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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Asetek Danmark A/S
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`Petitioner
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`v.
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`CoolIT Systems, Inc.
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`Patent Owner
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`____________
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`Case IPR2020-00747
`Patent 9,057,567
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`____________
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`SUPPLEMENTAL DECLARATION OF DONALD E. TILTON, PH.D.
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`IPR2020-00747
`U.S. Patent No. 9,057,567
`Supplemental Declaration of Donald Tilton
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`INTRODUCTION
`I, Dr. Donald E. Tilton, previously signed a declaration (Exhibit 1003)
`1.
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`I.
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`dated March 25, 2020, in support of Petitioner Asetek Danmark A/S’s Petition for
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`Inter Partes Review of U.S. Patent No. 9,057,567 (“the ’567 patent”) in IPR2020-
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`00747. I understand that on January 11, 2021, Patent Owner CoolIT Systems, Inc.
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`filed a Response to the Petition (“Patent Owner Response” or “POR,” Paper No. 19),
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`which raises a new claim construction position for the claim term “matingly
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`engaged” in claim 1 of the ’567 patent. I have reviewed the Patent Owner Response
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`and the Declaration of Dr. Himanshu Pokharna (Exhibit 2027) in support of the
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`Response, and I do not agree with them for the reasons previously stated in my initial
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`declaration (Exhibit 1003) and herein. This supplemental declaration specifically
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`addresses Patent Owner and Dr. Pokharna’s claim construction of “matingly
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`engaged,” which they introduced for the first time in the Patent Owner Response. I
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`believe the other issues raised in the Patent Owner Response and Dr. Pokharna’s
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`Declaration were fully addressed in my initial declaration and/or my deposition
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`taken on December 19, 2020 (Exhibit 2029), and for sake of brevity I have not
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`repeated those opinions here. I incorporate by reference my testimony in the initial
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`declaration and in my deposition transcript.
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`1
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`IPR2020-00747
`U.S. Patent No. 9,057,567
`Supplemental Declaration of Donald Tilton
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`II. CLAIM CONSTRUCTION OF “MATINGLY ENGAGED”
`The term “matingly engaged” in claim 1 of the ’567 patent should be
`2.
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`given its plain and ordinary meaning, which is to be joined or fitted together to make
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`contact. A person of ordinary skilled in the art would have understood upon reading
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`claim 1 and the ’567 patent specification that the compliant member must be joined
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`or fitted to contact the underside of the housing to prevent liquid from short-
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`circuiting between the inlet and the outlet sides of the cooling device. If the
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`compliant member is not joined or fitted to contact the underside of the housing,
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`liquid would bypass the microchannels and instead flow through the gaps between
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`the compliant member and the underside of the housing.
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`3.
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`Contrary to Patent Owner and Dr. Pokharna’s assertion, the compliant
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`member and the housing need not always be joined or fitted together through
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`interlocking of complementary contoured features, such as by dovetailing or stud-
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`and-tube coupling (i.e., Legos), for them to be “matingly engaged.” All that is
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`required by the “matingly engaged” term in claim 1 is that the compliant member be
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`joined or fitted to contact the underside of the housing; no specific method of joining
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`or fixing is required by the claim or the ’567 patent. Thus, Patent Owner and Dr.
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`Pokharna’s assertion that the term “matingly engaged” requires the compliant
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`member and the housing to be interlocked through complementary features is
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`2
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`IPR2020-00747
`U.S. Patent No. 9,057,567
`Supplemental Declaration of Donald Tilton
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`incorrect because that would improperly exclude other forms of mating engagement
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`between two surfaces, for example, through mechanical contact, or attachment
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`through adhesives, bonding agent, or fusion. All methods of joining or fixing two
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`surfaces, such as adhesion, bonding, fusion, mechanical contact, interlocking, etc.
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`are within the scope of the term “matingly engaged” recited in claim 1 of the ’567
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`patent.
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`4.
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`A person of ordinary skill in the art would understand that there are
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`three primary functional purposes for “matingly engag[ing]” the compliant insert
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`with the underside of the housing, as described in the ’567 patent: to create fluid
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`passages, to align the parts, and to seal the passages to prevent fluid bypass. The
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`assertion that the parts need to interlock like Legos or a dovetail joint is erroneous
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`and overly restrictive. It is not reasonable to restrict the definition of “matingly
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`engaged” to require interlocking when there are many other available methods of
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`matingly engaging parts that would meet the functional requirements stated above,
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`but not necessarily interlock the parts like Legos or dovetail joints.
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`Respectfully submitted,
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`By:
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` Donald E. Tilton, Ph.D.
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`3
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`Dated: April 12, 2021
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