Trials@uspto.gov
`571-272-7822
`
`Paper 42
`Date: September 30, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ASETEK DANMARK A/S,
`Petitioner,
`
`v.
`
`COOLIT SYSTEMS, INC.,
`Patent Owner.
`
`IPR2020-00747
`Patent 9,057,567 B2
`
`
`
`
`
`
`
`
`
`Before FRANCES L. IPPOLITO, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Denying Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 42
`Date: September 30, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ASETEK DANMARK A/S,
`Petitioner,
`
`v.
`
`COOLIT SYSTEMS, INC.,
`Patent Owner.
`
`IPR2020-00747
`Patent 9,057,567 B2
`
`
`
`
`
`
`
`
`
`Before FRANCES L. IPPOLITO, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Denying Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-00747
`Patent 9,057,567 B2
`
`I.
`
`INTRODUCTION
`
`Asetek Danmark A/S (“Petitioner”) filed a petition requesting an inter
`
`partes review of claims 1, 2, 3, 5, 7, 25, and 28 of U.S. Patent No. 9,057,567
`
`B2 (“the ’567 Patent”). Paper 2 (“Petition” or “Pet.”). CoolIT Systems, Inc.
`
`(“Patent Owner”) filed a preliminary response. Paper 5. Pursuant to our
`
`authorization, Petitioner filed a reply to Patent Owner’s preliminary
`
`response (Paper 6), and Patent Owner filed a sur-reply in support of Patent
`
`Owner’s preliminary response (Paper 8). We instituted an inter partes
`
`review as to all claims and grounds set forth in the Petition. Paper 10
`
`(“Institution Decision”).
`
`After institution, Patent Owner filed a response to the Petition (Paper
`
`19, “Response” or “Resp.”), Petitioner filed a reply to the Response (Paper
`
`24, “Reply”), and Patent Owner filed a sur-reply (Paper 30, “Sur-Reply”).
`
`Patent Owner also filed a statutory disclaimer of claim 28, so claim 28 is no
`
`longer part of this proceeding. See Ex. 3001. In addition, Patent Owner
`
`filed a motion to exclude (Paper 31, “Motion to Exclude”), Petitioner filed
`
`an opposition to the Motion to Exclude (Paper 33), and Patent Owner filed a
`
`reply in support of the Motion to Exclude (Paper 36). An oral hearing was
`
`held on June 22, 2021, and a transcript of the hearing is in the record. Paper
`
`41 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
`
`follow, we determine that Petitioner has shown by a preponderance of the
`
`evidence that claims 1, 2, 3, 5, 7, and 25 (all of the challenged claims that
`
`remain after Patent Owner’s statutory disclaimer) are unpatentable. We also
`
`deny Patent Owner’s Motion to Exclude.
`
`2
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`
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`IPR2020-00747
`Patent 9,057,567 B2
`
`A.
`
`Related Matters
`
`Patent Owner sued Petitioner for infringement of the ’567 Patent in
`
`Asetek Danmark A/S v. CoolIT Systems, Inc., No. 3:19-cv-00410-EMC
`
`(N.D. Cal) (the “district court case”). Pet. 95. Petitioner points out that the
`
`’567 Patent is related to issued patents U.S. 8,746,330 B2 and U.S.
`
`9,453,691 B2. Id.
`
`The ’567 Patent, filed February 18, 2014, as U.S. Application
`
`14/183,443, is a continuation of U.S. Application 14/166,657, which is a
`
`continuation of U.S. Application 13/401,618, which is a continuation-in-part
`
`of U.S. Application 12/189,476, now U.S. Patent No. 8,746,330 B2 (Ex.
`
`1004, “the ’330 Patent”). Ex. 1001, codes (21), (22), (63). Patent Owner
`
`points out that the ’330 Patent “[has] survived [an] inter partes challenge” in
`
`IPR2015-01276. Paper 5, 6 n.3.
`
`U.S. Application No. 12/189,476 was published as U.S. Publication
`
`No. 2009/0071625 A1. Ex. 1011 (“Lyon”), codes (21), (43). The ’567
`
`Patent claims priority to U.S. Provisional Application No. 60/954,987 (Ex.
`
`1005, “the 2007 Provisional”) and U.S. Provisional Application No.
`
`61/512,379 (Ex. 1006, “the 2011 Provisional”). Ex. 1001, code (60); see
`
`also Pet. 20–21.
`
`On April 10, 2020, Petitioner filed a separate petition requesting inter
`
`partes review of claims 1, 2, 4, 5, 9, and 13–15 of U.S. Patent No.
`
`10,274,266 B2 (“the ’266 Patent”). See IPR2020-00825 (“the ’825 IPR”),
`
`Papers 2, 41. The ’266 Patent is a continuation of U.S. Patent No. 9,909,820
`
`B2, which is a continuation of U.S. Patent No. 9,453,691 B2, which is a
`
`continuation-in-part of the ’330 Patent. ’825 IPR, Paper 2, 16. The ’825
`
`IPR remains pending.
`
`3
`
`
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`IPR2020-00747
`Patent 9,057,567 B2
`
`B.
`
`The ’567 Patent
`
`The ’567 Patent is directed to a fluid heat exchange system for
`
`accepting and dissipating thermal energy to cool electronic and other
`
`devices. Ex. 1001, 1:17–25.
`
`Figure 1, reproduced below, depicts such a system.
`
`
`
`Figure 1 is a diagram of a fluid circuit configured to transfer heat using a
`
`circulating liquid. Ex. 1001, 5:22–23. In Figure 1, liquid circulates through
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`fluid circuit 10 by entering inlet 21, moving through heat exchanger 11, and
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`exiting outlet 22. Id. at 6:46–57, 7:31–54. Heat exchanger 11 has manifolds
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`13, 15 and passages 14. Id. at 7:42–47.
`
`Figure 2, reproduced below, depicts an exemplary embodiment of a
`
`heat exchanger.
`
`
`
`4
`
`
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`IPR2020-00747
`Patent 9,057,567 B2
`
`Figure 2 is a top plan view depicting internal components of heat exchanger
`
`100. Ex. 1001, 5:24–26. Heat exchanger 100 includes housing 109, inlet
`
`port 111, fluid inlet passage 104, inlet opening 114, microchannels 103, seal
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`130, fluid outlet opening 124, fluid outlet passage 106, and outlet port 128.
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`Id. at 7:56–62, 9:17–10:56, 12:1–4. Each microchannel 103 is defined by a
`
`recessed groove extending transversely between adjacent fins. Id. at 2:40–
`
`43. Heat exchanging fluid F flows in the directions indicated by the arrows.
`
`Id. at 11:30–33. Heat exchanging fluid F enters microchannels 103 and
`
`splits into two sub flows in opposite directions to pass outwardly from inlet
`
`opening 114 towards outlet fluid openings 124. Id. at 11:14–11:50.
`
`Figure 4, reproduced below, shows a sectional view along line II–II of
`
`Figure 2. Ex. 1001, 5:28.1
`
`
`
`Figure 4 depicts housing 109 including heat spreader plate 102 (which
`
`operates as an outer limit of a heat sink), and heat exchanging fluid F
`
`flowing in two opposite directions within microchannels 103. Ex. 1001,
`
`7:56–62, 11:14–11:50. Seal 130 separates fluid inlet passage 104 from fluid
`
`outlet passage 106 so that fluid F must pass through microchannels 103 and
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`past surface 102a of heat spreader 102. Id. at 12:1–4.
`
`
`1 The ’567 Patent incorrectly refers to line II–II “of FIG. 3” rather than “of
`FIG. 2.” Ex. 1001, 5:28.
`
`5
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`
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`IPR2020-00747
`Patent 9,057,567 B2
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`Figure 6, reproduced below, shows an exploded perspective view of
`
`an embodiment of a heat exchanger.
`
`
`Ex. 1001, 5:29–30.2 The heat exchanger depicted in Figure 6 has inlet
`
`opening 214, plate 240, seal 230, and heat spreader plate 202. Id. at 12:26–
`
`46. “Seal 230 may be installed as a portion of plate 240 or separately.” Id.
`
`at 12:22–23.
`
`C. Challenged Claims
`
`Petitioner challenges claims 1, 2, 3, 5, 7, and 25. Petitioner initially
`
`also challenged claim 28, but Patent Owner filed a statutory disclaimer
`
`disclaiming that claim. Ex. 3001. This disclaimer effectively eliminated
`
`claim 28 from the ’567 Patent, leaving the patent as if that claim never
`
`existed. See Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d
`
`1367, 1373 (Fed. Cir. 2019). Thus, claim 28 is no longer part of this
`
`proceeding.
`
`
`2 The ’567 Patent incorrectly identifies Figure 5 as an exploded, perspective
`view and Figure 6 as a top plan view without a top cap. Ex. 1001, 5:29–32.
`
`6
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`
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`IPR2020-00747
`Patent 9,057,567 B2
`
`Challenged claim 1 is independent, and challenged claims 2, 3, 5, 7,
`
`and 25 all depend directly or indirectly from claim 1. Claim 1 is reproduced
`
`below.
`
`1. A heat exchange system comprising:
`
`a heat sink having a plurality of juxtaposed fins defining a
`corresponding plurality of microchannels between
`adjacent fins, wherein the heat sink defines a recessed
`groove extending transversely relative to the fins;
`
`a housing member defining a first side and a second side, wherein
`the second side defines a recessed region;
`
`a compliant member matingly engaged with the second side of
`the housing member, wherein the compliant member at
`least partially defines an opening positioned over the
`groove, wherein the compliant member and the groove
`together define a portion of an inlet manifold configured
`to hydraulically couple
`in parallel each of
`the
`microchannels to at least one other of the microchannels,
`and wherein the housing member further defines a portion
`of an inlet plenum,
`
`wherein the inlet plenum and the inlet manifold are together
`configured to convey a fluid in a direction generally
`transverse to the fins and thereby to distribute the fluid
`among the plurality of microchannels and to convey the
`fluid into the plurality of microchannels in a direction
`generally parallel to the fins,
`
`wherein a portion of the compliant member occupies a portion of
`the recessed region defined by the second side of the
`housing member and urges against a corresponding wall
`of the recessed region while leaving a portion of the
`recessed region defined by the second side of the housing
`member unoccupied to define first and second exhaust
`manifold regions positioned opposite to each other relative
`to the recessed groove and opening from end regions of
`the microchannels.
`
`Ex. 1001, 19:16–46.
`
`7
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`
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`IPR2020-00747
`Patent 9,057,567 B2
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`D.
`
`Asserted Grounds
`
`Petitioner asserts the following grounds of unpatentability:
`
`Claims Challenged 35 U.S.C. §3
`
`Reference(s)/Basis
`
`1, 2, 3, 5, 7, 25
`
`102(b)
`
`Bezama4
`
`1, 2, 3, 5, 7, 25
`
`103(a)
`
`Bezama and Lyon5
`
`Pet. 31–94.
`
`II.
`
`PATENTABILITY ANALYSIS
`
`A.
`
`Principles of Law
`
`1.
`
`Burden
`
`In an inter partes review, the burden of proof is on the petitioner to
`
`show that the challenged claims are unpatentable, and that burden never
`
`shifts to the patentee. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l,
`
`Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (citing Dynamic Drinkware, LLC
`
`v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)).
`
`2.
`
`Anticipation
`
`For a claim to be found unpatentable under 35 U.S.C. § 102, each and
`
`every element in a claim, arranged as recited in the claim, must be found in a
`
`single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
`
`
`3 The ’567 Patent claims priority to the 2007 and 2011 Provisionals. See Ex.
`1001, codes (22), (60). Thus, the pre-AIA versions of 35 U.S.C. §§ 102 and
`103 apply. Leahy–Smith America Invents Act, Pub. L. No. 112–29, §3(c),
`125 Stat. 284, 293 (2011) (explaining that the pre-AIA version of the Patent
`Act generally applies to patents with effective filing dates before March 16,
`2013).
`4 U.S. Pat. Appl. Pub. No. 2010/0012294 A1, published Jan. 21, 2010 (Ex.
`1010).
`5 U.S. Pat. Appl. Pub. No. 2009/0071625 A1, published Mar. 19, 2009 (Ex.
`1011).
`
`8
`
`
`
`IPR2020-00747
`Patent 9,057,567 B2
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`1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242
`
`F.3d 1376, 1383 (Fed. Cir. 2001). “A reference anticipates a claim if it
`
`discloses the claimed invention ‘such that a skilled artisan could take its
`
`teachings in combination with his own knowledge of the particular art and
`
`be in possession of the invention.’” In re Graves, 69 F.3d 1147, 1152 (Fed.
`
`Cir. 1995) (internal citation and emphasis omitted).
`
`3.
`
`Obviousness
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person of ordinary skill in the art to which said
`
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`
`nonobviousness.6 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`In determining obviousness when all elements of a claim are found in
`
`various pieces of prior art, “the factfinder must further consider the factual
`
`questions of whether a person of ordinary skill in the art would be motivated
`
`to combine those references, and whether in making that combination, a
`
`person of ordinary skill would have had a reasonable expectation of
`
`success.” Dome Patent L.P. v. Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015);
`
`
`6 Patent Owner does not contend that any such objective evidence is present
`in this case. See generally PO Resp. (not alleging that any objective indicia
`are present); see also Ex. 1023 ¶ 176 (“I am not aware of any secondary
`indicia of non-obviousness tied to the claimed invention.”).
`
`9
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`
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`IPR2020-00747
`Patent 9,057,567 B2
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`see also WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed.
`
`Cir. 1999) (“When an obviousness determination relies on the combination
`
`of two or more references, there must be some suggestion or motivation to
`
`combine the references.”). “Both the suggestion and the expectation of
`
`success must be founded in the prior art, not in the applicant’s disclosure.”
`
`In re Dow Chemical Co., 837 F.2d 469, 473 (Fed. Cir. 1988).
`
`B.
`
`Level of Ordinary Skill in the Art
`
`The level of skill in the art is “a prism or lens” through which we view
`
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`
`1350, 1355 (Fed. Cir. 2001) (“the level of skill in the art is a prism or lens
`
`through which a judge, jury, or the Board views the prior art and the claimed
`
`invention”).
`
`Petitioner asserts that a person of ordinary skill in the art at the time of
`
`the invention of the ’567 Patent (hereinafter, a “POSITA”) would have had
`
`the following education and experience: (i) “completed college level course
`
`work in thermodynamics, fluid mechanics, and heat transfer,” and (ii) “two
`
`or more years of experience in designing liquid cooling systems for
`
`computers, servers, or other electronic devices, or very similar technology,
`
`or one with a more advanced degree in the above fields may have had less
`
`practical experience.” Pet. 11.
`
`Patent Owner contends that a POSITA “would have earned at least a
`
`bachelor’s degree, such as a B.S. (bachelor of science), or equivalent
`
`thereof, in mechanical engineering or a closely related field and possessed at
`
`least three years of specialized experience in heat transfer devices for
`
`thermal management in electronics and computer systems, or in similar
`
`systems.” PO Resp. 4. Patent Owner represents, however, that none of its
`
`arguments or its declarant’s opinions turn on any differences between the
`
`10
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`IPR2020-00747
`Patent 9,057,567 B2
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`parties’ alternative formulations concerning the level of ordinary skill in the
`
`art. Id. at 4 n.2.
`
`In its Reply, Petitioner does not respond to Patent Owner’s alternative
`
`formulation, or identify any issues in this case that might turn on differences
`
`between the parties’ alternative formulations. See generally Reply.
`
`On this record, we adopt Patent Owner’s proposed formulation
`
`regarding the level of ordinary skill in the art, which we find is consistent
`
`with the level of skill reflected in the cited prior art references.
`
`See Okajima, 261 F.3d at 1355. We note, however, that the differences
`
`between the parties’ proposed formulations are not material with respect to
`
`any disputed issue. All of the findings and conclusions expressed herein
`
`would have been the same had we instead applied Petitioner’s proposed
`
`formulation.
`
`C. Claim Construction
`
`We construe claims using the same claim construction standard that
`
`would be used to construe the claims in a civil action under 35 U.S.C.
`
`§ 282(b). 37 C.F.R. § 42.100 (2019). In applying this claim construction
`
`standard, we are guided by the principle that the words of a claim “are
`
`generally given their ordinary and customary meaning,” as understood by a
`
`person of ordinary skill in the art in question at the time of the invention.
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc)
`
`(citation omitted). When construing a claim term, “we look principally to
`
`the intrinsic evidence of record, examining the claim language itself, the
`
`written description, and the prosecution history, if in evidence.” DePuy
`
`Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed.
`
`Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). There is a “heavy
`
`presumption,” however, that a claim term carries its ordinary and customary
`
`11
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`IPR2020-00747
`Patent 9,057,567 B2
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`meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
`
`Cir. 2002) (citation omitted).
`
`The parties dispute the meaning of the claim term “a compliant
`
`member matingly engaged with the second side of the housing member”
`
`(emphasis added). Resp. 17; Reply 2.
`
`The claims and specification of the ’567 Patent use the terms “mated”
`
`and “matingly” four times. Claim 1 recites a housing member defining a
`
`second side “wherein the second side defines a recessed region,” and
`
`requires a “compliant member matingly engaged with the second side of the
`
`housing member” such that “a portion of the compliant member occupies a
`
`portion of the recessed region” and “urges against a corresponding wall of
`
`the recessed region . . . to define first and second exhaust manifold regions.”
`
`Ex. 1001, 19:21–44. Thus the compliant member and the housing member’s
`
`second side of claim 1 are “matingly engaged” by fitting at least a portion of
`
`the compliant member to the inside of the second side’s recessed region.
`
`The “Summary” section of the ’567 Patent similarly discloses a body
`
`that “defines a second recessed region,” and describes “matingly
`
`engag[ing]” a manifold body with the second recessed region “such that the
`
`manifold body so occupies a portion of the second recessed region as to
`
`define an exhaust manifold.” Ex. 1001, 3:51–60. The specification
`
`discloses an additional embodiment in which “insert 334 is mated with the
`
`housing 330” such that contours on the insert are joined with recessed
`
`regions in the housing to define fluid conduits. Id. at 14:35–45. The
`
`specification further explains that the body of insert 334 “can matingly
`
`engage with one or more features of the housing 330” via “a plurality of
`
`spaced apart members” that are “positioned in corresponding portions of the
`
`second recessed region.” Id. at 14:54–62. In each of these embodiments,
`
`12
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`IPR2020-00747
`Patent 9,057,567 B2
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`the terms “matingly engage” and “mated” refer to fitting one component at
`
`least partially inside of a recess within a second component. Having
`
`summarized the intrinsic evidence, we now address the parties’ proposed
`
`constructions.
`
`Patent Owner proposes that we construe the term “matingly engaged”
`
`to require that the compliant member and the second side of the housing
`
`member be “mechanically joined or fitted together to interlock.” Resp. 17
`
`(citing Ex. 2027 ¶ 47). Patent Owner further explains that the term
`
`“interlock” in its construction requires a Lego®-like connection in which
`
`two components having complementary shapes are engaged with one
`
`another. Resp. 18 (citing Ex. 2027 ¶¶ 49–50). During the oral hearing,
`
`Patent Owner clarified that its construction also requires that the components
`
`with complementary shapes be engaged with one another in such a manner
`
`that it would take force to separate them. Tr. 38:14–40:5.
`
`In support of its construction, Patent Owner points to dictionary
`
`definitions that define “mate” as “join or fit together,” and “engage” as “to
`
`interlock with,” “to cause (mechanical parts) to mesh,” or “to come together
`
`and interlock (as of machinery parts).” Resp. 17 (citing Ex. 2030, 3, 47).
`
`Patent Owner also points to an embodiment in the specification in which a
`
`compliant member (i.e., insert 334) is matingly engaged with a member (i.e.,
`
`housing 330) via complementary, contoured features on both components
`
`that fit within each other. See Resp. 18–20 (citing Ex. 1001, 12:57–59,
`
`13:14–34, 13:45–53; 14:54–67, Figs. 10–12; Ex. 2027 ¶¶ 51–53). Patent
`
`Owner further argues that the concept of mating engagement was initially
`
`
`7 Patent Owner cited to the page numbers of the original dictionary rather
`than to the exhibit page numbers. Cites in this Decision refer to the exhibit
`page numbers.
`
`13
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`IPR2020-00747
`Patent 9,057,567 B2
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`introduced in the 2011 Provisional along with the above-described
`
`embodiment, and that the 2007 Provisional and other embodiments in the
`
`’567 Patent do not teach an insert matingly engaged to a housing. Id. at 20–
`
`22 (citing Ex. 2027 ¶¶ 53–55).8
`
`Petitioner did not initially propose a construction of “matingly
`
`engaged,” but argues in its Reply that “matingly engaged” means “joined or
`
`fitted together to make contact.” Reply 13 (citing Ex. 1027 ¶ 2). Under
`
`Petitioner’s broader construction, “matingly engaged” would encompass
`
`“[a]ll methods of joining or fixing two surfaces.” Ex. 1027 ¶ 3.
`
`Petitioner argues that Patent Owner’s proposed construction
`
`improperly excludes some forms of mating engagement. Reply 3.
`
`According to Petitioner, Patent Owner relied excessively on extrinsic
`
`dictionary definitions to arrive at a construction narrower than is supported
`
`by the intrinsic record. Id. at 7. Petitioner cites several cases in which the
`
`Federal Circuit has construed “engage” more broadly than Patent Owner
`
`now proposes. See id. at 8. Petitioner also cites a dictionary that defines
`
`“interlock” as “engage with each other by overlapping or fitting together.”
`
`Id. at 8 n. 2. Petitioner additionally contends that the specification contains
`
`a separate example of mating engagement that does not require
`
`complementary, contoured features. Id. at 9 (citing Ex. 1001, 3:53–58).
`
`Petitioner further contends that the Bhatti reference, which was cited during
`
`prosecution, describes two components as being in “mating engagement”
`
`
`8 As we noted in our Decision on Institution, the 2007 Provisional does not
`disclose at least the “recessed groove extending transversely relative to the
`fins” limitation of claim 1. Paper 10, 17–18. Accordingly, the July 27,
`2011, filing date of the 2011 Provisional is the earliest-possible priority date
`to which the challenged claims could be entitled. See id.
`
`14
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`IPR2020-00747
`Patent 9,057,567 B2
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`even though those components do not have complementary, contoured
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`shapes. Reply 10–11 (citing Ex. 1022, Fig. 3, ¶¶ 16, 19).
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`Petitioner also argues that nothing in the language of claim 1 recites or
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`requires “interlocking of complementary contoured features.” Id. at 4–5
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`(citing Ex. 1021, 14:19–15:2), 14 (citing Ex. 1027 ¶¶ 2–4). Petitioner
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`similarly contends that nothing in the specification amounts to a disclaimer
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`sufficient to limit the scope of claim 1 to the embodiment cited by Patent
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`Owner, and the fact that the term “matingly engaged” was not added until
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`the 2011 Provisional does not imply that the scope of claim 1 is limited to
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`specific embodiments disclosed in the 2011 Provisional. Id. at 4–7.
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`In its Sur-Reply, Patent Owner argues that Petitioner’s proposed
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`construction reads the term “matingly” out of the claims because two
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`components will always “make contact” when joined or fitted together. Sur-
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`Reply 1. Patent Owner also contends that claim 1’s requirement that a
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`portion of the compliant member “occupies a portion of the recessed region”
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`indicates that claim 1 requires complementary, contoured features of the
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`type disclosed in the specification. Id. at 2. Patent Owner further argues
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`that the mating engagement of the Bhatti reference is accomplished via bolts
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`that pass through the connected surfaces. Id. at 2–3.
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`We now analyze the parties’ arguments. In so doing, we note that
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`both parties agree that the term “matingly engaged” encompasses parts that
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`are “joined or fitted together” in some fashion. The parties’ dispute focuses
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`on whether “matingly engaged” is a narrow term that requires interlocking
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`(as Patent Owner asserts), or whether this term instead broadly encompasses
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`all methods of joining or fitting two surfaces (as Petitioner asserts).
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`We first turn to Patent Owner’s proposed construction. For the
`
`reasons discussed below, we determine that Patent Owner’s proposed
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`construction, “mechanically joined or fitted together to interlock” (see Resp.
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`17), is too narrow.
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`Patent Owner begins its claim construction argument by asserting,
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`based on Paragraph 47 of the Pokharna declaration, that its proposed
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`construction is the plain and ordinary meaning “matingly engaged” would
`
`have had to one of ordinary skill in the art. See Resp. 17. Dr. Pokharna cites
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`to the deposition of Petitioner’s declarant, Dr. Tilton, to support his opinion
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`that Patent Owner’s proposed construction is the plain and ordinary meaning
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`of this claim term. See Ex. 2027 ¶ 47 (citing Ex. 2029, 124:5–10). But in
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`the cited testimony, Dr. Tilton never testifies that “matingly engaged”
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`requires interlocking. Ex. 2029, 124:5–10. Accordingly, Patent Owner has
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`not adequately supported its initial assertion that its construction is the plain
`
`and ordinary meaning of “matingly engaged.”
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`Patent Owner and Dr. Pokharna next assert that Patent Owner’s
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`construction is consistent with the intrinsic and extrinsic evidence. See
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`Resp. 17; Ex. 2027 ¶ 47. In particular, as discussed above, Patent Owner
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`argues that its construction of “matingly engaged” is supported by, and
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`consistent with, embodiments in the specification and the 2011 Provisional
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`that describe mating engagement accomplished via complementary,
`
`contoured features. See Resp. 18–20 (citing Ex. 1001, 12:57–59, 13:14–34,
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`13:45–53, 14:54–67, Figs. 10–12; Ex 2027 ¶¶ 51–53), 20–22 (citing Ex.
`
`2027 ¶¶ 53–55). We agree with Petitioner, however, that these embodiments
`
`are non-limiting examples. See, e.g., Ex. 1001, 19:7–10 (“Thus, . . . it
`
`should be recognized that the above-described embodiments are only
`
`examples and should not be taken as limiting in scope.”); Ex. 1006, 29:13–
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`14 (“Thus, the claimed inventions are not intended to be limited to the
`
`embodiments shown herein.”). Patent Owner has not pointed to a
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`16
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`Patent 9,057,567 B2
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`lexicographic definition or clear and unmistakable disclaimer of claim scope
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`sufficient to limit the scope of the claims to these specific embodiments.
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`Accordingly, the intrinsic evidence cited by Patent Owner does not justify
`
`limiting the claim term “matingly engaged” so as to require interlocking,
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`much less interlocking accomplished via complementary, contoured
`
`surfaces.
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`We now consider Patent Owner’s extrinsic dictionary definition
`
`evidence, mindful of the Federal Circuit’s admonition that “heavy reliance
`
`on the dictionary divorced from the intrinsic evidence risks transforming the
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`meaning of the claim term to the artisan into the meaning of the term in the
`
`abstract, out of its particular context.” Phillips, 415 F.3d at 1321. Patent
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`Owner’s proposed construction of “matingly engaged” (“mechanically
`
`joined or fitted to interlock”) appears to be consistent with dictionary
`
`definitions of “mate” and “engage” cited by Dr. Pokharna. See Ex. 2027
`
`¶ 48 (citing Ex. 2030, 3, 4). But after setting forth its proposed construction,
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`Patent Owner attempts to further construe its own proposed construction by
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`arguing that the term “interlock” requires a tongue-in-groove or Lego®-like
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`connection accomplished by complementary, contoured shapes. See Resp.
`
`18. Patent Owner bases its interpretation of “interlock” on Paragraphs 49
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`and 50 of the Pokharna Declaration (see id.), but these paragraphs are
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`unpersuasive because they are conclusory and unsupported by adequate
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`reasoning or evidence. See Ex. 2027 ¶¶ 49–50. Patent Owner also has not
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`directed us to any support for its assertion that “interlock” would further
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`require connection that would take force to break. See Tr. 38:14–40:5.
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`The only evidence in the record as to the meaning of “interlock” is a
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`dictionary definition cited by Petitioner, which defines “interlock” as
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`“engage with each other by overlapping or fitting together.” See Reply, 8
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`17
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`n.2 (citing Ex. 1024). Incorporating this definition into Patent Owner’s
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`proposed construction of “matingly engaged” yields the following,
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`dictionary-based construction: “mechanically joined or fitted together by
`
`overlapping or fitting together.” This somewhat-redundant construction is
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`broader than what Patent Owner proposed (e.g., it encompasses parts that are
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`fit together as well as parts that are joined by overlapping), and does not
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`require a tongue-in-groove or Lego®-like connection accomplished via
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`complementary, contoured shapes.
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`For the foregoing reasons, we are not persuaded that the claim term
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`“matingly engaged” should be narrowly construed so as to require a tongue-
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`in-groove or Lego®-like connection, complementary, contoured surfaces, or
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`a connection that would require force to disconnect.
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`We now turn to Petitioner’s arguments. On the record before us, we
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`determine that Petitioner’s proposed construction is too broad.
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`As discussed above, the Petition did not set forth an explicit
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`construction of “matingly engaged.” But Petitioner’s declarant, Dr. Tilton,
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`was asked during his deposition what definition he applied when
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`formulating the opinions cited in the Petition. Ex. 2029, 124:5–7. Dr. Tilton
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`responded as follows: “‘Matingly engaged’ is sort of a plain—in ordinary
`
`English, the parts are—they mate. They’re engaged. They’re fit together.”
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`Id. at 124:8–10.
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`Approximately four months after Dr. Tilton’s deposition, Petitioner
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`filed the Reply setting forth its present construction, “joined or fitted
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`together to make contact.” Reply 13. Just as Patent Owner did, Petitioner
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`asserts that its construction was initially derived from the plain and ordinary
`
`meaning that “matingly engaged” would have had to one of ordinary skill in
`
`the art. See id. To support this assertion, Petitioner cites the deposition
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`18
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`testimony quoted above, and Dr. Tilton’s supplemental declaration. See
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`Reply 13 (citing Ex. 2029, 123:24–124:10; Ex. 1027 ¶¶ 2–4).
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`It is readily apparent, however, that Petitioner’s new construction,
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`which encompasses “all methods of joining or fixing two surfaces” (see Ex.
`
`1027 ¶ 3), is broader than the construction Dr. Tilton testified he used in
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`connection with the Petition, which requires that two parts be fit together
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`(see Ex. 2029, 124:8–10). Accordingly, Dr. Tilton’s deposition testimony
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`does not adequately support Petitioner’s attempt to argue that the plain and
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`ordinary meaning of “matingly connected” is so broad as to encompass any
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`method of joining or fixing surfaces. In addition, nothing in Dr. Tilton’s
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`supplemental declaration adequately justifies a plain and ordinary meaning-
`
`based construction that would encompass parts that are not, at the very least,
`
`fitted together. See Ex. 1027 ¶¶ 2–4. Dr. Tilton does not address the
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`inconsistency between Petitioner’s present proposal and his initial
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`construction of “matingly engaged,” much less offer persuasive arguments
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`or evidence to support Petitioner’s new, broader construction. See id.
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`Instead, Dr. Tilton merely asserts (in a cursory manner, and without
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`citations) that Petitioner’s new proposed construction is generally consistent
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`with claim 1, and attacks Patent Owner’s construction as unduly narrow.
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`See id. This consistency argument is not persuasive because Dr. Tilton
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`never disputes that his initial, narrower construction is also consistent with
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`the specification and the language of claim 1. See id.
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`The intrinsic evidence cited in the Reply is consistent with Dr.
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`Tilton’s initial testimony that “matingly engaged” refers to parts that are fit
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`together, and thus does not adequately support Petitioner’s arguments for a
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`broader c
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