility Model Application
`Publication; Title: Heat Pipe; Year of Publication: 1975; Inventor:
`Kazuo Nakamura) ("Nakamura")
`Takahashi (Japanese Examined Utility Model Application
`Publication; Title: Heat Pipe; Dates of Publication: July 9, 1991
`and March 27, 1996; Inventors: Tadahito Takahashi, Kaoru
`Hasegawa, Muneaki Sokawa) ("Takahashi")
`Excerpt from American Heritage Dictionary (4th ed. 2000)
`Excerpt from Webster's II New College Dictionary (1999)
`Excerpt from Declaration of Nelson J. Gernert in Connection with
`Claim Construction, Aavid Thermalloy LLC v. Cooler Master Co.,
`Ltd., No. 4:17-cv-05363-JSW (N.D. Cal.), dated July 13, 2018
`Excerpt from Merriam Webster's Collegiate Dictionary (10th ed.
`1998)
`Excerpt from Webster's New Dictionary (1997)
`Excerpt from Random House Webster's Unabridged Dictionary
`(2nd ed. 2001)
`Excerpt from Prosecution History of U.S. Patent No. 6,302,192
`U.S. Patent No. 4,012,770
`U.S. Patent No. 4,165,472
`U.S. Patent No. 6,817,097
`Aavid Thermalloy LLCs Preliminary Proposed Claims
`Construction Pursuant to Patent L.R. 4-2, Aavid Thermalloy LLC
`v. Cooler Master Co., Ltd., No. 4:17-cv-05363-JSW (N.D. Cal.),
`dated May 29, 2018
`Email from Kenneth M. Albridge III to Reuben Chen, Kyle Chen,
`dated October 31, 2017
`Joint Stipulated Request for Relief from Case Management
`Schedule and [Proposed] Order, Aavid Thermalloy LLC v. Cooler
`Master Co., Ltd., No. 4:17-cv-05363-JSW (N.D. Cal.), dated
`November 14, 2017
`Joint Claim Construction and Prehearing Statement Pursuant to
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`iii
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`Petitioner’s Reply
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`Ex. No.
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`1020
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`1022
`1023
`
`1024-
`1026
`1027
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`1028
`1029
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`1032
`1033
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`1034
`1035
`1036
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`1037
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`1038
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`1039
`1040
`
`Description of Document
`Patent L.R. 4-3, Aavid Thermalloy LLC v. Cooler Master Co., Ltd.,
`No. 4:17-cv-05363-JSW (N.D. Cal.), dated June 22, 2018
`Excerpts from Webster's Third New International Dictionary
`(2002)
`Eastman, The Heat Pipe, Scientific American, 218(5):38-46 (1968)
`Morikawa (Japanese Examined Utility Model Application
`Publication; Title: Heat Pipe; Year of Publication: 1978; Inventor:
`Takao Morikawa, Mitsuhiko Nakata) ("Morikawa")
`Biography of Reuben Chen
`
`Declaration of Reuben Chen ISO Motion for Pro Hac Vice
`Admission
`Transcript of Board's Teleconference of July 3, 2019
`Declaration of Kyle D. Chen ISO Motion for Pro Hac Vice
`Admission
`Supplemental Declaration of Dr. Himanshu Pokharna
`Deposition transcript of Dr. Amir Faghri conducted on November
`21, 2019
`Exhibit A from November 21, 2019 deposition of Dr. Amir Faghri
`Exhibit B from November 21, 2019 deposition of Dr. Amir Faghri
`Exhibit 1 from Dr. Sylvia Hall-Ellis Declaration, “Kunz, H. R., S.
`S. Wyde, G. H. Nushick, and J. F. Burne. Vapor-Chamber Fin
`Studies Operating Characteristics of Fin Models. NASA
`Contractor Report CR-1139. August 1968. Washington, DC:
`National Aeronautics and Space Administration, 1968.” (“NASA-
`1968”)
`Exhibit 2 from Dr. Sylvia Hall-Ellis Declaration, “Gerrels,
`Ellsworth E., and Robert E. Killen. Potassium Rankine Cycle
`Vapor Chamber (Heat Pipe) Radiator Study. NASA Contractor
`Report NASA CR-1866, September 1971. Washington, DC:
`National Aeronautics and Space Administration, 1971.” (“NASA-
`1971”)
` Faghri, Amir, “Heat Pipe Science and Technology,” Taylor &
`Francis Publishing (1995), pp. 9-19 and 762-771.
`Declaration of Sylvia Hall-Ellis, Ph.D.
`Exhibit 3 from Dr. Sylvia Hall-Ellis Declaration, “Bond, Francis,
`Kentaro Ogura, and Satoru Ikehara. “Countability and Number in
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`Petitioner’s Reply
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`Ex. No.
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`1041
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`1042
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`1043
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`1044
`1045
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`1046
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`1047
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`1048
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`1049
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`1050
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`1051
`1052
`1053
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`Description of Document
`Japanese-to-English Machine Translation.” In Proceedings of the
`15th International Conference on Computational Linguistics (pp.
`32-38). August 1994. (COLING '94). Kyoto, Japan: COLING '94
`Organizing Committee, 1994.”
`Exhibit 4 from Dr. Sylvia Hall-Ellis Declaration, “Murata, Masaki
`and Makoto Nagao. “Determination of referential property and
`number of nouns in Japanese sentences for machine translation
`into English.” Computation and Language (cs.CL) (19 May 1994):
`1-8.”
`Amended Infringement Contentions (Redacted), Aavid Thermalloy
`LLC v. Cooler Master Co., Ltd., No. 4:17-cv-05363-JSW (N.D.
`Cal.)
`Exhibit A to Amended Infringement Contentions, Aavid
`Thermalloy LLC v. Cooler Master Co., Ltd., No. 4:17-cv-05363-
`JSW (N.D. Cal.)
`Declaration of Takao Miyano
`Exhibit A of Miyano Declaration (Original Japanese language
`version of 1978 Japanese Patent Law)
`Exhibit B of Miyano Declaration (English Translation of Exhibit A
`of Miyano Declaration)
`Exhibit C of Miyano Declaration (A true and correct copy of the
`partial publication of Unexamined Utility Model Registration
`Application Publication No. SHO 50-55262 filed by Nakamura et
`al.)
`Exhibit D of Miyano Declaration (A true and correct copy of the
`full version of Unexamined Utility Model Registration Application
`Publication No. SHO 50-55262 filed by Nakamura et al.)
`Exhibit E of Miyano Declaration (Aavid Exhibit 2011, pages 0018-
`0020 from Inter Partes Review No. 2019-00144)
`Exhibit F of Miyano Declaration (Cooler Master Exhibit 1004,
`pages 13-23 from Inter Partes Review No. 2019-00144)
`U.S. Patent No. 6,745,825
`U.S. Patent No. 6,379,935
`U.S. Patent No. 5,880,929
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`v
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`Patent No. 7,100,679
`IPR2019-00146
`I.
`INTRODUCTION
`Cooler Master Co., Ltd. (“Petitioner”) hereby submits this reply (“Reply”) to
`
`Petitioner’s Reply
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`
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`Patent Owner’s Response (“POR”) in one of the five related IPRs involving U.S.
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`Patent Nos. 7,066,240 (the “’240 patent”), 7,100,679 (the “’679 patent), and
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`7,100,680 (the “’680 patent) (collectively, the “patents-in-suit”).1 As shown below,
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`the remaining few disputes should be resolved in favor of Petitioner.
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`II.
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`POSITA
`Patentee alleges that Petitioner’s expert lacked ordinary skill as of the
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`effective filing date of the patents-in-suit.2 (POR at §III.) This irrelevant allegation
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`ignores the law: “the Federal Circuit has not placed temporal restrictions, such as
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`requiring an expert be qualified in the pertinent art at the time of the invention.” T.
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`Rowe Price Investment Servs., Inc. v. Secure Access, LLC, Case CBM2015-00027,
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`1 IPR2019-00144 and -00337 (on the ’240 patent), IPR2019-00146 (on the ’679
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`patent), and IPR2019-00334 and -00338 (on the ’680 patent).
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`2 The parties’ dispute on the POSITA definitions is immaterial because the
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`challenged claims are invalid under both sides’ definitions. (Ex-1002-Pokharna at
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`§II; Ex 1032-Pokharna at ¶13.) But Petitioner’s POSITA definition should be
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`adopted because it more closely tracks the appropriate factors. See In re GPAC Inc.,
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`57 F.3d 1573, 1579 (Fed. Cir. 1995); see also Ex-1032 at ¶13.
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`1
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`Paper 31 at 21-22 (PTAB June 13, 2016) (citing Sundance, Inc. v. DeMonte
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`Petitioner’s Reply
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`
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`Fabricating Ltd., 550 F.3d 1356, 1363-64 (Fed. Cir. 2008)); U.S. Endoscopy Group,
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`Inc. v. CDX Diagnostics, Inc., Case IPR2014-00639, Paper 27 at 18 (PTAB Sept.
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`14, 2015).
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`III. CLAIM CONSTRUCTION
`The parties request that the disputed terms be construed consistently across
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`these five related IPRs (PORs at FN2) to resolve many of the remaining disputes:
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`1. Whether the “vapor chamber” imports a requirement of “spreading heat;”
`and
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`2. Whether a “spacer” can only be a non-integral structure relative to the
`plates.
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`The Board need not construe other terms as they are irrelevant for this proceeding.
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`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
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`(Fed. Cir. 2017).
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`A.
`“Vapor chamber”
`Patentee contends that “vapor chamber” means a “vacuum sealed chamber,
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`wherein a heat transfer fluid is evaporated and condensed and capillary action are
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`utilized to spread heat.” (POR at §IV.A.) This construction is incorrect.
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`2
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`Petitioner’s Reply
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`“Spreading heat”
`First, Patentee imports a “spreading heat” requirement into the term “vapor
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`chamber” (id.) from the specification, which is a cardinal sin under patent law.
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`Teleflex, Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002);
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`CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (“this
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`court will not at any time import limitations from the specification into the claims.”).
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`Patentee chose to recite the “spreading heat” limitation only in the preambles: “A
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`heat pipe for spreading heat,” which alone shows that “spreading heat” should not
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`be imported. Acumed LLC v. Stryker Corp., 483 F.3d 800, 807 (Fed. Cir. 2007);
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`Intellectual Ventures I LLC v. T-Mobile USA, Inc., 902 F.3d 1372, 1379
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`(Fed. Cir. 2018).
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`The preambles’ “spreading heat” language is not limiting because it does not
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`recite essential structure or steps, is not necessary to give life, meaning, and vitality
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`to any claim, and does not provide antecedent basis for any limitations. In re Fought,
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`941 F.3d 1175, 1178 (Fed. Cir. 2019); Arctic Cat Inc. v. GEP Power Prod., Inc., 919
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`F.3d 1320, 1328 (Fed. Cir. 2019). The claims also recite a structurally complete
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`device “such that deletion of the preamble phrase does not affect the structure or
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`steps of the claimed invention.” (Ex-1032-Pokharna at ¶¶19-25.) Catalina Mktg.
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`Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002).
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`3
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`Accordingly, the preamble does not limit the challenged claims.3 Patentee does not
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`Petitioner’s Reply
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`address the preamble issue in its POR, so it appears to concede as much.
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`Even if the “vapor chamber” required “heat spreading” (it does not),
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`Morikawa and Nakamura “spread heat.” As Dr. Pokharna explains, despite the
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`claims do not require “heat spreading,” the patents-in-suit’s heat pipe can spread
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`heat outward radially from a heat source and toward an opposite plate:
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`
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`3 Given the parties’ agreement on consistent claim construction across the patents-
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`in-suit, this analysis controls even for the preambles of claims 5-8 of the ’680 patent,
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`which do not recite “spreading heat.”
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`4
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`(Ex-1032-Pokharna at ¶¶26-29.) Dr. Pokharna shows that Morikawa (in
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`Petitioner’s Reply
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`Nakamura’s Figure 2) and Nakamura (Figure 3) spread heat in the same way:
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`
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`(Id. at ¶¶30-32.)
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`5
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`Petitioner’s Reply
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`Dr. Faghri’s contrary opinion is faulty. First, he never explains how heat
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`spreads in the patents-in-suit’s heat pipe. Second, he improperly asserts Morikawa’s
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`and Nakamura’s heat flows are “one-dimensional,” unfoundedly requiring heat to
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`move 99% in one direction. (Ex-1033 at 57:24-58:1.) Third, he admits Morikawa
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`and Nakamura can have just one heat source (as shown above), yet has never
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`analyzed their heat flows that way. (Id. at 47:13-49-3 (Morikawa); at 50:50-52:3
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`(Nakamura); Ex-2102 at ¶124, 127 (annotated figures always employing many heat
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`sources).)
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`In sum, the Board should decline to import a “heat spreading” requirement
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`into “vapor chamber,” though the prior art discloses “heat spreading” regardless.
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`“Vacuum sealed”
`The parties dispute whether the “vapor chamber” is “vacuum sealed”
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`(Patentee) or “hermetically sealed” (Petitioner), which need not be resolved because
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`Petitioner’s prior art discloses a “vacuum sealed” chamber under Patentee’s
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`definition. Specifically, Morikawa discloses:
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`“The heat pipe has … an enclosure of an airtight structure and encloses
`a liquid acting as a refrigerant such as water … inside the pipe after air
`is extracted therefrom.” (Morikawa at 1.)
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`Similarly, Nakamura discloses:
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`Petitioner’s Reply
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`“A heat pipe… has a… sealed container of an airtight structure … and
`encloses an appropriate amount of refrigerant such as Freon… in the
`container after air is extracted therefrom.” (Nakamura at 2-3.)
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`Thus, both Morikawa and Nakamura disclose “vacuum sealed” chambers, and
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`Patentee has not contended otherwise.4
`
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`“Capillary action”
`The parties dispute whether the “vapor chamber” requires “capillary action,”
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`which needs no resolution because Petitioner’s prior art discloses capillary action,
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`and Patentee has not contended otherwise.
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`Patentee tries to import “capillary action” apparently to support its
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`motivation-to-combine related arguments. (IPR2019-00144 POR at §VI.F (“does
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`not rely on capillary action”), IPR2019-00146 POR at §VII.E; IPR2019-00334 POR
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`at §§VII.C, VIII.F; IPR2019-00337 POR at §§VIII.C, IX.E, IPR2019-00338 POR at
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`4 The patents-in-suit also admit that “vacuum sealed” heat pipes are conventional.
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`(Ex-1001 at 3:34-38 (“Heat pipe 10 is then evacuated to remove all non-condensible
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`gases and a suitable quantity of heat transfer fluid is placed within it. This is the
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`conventional method of constructing a heat pipe, and is well understood in the art of
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`heat pipes.”).) Such admissions bind a patentee. PharmaStem Therapeutics, Inc. v.
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`ViaCell, Inc., 491 F.3d 1342, 1362 (Fed. Cir. 2007).
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`§VII.C.) Even assuming arguendo that capillary action were required (it is not), a
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`Petitioner’s Reply
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`POSITA would still be motivated to combine the teachings of Takahashi with
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`Nakamura and Morikawa, as explained below.
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`First, the patents-in-suit admit that sealing a heat pipe about its outer edges
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`by, e.g., brazing is conventional. (Ex-1001 at 3:29-38.) PharmaStem 491 F.3d at
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`1362. This is confirmed by NASA-1971, which illustrates flat heat pipes sealed
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`about their edges via brazing or welding:
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`(Ex-1032-Pokharna at ¶63, citing Ex-1037.) Thus, Takahashi’s flanged sealing
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`methods are conventional, and a POSITA would find it obvious to combine them
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`with Morikawa and/or Nakamura. (Ex-1002 at ¶62-64; Ex-1032-Pokharna at
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`¶¶58-64.)
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`Petitioner’s Reply
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`Second, Nakamura, Morikawa, and Takahashi analogously disclose and claim
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`heat pipes and thus are in the same field of endeavor, like the patents-in-suit. Airbus
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`S.A.S. v. Firepass Corp., 941 F.3d 1374, 1379-80 (Fed. Cir. 2019); In re Deminski,
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`796 F.2d 436, 442 (Fed. Cir. 1986). Patentee contends otherwise because Takahashi
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`purportedly “does not rely on capillary action for condensate return.” (IPR2019-
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`00144 POR at §VI.F, IPR2019-00146 POR at §VII.E; IPR2019-00334 POR at
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`§§VII.C, VIII.F; IPR2019-00337 POR at §§VIII.C, IX.E, IPR2019-00338 POR at
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`§VII.C.) Such a narrow view of “analogous art” is routinely rejected. Stevenson v.
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`Int’l Trade Comm., 612 F.2d 546, 550 (CCPA 1979); In re Bigio, 381 F.3d 1320,
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`1325-26, (Fed. Cir. 2004); In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992); In
`
`re Wood, 599 F.2d 1032, 1036 (CCPA 1979)).
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`Finally, Patentee apparently argues that Nakamura and Morikawa teach away
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`from using Takahashi’s flanges. (IPR2019-00144 POR at §VI.F, IPR2019-00146
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`POR at §VII.E; IPR2019-00334 POR at §§VII.C, VIII.F; IPR2019-00337 POR at
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`§§VIII.C, IX.E, IPR2019-00338 POR at §VII.C.) But the patents-in-suit admit that
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`sealing heat pipes at their flanges/lips by soldering or brazing is conventional (Ex-
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`1001 at 3:29-38), which Takahashi and Nakamura both disclose. (Takahashi at 5:12-
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`20, 6:14-22; Nakamura at 5.) Further, as Dr. Pokharna explains, Takahashi’s flanges
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`are routinely implemented with Nakamura’s and Morikawa’s heat pipes, so there is
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`no teaching away. (Ex-1032 at ¶63.) Meiresonne v. Google, Inc., 849 F.3d 1379,
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`Petitioner’s Reply
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`
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`1382 (Fed. Cir. 2017). And Patentee’s argument that something “could” go wrong
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`(IPR2019-00144 POR at §VII.F (e.g., “could create gaps”), IPR2019-00146 POR at
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`§VII.E; IPR2019-00334 POR at §§VII.C, VIII.F; IPR2019-00337 POR at §§VIII.C,
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`IX.E, IPR2019-00338 POR at §VII.C) is the wrong standard. All that is required is
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`a reasonable expectation of success, which a POSITA would have when combining
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`Takahashi with Nakamura and/or Morikawa. Hoffmann-La Roche Inc. v. Apotex
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`Inc., 748 F.3d 1326, 1331 (Fed. Cir. 2014); In re O'Farrell, 853 F.2d 894, 903-904
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`(Fed. Cir. 1988); Pokharna Supp. Decl. at ¶61. Thus, Patentee’s teaching away
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`argument is also incorrect.
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`If the Board elects to resolve this dispute, Petitioner’s proposed plain-meaning
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`construction of “vapor chamber” should be adopted. (Petition at §VIII.A.)
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`Patentee’s construction should be rejected because it improperly renders the “wick”
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`limitations of many challenged claims superfluous.5 Wasica Fin. GmbH v. Contl.
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`Automotive Sys., Inc., 853 F.3d 1272, 1288 n.10 (Fed. Cir. 2017) (“It is highly
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`disfavored to construe terms in a way that renders them void, meaningless, or
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`superfluous.”). Specifically, seven claims across the IPRs already require a wick.
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`5 Given the parties’ agreement on consistent claim construction across the patents-
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`in-suit, this analysis controls even for claims that do not refer to “wicks.”
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`10
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`(’240 patent at claims 10-11; ’680 patent at claims 1, 5-8.) Claim 5 of the ’680 patent
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`Petitioner’s Reply
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`
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`is representative:
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`“5. An integrated circuit chip cooling structure comprising:
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`a top plate having … said edge lips of said top and bottom plates
`being bonded together so as to define a vapor chamber;
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`a capillary wick provided within said vapor chamber;”
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`Thus, claim 5 expressly “define[s]” a “vapor chamber” separately from a “capillary
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`wick.” Importing “capillary action” into “vapor chamber” renders the capillary wick
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`limitation superfluous and is improper.6 Patentee’s argument that a capillary wick
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`“positioned or provided within the vapor chamber” excludes the capillary grooves
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`formed in a vapor chamber’s wall is nonsensical. This is because the “positioned”
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`and “provided” limitations merely indicate the location and the availability of the
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`“wick,” and does not exclude any capillary grooves, which Patentee’s expert
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`expressly admits are covered by the term “wick.” Ex-2002 at ¶100. Thus, Patentee’s
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`proposal requiring “capillary force” for “vapor chamber” that renders the “capillary
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`wick” limitation superfluous should be rejected.
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`6 Patentee’s expert also imports a “wick” requirement into the claims, showing he
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`improperly construed the claims. (Ex-1033 at 19:23-20:24.)
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`11
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`Petitioner’s Reply
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`“Chamber”
`The parties’ dispute on whether “chamber” requires construction need not be
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`resolved because Petitioner’s prior art discloses a “chamber,” which Patentee does
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`not dispute.
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`B.
`“Lip”
`The parties’ dispute on the meaning of “lip” needs no resolution because
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`Takahashi discloses a “lip” under either party’s construction, and Patentee has not
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`contended otherwise.
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`The Board indicated in two IPRs that it believes the “circumferential edge lip”
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`and “peripheral lip located at an edge” limitations may be different. (IPR2019-
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`00144 Decision at 11-15, FN3; IPR2019-00337 Decision at 12-15, FN4.) But they
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`are the same. Indeed, the PORs did not address this issue and even used those terms
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`interchangeably. (IPR2019-00338 POR at 8 (“the heat pipe of the ’680 Patent
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`comprises a ‘vapor chamber’ defined by two ‘plates’ and incorporates peripheral or
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`circumferential edge ‘lips’ for bonding the plates together.”); see also IPR2019-
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`00144 POR at 7-8, 22-23, and 53; IPR2019-00146 POR at 24, IPR2019-00334 POR
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`at 8, 24, 53; and IPR2019-00337 POR at 7-8, 23, 53.) Further, as shown in FIG. 3
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`of the patents-in-suit, whether the term periphery or circumference is used, the “edge
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`lip” is the same:
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`Petitioner’s Reply
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`Accordingly, if the Board chooses to construe these limitations, it should treat them
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`identically. Wasica Fin. GMBH, 853 F.3d at 1282 (Fed. Cir. 2017) (finding “the
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`specification and claims used the words ‘emit’ and ‘transmit’ interchangeably”).
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`Finally, claim differentiation is not pertinent here because the “circumferential” and
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`“peripheral” limitations occur in different claim sets. Andersen Corp. v. Fiber
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`Composites, LLC, 474 F.3d 1361, 1370 (Fed. Cir. 2007); InterDigital Commun., Inc.
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`v. U.S. Intern. Trade Commn., 601 Fed. Appx. 972, 979 (Fed. Cir. 2015).
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`Petitioner’s Reply
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`C.
`“Spacer”
`The parties’ dispute on whether a “spacer” should be limited to a non-integral
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`structure requires resolution because at least one challenged claim in each of the
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`patents-in-suit requires a “spacer” that “extends between and contacts” the two
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`plates. (See, e.g., claim 11 of the ’240 patent, claim 1 of the ’679 patent, and claims
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`1 and 5 of the ’680 patent.) Patentee contends a “spacer” must be a structure separate
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`from the plates due to this language (PORs at §IV.C), but intrinsic evidence shows
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`otherwise. (IPR2019-00144 Petition at §§VIII.C, IX.D; see also IPR2019-00334
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`and -00337 Petitions at §VIII.A.)
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`Claim terms’ meanings are those to a POSITA in the context of the entire
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`patent, including its specification. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.
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`Cir. 2005). “[T]he specification is always highly relevant…. Usually it is
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`dispositive; it is the single best guide to the meaning of a disputed term.” Id. at 15.
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`Here, the specification specifies:
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`“The internal structure of the heat pipe … includes a pattern of spacers
`extending between and contacting the two plates or any other boundary
`structure forming the vapor chamber.… These spacers can be solid
`columns, embossed depressions formed in one of the plates, or a
`mixture of the two.” (Ex-1001 at 2:6-14 (emphasis added).)
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`Thus, Patentee’s contention that a “spacer” cannot be a “depression” because it
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`allegedly cannot “extend[] between and contact[]” two plates (PORs at §IV.C) is
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`inconsistent with the specification. Further, FIGS. 1 and 2 show both depressions
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`Petitioner’s Reply
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`
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`(26-gold) and solid columns (44-red) “extend between and contact” the plates in the
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`same way:
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`As shown above, neither type of the spacers is “separate” from the plates: the
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`Petitioner’s Reply
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`
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`depressions (26-gold) are integral with the first plate, and the solid columns (44-red)
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`are integral with the second plate, as Patentee’s expert admits. (Ex-1033 at 26:11-
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`25, 27:19-28:2, 41:7-14; see also id. at 35:8-18 (admitting that spacers may be
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`depressions).) Thus, the “extending between and contacting” language when read
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`in light of the specification expressly allows for both integral and non-integral
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`spacers. (Ex-1032-Pokharna at ¶¶35-37.)
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`IV. NAKAMURA IS A PRINTED PUBLICATION
`Patentee wrongly disputes Nakamura’s (Ex-1004) printed-publication status.7
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`(PORs at §V.) As explained in the Japanese Patent Attorney Declaration included
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`herewith (Ex-1044), at the time of Nakamura (1973-1975), the Japanese Patent
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`Office provided public access to utility model applications in two ways: (1)
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`publishing a condensed version of the full application in the Japanese Utility Model
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`Gazette that included all portions of the application except the detailed description,
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`and (2) allowing public inspection of the full application at the Japanese Patent
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`Office, which was required by law to do so upon publication of the condensed
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`version. Access to the full version was obtained by referencing the identifying
`
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`7 The Board requested the parties resolve this dispute outside of briefing. (Decision
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`at 15.) Counsel for Petitioner tried to do so, but was unsuccessful.
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`details in the condensed version, such as the publication number. Accordingly, the
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`Petitioner’s Reply
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`
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`full version of Nakamura (Ex-1004) was publicly accessible as of May 26, 1975
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`when its condensed version was published. (Ex-1044 at ¶¶11-17.) Thus, Nakamura
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`is a printed publication under 35 U.S.C. 102(b).8 Ex parte Hypoxico, Inc., No. 2015-
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`004931, 2016 WL 2894712 (P.T.A.B. May 16, 2016); In re Wyer, 655 F.2d 221, 226
`
`(CCPA 1981).
`
`Patentee argues that Petitioner did not file its supplemental Nakamura
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`evidence with the Board. (POR at 33-34.) But supplemental evidence is served, not
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`filed. See §42.64(b)(2); PTAB Trial Practice Guide Update (August 2018).
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`Nonetheless, Patentee submitted Petitioner’s supplemental evidence as Ex-2011.
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`V. GROUND 1 - NAKAMURA RENDERS OBVIOUS CLAIMS 1, 2,
`AND 4
`Claims 1, 2 and 4 do not recite a “lip” limitation. Claim 5, however, recites
`
`“wherein said first and second plates each include a peripheral lip located at an edge
`
`of said boundary structure which are bonded together.” Petitioner stands by its
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`contentions in its Petitions that both Morikawa and Nakamura disclose the claimed
`
`
`8 For simplicity, Ex-1044 cited Nakamura-1 (Ex-2011) and Nakamura-2 (Ex-1004)
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`from IPR2019-00144. Nakamura-1 is of record in all IPRs as either Ex-2011 or Ex-
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`2111, and Nakamura-2 is of record in all IPRs as either Ex-1004 or Ex-1104.
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`“lips,” but Petitioner no longer maintains those positions in these IPRs.
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`Petitioner’s Reply
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`
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`Accordingly, Petitioner no longer relies on Ground 1 relative to claim 5 for this IPR.
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`As shown below, Ground 1 renders obvious claim 1, 2, and 4 of the subject patent.
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`The main disputes for Ground 2 relate to claim construction. Patentee argues
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`that Nakamura does not disclose a “vapor chamber” because it does not “spread
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`heat.” (POR at §VI.B.) As discussed above in §III.A.1, the claims do not require
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`“heat spreading,” and, even if they did, Nakamura spreads heat in the same manner
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`as the patents-in-suit.
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`Patentee next argues that Nakamura fails to disclose the two plate
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`requirements of the claims. (POR at §VI.C.) Specifically, Patentee argues that
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`Nakamura, as translated, uses the singular word “plate” instead of “plates.” (Id.)
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`However, the Japanese do not differentiate plural nouns from singular, and it is “very
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`difficult” for human translators to convert Japanese nouns into an appropriate plural
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`or singular version in English. (Ex-1032 at ¶55, citing Exs-1040, 1041.) Thus, use
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`of a singular noun in an English translation is not dispositive. Further, in
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`determining obviousness, the references as a whole must be examined. Panduit
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`Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 (Fed. Cir. 1987).
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`Patentee failed to examine Nakamura as a whole. Patentee’s expert argues
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`“Nakamura’s figures alone” show two plates are not used. (Ex-2002 at ¶133.) Yet
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`Patentee’s expert fails to explain any figure, and completely ignores FIG. 4 of
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`Nakamura (and FIG. 2B and 3 of Morikawa), which clearly show two different
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`Petitioner’s Reply
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`plates:
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`(FIG. 2)
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`
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`(Ex-1032-Pokharna at ¶¶39-40.) Further, as Dr. Pokharna explains, irrespective of
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`the use of the word “plate,” a POSITA would have known that Nakamura and
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`Morikawa disclose devices made from two plates. (Id. at ¶¶41-55)
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`Patentee’s remaining arguments are incorrect. For instance, Patentee argues
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`that the Nakamura translation (Ex-1004) is defective. (POR at 44.) But, the two
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`other certified translations submitted in these proceedings (Exs-2012, 2013) show
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`Petitioner’s Reply
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`
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`that Nakamura-1004 was properly translated. (Compare Ex-1004 to Exs-2012, 2013
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`(showing only minor differences, and the type you would expect when three
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`different humans translate a single Japanese reference into English). Further,
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`Patentee chose not to depose Petitioner’s translator, so the translator’s credibility is
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`unchallenged and the evidence is sound. Xilinx, Inc. v. Godo Kaisha IP Bridge 1,
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`IPR2017-00842, Paper 36 at 7-10 (PTAB June 7, 2018) (rejecting a patent owner’s
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`motion to exclude a certified translation, and noting that the patent owner had the
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`opportunity to cross-examine petitioner’s witness but chose not to do so).
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`Patentee also argues that only two conventional methods of making flat heat
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`pipes were known: by using unitary members, such as extrusions, or by folding a
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`single sheet of metal over on itself. (POR at 45.) However, two NASA references
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`from the same time as Morikawa and Nakamura disclose flat heat pipe “sandwich”
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`configurations using two plates. (Ex-1032 at ¶¶44-49, citing Ex-1036-1037.)
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`Moreover, no evidence exists showing heat pipes were conventionally made by
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`folding a metal sheet over on itself, and, in any event, a POSITA would not make
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`the devices of Morikawa and Nakamura in that manner. (Ex-1032 at ¶50.)
`
`Patentee’s argument that end caps would be used with the flat heat pipes of
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`Nakamura is also flawed. (POR at 45.) Patentee’s expert admitted that the “end
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`cap” figure from his Declaration (Ex-2002 at ¶34) is the same as the figure shown
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`in Chapter 14 of his 1995 book. (Ex-1033 at 8:9-9:25.) This portion of Dr. Faghri’s
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`Petitioner’s Reply
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`
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`1995 book is dedicated to circular heat pipes. (Ex-1034 at 763, §14.2.1 (“Therefore,
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`circular cross-section heat pipes are discussed in this section.”) and 765 (Fig. 14.2
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`showing end caps relative to §14.2.1); see also Ex-1038 (proving
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