Case 3:16-cv-07160-JST Document 105 Filed 01/17/18 Page 1 of 14
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`ASIA VITAL COMPONENTS CO., LTD.,
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`Plaintiff,
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`v.
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`ASETEK DANMARK A/S,
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`Defendant.
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`Case No. 16-cv-07160-JST
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`CLAIM CONSTRUCTION ORDER
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`Re: ECF Nos. 86, 94.
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`Before the Court is Defendant Asetek Danmark A/S’s (“Asetek”) Opening Claim
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`Construction Brief, ECF No. 86, and Plaintiff/Counterclaim Defendant Asia Vital Components
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`Co., Ltd.’s (“AVC”) Responsive Claim Construction Brief, ECF No. 94. The parties propose
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`competing constructions of nine terms from Asetek’s patents, U.S. Patent Nos. 8,240,362 (“the
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`’362 patent”) and 8,245,764 (“the ’764 patent”).1 The court will construe the terms as set forth
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`below.
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`I.
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`BACKGROUND
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`This case concerns two patents, held by defendant Asetek, that describe a liquid cooling
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`device for the central processing unit of a computer. AVC brought this declaratory judgment suit
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`against Asetek seeking a judgment that the ’362 patent and the ’764 patent are invalid,
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`unenforceable, and not infringed by AVC. ECF No. 1 at 1-2. Asetek counterclaimed that the
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`AVC products-at-issue infringe certain claims from the patents-in-suit. ECF No. 73 at 8-20.
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`The specifications of the ’362 and ’764 patents are similar, but the patents are neither
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`1 The parties agree that “double-sided chassis” (’764 patent, claim 1) shall be construed as “a two-
`sided frame or housing, each side of which has a purpose.” ECF No. 78 at 2. The Court will
`construe this term accordingly.
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`Case 3:16-cv-07160-JST Document 105 Filed 01/17/18 Page 2 of 14
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`directly related nor identical. ECF No. 86 at 7. However, the parties agree that certain similar
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`claim terms in both patents shall be construed to have the same meaning.
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`II.
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`OBJECTION TO EXPERT DECLARATION
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`Asetek objects to the Declaration of Dr. Randy Clarksean, and its exhibits, submitted in
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`support of AVC’s Responsive Claim Construction Brief. ECF No. 99 at 2. Asetek objects on two
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`grounds: (1) “failure to designate the expert witness testimony (and accompanying exhibits) during
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`the exchange of the parties’ ‘Preliminary Claim Constructions’ as required by Patent L.R. 4-2,” and (2)
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`“failure to identify the expert witness testimony (and accompanying exhibits) in the Parties’ Joint
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`Claim Construction and Prehearing Statement” as required by Patent L.R. 4-3. Id. AVC did not
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`respond to Asetek’s objection.
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`Patent Local Rule 4-2 requires the parties to exchange their preliminary proposed
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`constructions for disputed claim terms, as well as the evidentiary support—both intrinsic and
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`extrinsic—for those proposed constructions. Patent L.R. 4-2(b). The rule requires parties who
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`may rely on expert testimony to “provide a description of the substance of that witness' proposed
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`testimony that includes a listing of any opinions to be rendered in connection with claim
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`construction.” Patent L.R. 4-2(b).
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`Patent Local Rule 4-3, which sets out the requirements for the Joint Claim Construction
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`and Prehearing Statement, likewise requires identification of “any extrinsic evidence known to the
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`party on which it intends to rely either to support its construction or to oppose any other party's
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`proposed construction,” including “testimony of percipient and expert witnesses.” Patent L.R. 4-
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`3(b).
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`The parties have not provided the Court with AVC’s Patent Local Rule 4-2 disclosures.
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`Because AVC did not respond to the objection, however, the Court assumes that AVC did not
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`identify Dr. Randy Clarksean there. AVC did not identify Dr. Randy Clarksean or propose any
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`expert witness testimony in its Local Rule 4-3 disclosures either. Given that AVC did not even
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`raise the possibility of expert witness testimony before its Responsive Claim Construction Brief,
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`let alone identify its expert witness by name, AVC violated Patent Local Rules 4-2 and 4-3.
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`The Court acknowledges there is some ambiguity in the Patent Local Rules regarding the
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`Case 3:16-cv-07160-JST Document 105 Filed 01/17/18 Page 3 of 14
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`level of detail required to adequately preserve the right to rely on expert testimony. However,
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`under any reasonable reading of these rules, AVC’s disclosures failed to put Asetek on notice of
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`AVC’s intent to rely on expert testimony. A prior order from this Court addressed the disclosure
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`requirements of the Patent Local Rules with respect to the use of expert opinion at claim
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`construction. Tristrata, Inc. v. Microsoft Corp., No. 11-cv-03797-JST, 2013 WL 12172909, at *2
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`(N.D. Cal. May 13, 2013). There, the plaintiff claimed to have a “good faith dispute [with the
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`defendants] over the meaning of Patent Local Rule 4-3,” with the plaintiff interpreting the rule to
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`mean “that it could disclose its expert's declaration for the first time with its opening claim
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`construction brief.” Id. at *2. The Court rejected this argument because “Local Rule 4-3(b) does
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`require the filing of any expert report simultaneously with the JCCPS.” Id. (emphasis in original).
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`Consistent with its prior rulings, the Court finds here that AVC did not properly disclose
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`Dr. Clarksean’s testimony as required by the Federal Rules and the Court's Patent Local Rules.
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`Thus, the declaration must be stricken or excluded unless AVC’s failure was “substantially
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`justified or harmless.” Fed. R. Civ. P. 37(c)(1). The Court finds that AVC’s failure to comply
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`with the rules was neither justified nor harmless. AVC has provided no justification for its failure,
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`and the failure was not harmless. Due to the belated expert disclosure, Asetek had no opportunity
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`to take Dr. Clarksean’s deposition in advance of its opening brief or to offer its own expert
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`declaration to address the opinions likely to be offered by Dr. Clarksean. See Wong v. Regents of
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`Univ. of California, 410 F.3d 1052, 1062 (9th Cir. 2005) (“Disruption to the schedule of the court
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`and other parties ... is not harmless.”).
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`The Court will disregard the Declaration of Dr. Randy Clarksean and the exhibits to his
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`declaration, ECF No. 95.
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`III.
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`LEGAL STANDARD
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`The construction of terms found in patent claims is a question of law to be determined by
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`the court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc),
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`aff'd, 517 U.S. 370 (1996). “[T]he interpretation to be given a term can only be determined and
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`confirmed with a full understanding of what the inventors actually invented and intended to
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`envelop with the claim.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting
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`Case 3:16-cv-07160-JST Document 105 Filed 01/17/18 Page 4 of 14
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`Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)); see also
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`MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1256 (Fed. Cir. 2012) (when construing claims,
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`courts must consider “what was invented, and what exactly was claimed.”). The “correct
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`construction,” therefore, is one that “stays true to the claim language and most naturally aligns
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`with the patent’s description of the invention.” Id. While not every claim term must be construed,
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`“[w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the
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`court’s duty to resolve it.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
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`1362 (Fed. Cir. 2008); see also Every Penny Counts, Inc. v. Am. Express Co., 563 F.3d 1378,
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`1383 (Fed. Cir. 2009) (“[T]he court’s obligation is to ensure that questions of the scope of the
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`patent claims are not left to the jury. In order to fulfill this obligation, the court must see to it that
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`disputes concerning the scope of the patent claims are fully resolved.”) (citation omitted).
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention.’ ”
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`Phillips, 415 F.3d at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
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`381 F.3d 1111, 1115 (Fed. Cir. 2004)). The Federal Circuit has held that words of a claim are
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`generally given their “ordinary and customary meaning,” which is the “meaning that the term
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`would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as
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`of the effective filing date of the patent application.” Id. at 1312-13. In some cases, the ordinary
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`meaning of claim language is “readily apparent,” and “claim construction . . . involves little more
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`than the application of the widely accepted meaning of commonly understood words.” Id. at
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`1314. In other cases, “determining the ordinary and customary meaning of the claim requires
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`examination of terms that have a particular meaning in a field of art.” Id. Claim construction may
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`deviate from the ordinary and customary meaning of a disputed term only if “a patentee sets out a
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`definition and acts as his own lexicographer” or if “the patentee disavows the full scope of a claim
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`term either in the specification or during prosecution.” Thorner v. Sony Computer Entm’t Am.
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`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Vitronics Corp v. Conceptronic, Inc., 90 F.3d
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`1576, 1580 (Fed. Cir. 1996)).
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`In claim construction, “the claims themselves provide substantial guidance as to the
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`meaning of particular claim terms.” Phillips, 415 F.3d at 1314. The “context in which a term is
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`Case 3:16-cv-07160-JST Document 105 Filed 01/17/18 Page 5 of 14
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`used in the asserted claim,” “[o]ther claims of the patent in question, both asserted and
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`unasserted,” and “[d]ifferences among claims” are all instructive. Id. “The claims, of course, do
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`not stand alone” and instead “must be read in view of the specification,” which is “[u]sually . . .
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`dispositive” and “the single best guide to the meaning of a disputed term.” Id. at 1315. Courts
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`“normally do not interpret claim terms in a way that excludes disclosed examples in the
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`specification.” Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir.
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`2007). Additionally, the Federal Circuit has cautioned that “limitations from the specification are
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`not to be read into the claims.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186
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`(Fed. Cir. 1998). Even if a patent describes only a single embodiment, the Federal Circuit has
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`“expressly rejected” the contention that the claims must be construed as being limited to that
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`embodiment. Phillips, 415 F.3d at 1323. In addition to consulting the specification, “the court
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`should also consider the patent’s prosecution history.” Markman, 52 F.3d at 980 (citing Graham
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`v. John Deere Co., 383 U.S. 1, 33 (1966)). However, because the “prosecution history represents
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`an ongoing negotiation between the [Patent and Trademark Office] and the applicant, rather than
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`the final product,” it “often lacks the clarity of the specification” and therefore “is less useful.”
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`Phillips, 415 F.3d at 1317.
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`Though intrinsic evidence – the claims, specification, and prosecution history – is more
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`significant and reliable than extrinsic evidence, courts may also consider the extrinsic record in
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`claim construction, including expert and inventor testimony, dictionaries, and learned treatises. Id.
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`at 1317-18. Within the class of extrinsic evidence, dictionaries, and especially technical
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`dictionaries, “can assist the court in determining the meaning of particular terminology to those of
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`skill in the art” because they “endeavor to collect the accepted meanings of terms used in various
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`fields of science and technology.” Id. at 1318.
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`Case 3:16-cv-07160-JST Document 105 Filed 01/17/18 Page 6 of 14
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`IV. DISPUTED CLAIM TERMS
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`A.
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`“reservoir” (’362 Patent, claims 14, 15-17, 18; ’764 Patent, claims 1, 2, 9-11,
`13, 15, 18, 21, 22, 25, 26, 28-30)
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`AVC’s Proposed Construction
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`Asetek’s Proposed Construction
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`“A receptacle for holding and retaining
`liquid.”
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`“single receptacle defining a fluid flow path”
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`1.
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`“a receptacle” vs. “single receptacle”
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`The parties agree that reservoir would “generally mean ‘receptacle’ to a person of ordinary
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`skill in the art.” ECF No. 86 at 12. AVC proposes “a receptacle” while Asetek proposes “single
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`receptacle.” Asetek “acknowledges that AVC’s construction of ‘reservoir’ as ‘a receptacle’
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`should also mean that ‘the reservoir’ must be only one receptacle. ECF No. 86 at 13. However,
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`Asetek asks the Court to construe reservoir as a “single receptacle” to provide clarification that the
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`claimed reservoir is a single receptacle and to avoid any arguments that the reservoir was formed
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`by connecting two receptacles.2 ECF No. 86 at 13.
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`Ordinarily, inserting the word “single” would be unnecessary because the term “reservoir”
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`is singular and not plural. However, given that AVC does not address this argument or the dispute
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`between “a receptacle” and “single receptacle” in its opposition, and in the interest of judicial
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`efficiency, the Court will construe the term reservoir as “a single receptacle.” See ECF No. 94 at
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`10 – 14.
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`2.
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` “for holding and retaining liquid” vs “defining a fluid flow path”
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`The parties also dispute the purpose and function of the reservoir. In Phillips, 415 F.3d
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`1303, 1319 (Fed. Cir. 2005), the Federal Circuit noted that some of its past cases suggested an
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`approach “to claim construction, in which the court has given greater emphasis to dictionary
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`definitions of claim terms and has assigned a less prominent role to the specification and the
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`prosecution history.” The Phillips court clarified that it “viewed extrinsic evidence in general as
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`less reliable than the patent and its prosecution history in determining how to read claim terms.”
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`Id. at 1318. It also noted that general purpose dictionaries “may be helpful” in cases where “the
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`2 Asetek asserts that defendants in prior litigation took this position.
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`Case 3:16-cv-07160-JST Document 105 Filed 01/17/18 Page 7 of 14
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`ordinary meaning of claim language as understood by a person of skill in the art [is] readily
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`apparent even to lay judges, and claim construction in such cases involves little more than the
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`application of the widely accepted meaning of commonly understood words,” but that “[i]n many
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`cases that give rise to litigation . . . determining the ordinary and customary meaning of the claim
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`requires examination of terms that have a particular meaning in a field of art,” an endeavor in
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`which general purpose dictionaries are not useful. Id. at 1414.
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`Against this backdrop, the Court evaluates AVC’s argument that its definition of
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`“reservoir” is closer to the definition adopted in prior cases and various general purpose
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`dictionaries.3 ECF No. 94 at 10-11. These prior cases also relied on general purpose dictionary
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`definitions of reservoir. See Asetek Holdings, Inc. v. CoolIT Sys. Inc., No. C-12-4498 EMC,
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`2013 WL 6327691, at *5 (N.D. Cal. Dec. 3, 2013), aff'd sub nom. Asetek Danmark A/S v. CMI
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`USA Inc., 842 F.3d 1350 (Fed. Cir. 2016); TI Grp. Auto. Sys. (N. Am.), Inc. v. VDO N. Am.,
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`L.L.C., 375 F.3d 1126, 1134-35 (Fed. Cir. 2004). Thus, these definitions are informative, the
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`Court is not bound by them.
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`Asetek contends that AVC’s construction “could imply that the ‘reservoir’ stores fluid in a
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`static state without fluid flow or movement.” ECF No. 86 at 13. Asetek argues that the patent
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`claims and the description of the exemplary embodiments show that “the cooling fluid
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`continuously flows through the fluid chambers and the passageways within the ‘reservoir’” and
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`that “the claim language itself requires that the ‘reservoir’ include chambers through which the
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`cooling liquid flows.” ECF No. 86 at 14.
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`The Court begins with the words of the claims themselves. Phillips, 415 F.3d at 1314.
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`Claim 14 of the ’362 patent and claim 1 of the ’764 patent states that the cooling system is
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`comprised of a reservoir “adapted to pass a/the cooling liquid therethrough.” ’362 patent at 19: 59-
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`60; ’764 patent at 27: 47. It is apparent from the words of the claim that the cooling liquid passes
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`through the reservoir, and is not simply retained in it. Therefore, the Court adopts Asetek’s
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`construction of reservoir as “single receptacle defining a fluid flow path.”
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`3 The Court will take judicial notice of the dictionary definitions. See BVD Licensing Corp v.
`Body Action Design, 846 F.2d 727, 728 (Fed. Cir. 1988).
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`Case 3:16-cv-07160-JST Document 105 Filed 01/17/18 Page 8 of 14
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`B.
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`“substantially circular passageway” (’362 Patent claim 14)
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`AVC’s Proposed Construction4
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`Asetek’s Proposed Construction5
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`“passage with a circular exterior”
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`“generally circular opening”
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`First, the Court considers Asetek’s argument that AVC’s construction “improperly reads
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`[the word] ‘substantially’ out of the claims.” ECF No. 98 at 12. Asetek argues, and AVC does
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`not dispute, that there “is ample authority that ‘substantially’ is a meaningful and proper modifier
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`that is often used in patent claims to mean ‘approximately’ rather than ‘perfect.’” ECF No. 98 at
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`12; ECF No. 94 at 14-18. The Court agrees. See e.g Liquid Dynamics Corp. v. Vaughan Co., 355
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`F.3d 1361, 1368 (Fed. Cir. 2004) (“The term “substantial” is a meaningful modifier implying
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`‘approximate,’ rather than ‘perfect.’”); Apple, Inc. v. Samsung Elecs. Co., 932 F. Supp. 2d 1076,
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`1081 (N.D. Cal. 2013) (“Other Federal Circuit cases have also held that the term “substantially”
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`does not require a strict numerical boundary.”).
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`The Court next considers whether “passageway” should be construed as “opening.” A
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`disputed claim term should be construed in light of its “ordinary and customary meaning,” which
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`is “the meaning that the term would have to a person of ordinary skill in the art in question at the
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`time of the invention, i.e., as of the effective filing date of the patent application.” Phillips, 415
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`F.3d at 1312-13. Claim construction may deviate from the ordinary and customary meaning of a
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`disputed term only if (1) a patentee sets out a definition and acts as his own lexicographer, or (2)
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`the patentee disavows the full scope of a claim term either in the specification or during
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`prosecution. Thorner, 669 F.3d at 1365.
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`Here, Asetek calls the Court’s attention to claim 14 of the ’362 patent, which states that the
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`reservoir includes “one or more passageways, at least one of the one or more passageways being a
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`4 AVC initially proposed “passage with a circular exterior along at least one edge”
`or “passage with at least one circular edge.” ECF no. 78 at 5. AVC proposed “passage with a
`circular exterior” in its responsive claim construction brief. ECF No. 94 at 18.
`5 Asetek initially proposed “a generally circular opening on a surface of the horizontal wall.” ECF
`No. 78 at 5. Asetek proposed “generally circular opening” in its reply claim construction brief.
`ECF No. 98 at 14.
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`substantially circular passageway positioned on the horizontal wall.” ’362 patent at 19: 55-66; 20:
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`1. This claim provides support for Asetek’s position that a substantially circular passageway is
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`positioned on the horizontal wall, but Asetek dropped “on a surface of the horizontal wall” from
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`its proposed definition. ECF No. 98 at 12. Asetek also argues that Figure 15 of the ’362 patent
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`depicts an “opening.” ECF No. 86 at 16. To support this argument, Asetek includes expert
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`testimony from Dr. Donald Tilton that “one of ordinary skill in the art would have understood the
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`claim term ‘substantially circular passageway’ in the ’362 patent to mean an opening that is
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`generally circular.” ECF No. 86-9 ¶ 20.
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`Asetek does not provide any support for replacing “passageway”—a non-technical term
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`that a lay juror would have no trouble understanding—with “opening.” Also, while “opening”
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`might be one permissible reading of the word “passageway” in the context of this patent, nothing
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`contained in the intrinsic evidence suggests it is the only one. Thus, the Court finds that Asetek
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`has not offered a sufficient justification to deviate from the ordinary and customary meaning of
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`“passageway.”
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`The Court construes the term “substantially circular passageway” as “generally circular
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`passageway.”
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`C.
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`“positioned on” (’362 Patent claims 14, 17; ’764 Patent, claim 1)
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`AVC’s Proposed Construction
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`Asetek’s Proposed Construction
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`“above and physically contacted with”
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`Plain and ordinary meaning. No construction
`needed.
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`Asetek argues that this term requires no construction. ECF No. 86 at 17. AVC argues that
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`its proposed definition is supported by English language dictionaries. ECF No. 94 at 18.
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`The Court agrees with Asetek that this term requires no construction. It is a straightfoward
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`non-technical term that a lay juror would have no trouble understanding. Further, AVC’s
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`proposed definition would render claim 1 of the ’764 patent nonsensical. Claim 1 of the ’764
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`patent states that the impeller is “positioned on the underside of the chassis” and the stator is
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`“positioned on the upper side of the chassis.” ’764 Patent at 17: 42-45. AVC’s proposed
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`construction is incompatible with claim 1 of the ’764 patent because it would require both the
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`Case 3:16-cv-07160-JST Document 105 Filed 01/17/18 Page 10 of 14
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`impellor and the stator to be located above the chassis. This construction cannot be correct. See
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`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1255 (Fed. Cir. 2010) (“A
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`claim construction that renders asserted claims facially nonsensical cannot be correct.”) (internal
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`quotation marks and citations omitted).
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`The Court finds that this term should be given its plain and ordinary meaning.
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`D.
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`“horizontal wall” (’362 Patent, claims 14, 17)
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`AVC’s Proposed Construction
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`Asetek’s Proposed Construction
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`“Planar surface”
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`Plain and ordinary meaning, or in the
`alternative, “a wall that is approximately
`parallel to the heat exchanging interface”
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`Asetek argues that this term requires no construction, or in the alternative should be
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`construed as “a wall that is approximately parallel to the heat exchanging interface.” ECF No. 86
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`at 19. AVC proposes the construction “planar surface.” ECF No. 94 at 19.
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`The Court agrees with Asetek that this term requires no construction. It consists of two
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`straighforward, non-technical terms that a lay juror would have no trouble understanding. In its
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`response, AVC defends its proposed construction against Asetek’s attacks. ECF No. 94 at 19-21.
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`However, AVC provides no support for its contention that “horizontal wall”—a straightforward
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`term—needs to be construed in the first place. The Court finds that this term should be given its
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`plain and ordinary meaning.
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`E.
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`“substantially circular passageway positioned on the horizontal wall” (’362
`Patent, claim 14)
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`AVC’s Proposed Construction
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`Asetek’s Proposed Construction
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`See “substantially circular passageway” and
`“horizontal wall,” above
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`“a generally circular opening on a surface of the
`horizontal wall”
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`AVC does not address this claim term in its responsive brief. See ECF No. 94. Asetek
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`argues that its proposed construction “proposed a positional relationship between the ‘substantially
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`circular passageway’ and the ‘horizontal wall,’ which is otherwise ignored by separate
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`constructions of these terms.” ECF No. 98 at 16.
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`Case 3:16-cv-07160-JST Document 105 Filed 01/17/18 Page 11 of 14
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`The Court has already construed “substantially circular passageway” as “generally circular
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`passageway.” And, the Court has found that “positioned on” and “horizontal wall” require no
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`construction. Given the Court’s prior constructions, the Court concludes that this larger phase
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`requires no further construction beyond those already provided. The Court construes
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`“substantially circular passageway positioned on the horizontal wall” as “generally circular
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`passageway positioned on the horizontal wall.” The Court is satisfied that this construction
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`accounts for the “positional relationship” between the passageway and the horizontal wall.
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`“fluidly coupled” (’362 Patent, claims 14, 17; ’764 Patent, claims 1, 6, 9, 13, 15,
`27, 28, 30)
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`F.
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`AVC’s Proposed Construction
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`Asetek’s Proposed Construction
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`“Fluidly connected/connect”
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`“in fluid communication”
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`The term fluidly coupled appears with various propositions in claims in both the ’362
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`patent and the ’764 patent. In its opening brief, Asetek expresses concern that AVC’s proposed
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`construction “might imply a direct connection between the two parts or features of the cooling
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`system.” ECF No. 86 at 22. Asetek argues that the “fluid flow between two features or parts of
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`the claimed cooling system can be either direct or indirect.” Id. at 22. In its responsive brief,
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`AVC argues that its definition, “fluidly connected,” does not “necessarily infer a ‘direct
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`connection’ only, and includes both direct and indirect connections.” ECF No. 94 at 22. Given
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`AVC’s agreement that the term “fluidly coupled” suggests indirect and direct connections, Asetek
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`proposes “fluidly connected (direct and indirect)” in its reply brief. ECF No. 98. During the
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`claim construction hearing, AVC agreed to this proposal. Therefore, the Court construes “fluidly
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`coupled” as “fluidly connected (direct and indirect).”
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`G.
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`“placed in separable thermal contact”/ “separably thermally coupling” (‘362
`Patent, claim 14)
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`AVC’s Proposed Construction
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`Asetek’s Proposed Construction
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`Plain and ordinary meaning. No construction
`necessary.
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`placed detachably and in thermal contact
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`AVC argues that the replacement of the words “separable” and “separably” with
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`Case 3:16-cv-07160-JST Document 105 Filed 01/17/18 Page 12 of 14
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`“detachably,” as Asetek suggests, is unnecessary, so the Court should not construe the phrases at
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`all. ECF No. 94. Asetek argues that this phrase does not have an ordinary meaning and should be
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`construed in the context of the ’362 patent’s disclosure. ECF No. 86 at 23. Asetek contends that
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`this term represents two distinct features of the claimed invention: “first, the pump unit is mounted
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`in such a manner that it can be detached from the motherboard…and second, the pump unit is
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`mounted in close thermal contact with the CPU to facilitate heat transfer.” ECF No. 86 at 24.
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`Asetek contends that replacing “separable” and “separably” with “detachably” is necessary to
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`assist the jury in understanding “these two distinct features incorporated within a single claim
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`term.” ECF No. 98 at 17.
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`The disclosures of the ’362 patent support Asetek’s contention that the pump unit is
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`“mounted in such a manner that it can be detached from the motherboard” and that “the pump unit
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`is mounted in close thermal contact with the CPU.” See ’362 patent at 2: 5-8; 8: 23-37; 9: 42-47,
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`56-57; 17: 47-58. Furthermore, AVC does not disagree with this contention. While AVC argues
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`that replacing “separably” with “detachably” is not necessary, the court finds that this construction
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`will provide clarity to the jury in understanding the meaning of this claim term. See Abbott Labs.
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`v. Sandoz, Inc., 544 F.3d 1341, 1360 (Fed. Cir. 2008) (“claims are construed as an aid to the
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`decision-maker, by restating the claims in non-technical terms”) (internal citations omitted).
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`Therefore, the Court construes “placed in separable thermal contact/separably thermally coupling”
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`as “placed detachably and in thermal contact.”
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`“the heat exchange interface being removably attached/coupled to the
`reservoir” (‘262 Patent, claims 14, 17)
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`H.
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`AVC’s Proposed Construction
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`Asetek’s Proposed Construction
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`Plain and ordinary meaning. No construction
`necessary
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`“the heat exchanging interface and the rest of
`the reservoir having a non-unitary construction”
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`The parties agree that “the heat exchange interface being removably attached to the
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`reservoir” and “the heat exchange interface being removably coupled to the reservoir” should be
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`construed in the same manner. Asetek argues that this claim was subject to two different
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`interpretations in prior Asetek litigation. Specifically, Asetek notes that this claim term was
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`Case 3:16-cv-07160-JST Document 105 Filed 01/17/18 Page 13 of 14
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`litigated in Asetek Danmark A/S v. CMI USA, Inc., where the defendant took the position that
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`the claim term meant that “the ‘heat exchange interface’ (i.e., the cold plate) must be removable
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`by a user using readily available tools, and further that the device must remain operational after
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`removal of the cold plate.” ECF No. 86 at 25. Asetek argues that its proposed construction
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`clarifies that the removable cold plate limitation “simply means that the reservoir and the cold
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`plate are not a unitary, one-piece structure.” ECF No. 86 at 25. AVC argues that it has never
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`advanced any similar arguments and that Asetek’s proposed definition “is more complicated than
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`the claim phrase itself.” ECF No. 94 at 24.
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`“When the parties raise an actual dispute regarding the proper scope of these claims, the
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`court, not the jury, must resolve that dispute.” O2 Micro Int'l Ltd, 521 F.3d at 1360 (internal
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`citation omitted). “A determination that a claim term ‘needs no construction’ or has the ‘plain and
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`ordinary meaning’ may be inadequate when a term has more than one “ordinary” meaning or
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`when reliance on a term's “ordinary” meaning does not resolve the parties' dispute. Id. at
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`1361.
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`Here th