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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________________
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`COOLIT SYSTEMS, INC.,
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`Petitioner,
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`v.
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`ASETEK DANMARK A/S,
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`Patent Owner.
`_____________________________
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`IPR2021-01196
`U.S. Patent 10,599,196
`_____________________________
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`DECLARATION OF DAVID TUCKERMAN, PH.D., IN SUPPORT OF
`PATENT OWNER’S RESPONSE
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`I.
`II.
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`TABLE OF CONTENTS
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`QUALIFICATION AND EXPERIENCE ....................................................... 2
`LEGAL STANDARDS ................................................................................... 5
`A.
`Claim Construction................................................................................ 5
`B. Anticipation ........................................................................................... 6
`C. Obviousness ........................................................................................... 6
`III. DEFINITION OF A PERSON OF ORDINARY SKILL IN THE ART ........ 9
`IV. THE ’196 PATENT .......................................................................................10
`V.
`THE DUAN REFERENCE ...........................................................................14
`VI. CLAIM CONSTRUCTION ..........................................................................17
`A.
`“the first passage is configured to direct the cooling liquid from
`the outlet of the pump chamber into the thermal exchange
`chamber between a first end and a second end of the thermal
`exchange chamber” .............................................................................18
`“at . . . [the] end of the thermal exchange chamber” ...........................22
`B.
`VII. DUAN DOES NOT DISCLOSE ALL LIMITATIONS OF CLAIMS 1
`AND 2 ............................................................................................................23
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`IPR2021-01196
`U.S. Patent No 10,599,196
`Declaration of D. Tuckerman
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`I, David B. Tuckerman, declare as follows:
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`1. I have been retained by Finnegan, Henderson, Farabow, Garrett & Dunner
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`LLP (“Finnegan”) on behalf of Asetek Danmark A/S (“Asetek”) as an expert
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`in the field of liquid cooling of computers and servers. This Declaration is in
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`support of the Inter Partes Review of U.S. Patent No. 10,599,196 to André
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`Eriksen (“the ’196 patent”).
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`2. I am being compensated at the rate of $475.00 per hour for my work on this
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`matter. My compensation in no way depends on the outcome of this
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`proceeding, the content of my testimony, or any issues involved in or related
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`to this proceeding. In preparing this Declaration, I reviewed and considered
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`the ’196 patent, the prosecution history of the ’196 patent, the Petition, Dr.
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`Pokharna’s declaration, and the Duan prior art reference that I discuss in this
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`Declaration. In addition to these materials, I may consider additional
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`documents and information in forming any supplemental opinions. To the
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`extent I am provided additional documents or information, including any
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`additional expert declarations filed by Petitioner in this proceeding, I may
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`offer further opinions.
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`3. Based on my experience, knowledge of the art at the relevant time, analysis
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`of prior art references, and the understanding a person of ordinary skill in the
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`1
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`U.S. Patent No 10,599,196
`Declaration of D. Tuckerman
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`art would have of the claim terms in light of the specification, it is my opinion
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`that claims 1 and 2 of the ’196 patent are not unpatentable based on the prior
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`art references discussed below.
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`I.
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`QUALIFICATION AND EXPERIENCE
`4. I have B.S. degrees in Electrical Engineering and Physics, and M.S. in
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`Electrical Engineering and Computer Science from Massachusetts Institute of
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`Technology, Cambridge, Massachusetts. I also have a Ph.D. in Electrical
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`Engineering and a M.B.A. from Stanford University, Stanford, CA. My Ph.D.
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`thesis, titled “Heat-Transfer Microstructures for Integrated Circuits,” focused
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`on developing new, high-performance liquid-cooled heat sinks for thermal
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`management of high-speed integrated circuits, and received the Fannie and
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`John Hertz Foundation Hertz Thesis Prize. The key results in my Ph.D. thesis
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`were published in the peer-reviewed journal IEEE Electron Device Letters
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`with the title “High-Performance Heat Sinking for VLSI”, and this publication
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`has so far received over 5000 citations in the professional literature, as
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`reported by Google Scholar. This paper was selected by the IEEE Electron
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`Devices Society to receive the first “Paul Rappaport Award”, although this
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`new award series did not get officially approved by IEEE until 1983.
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`5. I am an experienced innovator and inventor with over 120 issued U.S. patents,
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`many foreign patents, and numerous pending applications, spanning the fields
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`of thermal management systems, heat transfer, electronic packaging and
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`interconnect technologies, and superconducting devices and circuits, etc.
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`6. I was a member of the Josephson junction computer project (superconducting
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`logic circuit design, simulation, and testing) while attending M.I.T., and
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`worked as a project leader at Lawrence Livermore National Laboratory
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`(LLNL), supervising and managing advanced R&D programs in various fields
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`including electronic packaging and interconnect. My PhD thesis work on
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`microchannel was applied by researchers at LLNL to cool high-power laser
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`diodes; this work was published in the peer-reviewed journal Applied Physics
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`Letters.
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`7. I founded nCHIP, Inc. in 1989, focusing on advanced multi-chip module
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`technologies enabling ultracompact high-performance digital systems, which
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`was later sold to Flextronics International Ltd. in 1995.
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`8. I am an experienced entrepreneur, venture capitalist, and executive leader
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`with over 20 years of experience founding, growing and leading technology
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`companies. While working as a senior VP and CTO of Tessera Inc., I helped
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`Tessera grow via various acquisitions, one of which led to the development
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`of a new technology for silent air cooling of laptop computers.
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`9. I was elected by the IEEE to the grade of “IEEE Fellow”, which is the highest
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`membership grade, and for which selection is limited to less than 0.1% of the
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`IEEE membership each year. I was specifically cited “for contributions to
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`high-performance electronic packaging and interconnection technologies,
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`including the development of the microchannel heat sink.”
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`10. I was keynote speaker at the 9th International Conference on Nanochannels,
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`Microchannels, and Minichannels (ICNMM), invited because of my
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`pioneering work in the field of microchannel cooling. I was also co-author of
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`a review article on Heat Transfer in Microchannels in the peer-reviewed
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`Journal of Heat Transfer.
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`11. I am a licensed Professional Engineer in California.
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`12. I am currently an independent consultant through my own company
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`Tuckerman & Associates, Inc., working on various technical and intellectual
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`property matters in the high-tech industries. Some of my major clients have
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`included CMEA Capital, Tessera, Intellectual Ventures, and Microsoft. I have
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`consulted for Microsoft’s Quantum Computing and “Cold Logic” programs
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`for 9 years (2011-2020), including management of a 6-year research contract
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`with Auburn University to develop high-density flexible thin-film cryogenic
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`interconnect having optimal heat-transfer properties (i.e., minimal heat
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`leakage between temperature stages) while maintaining excellent electrical
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`performance. I was also a consultant for the first phase of Microsoft’s “Project
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`Natick” (which implemented a demonstrative underwater datacenter off the
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`southern California coast in 2015), including the design of the heat exchanger
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`structures and the subsequent analysis of its actual undersea performance.
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`13. Attached as Exhibit A to this Declaration is a copy of my CV, which provides
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`a detailed listing of my publications and patents, as well as my education and
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`experience.
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`II. LEGAL STANDARDS
`A. Claim Construction
`14. I have been informed by counsel and I understand that the first step in
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`determining the patentability of a patent claim is for the claim terms to be
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`properly construed. I understand that in the related district court litigation
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`involving the ’196 patent, certain claim terms have been construed. I agree
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`with those claim constructions. There are two additional terms that should be
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`construed in this proceeding, which are discussed below. All other terms
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`should be given their plain and ordinary meaning as understood by those
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`skilled in the art.
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`B. Anticipation
`15. I am not an attorney and have not been asked to offer my opinion on the law.
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`However, as an expert offering an opinion on whether the claims of the ’196
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`patent are unpatentable, I have been told that I am obliged to follow existing
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`law.
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`16. I have been told the following legal principles apply to an analysis of
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`patentability pursuant to 35 U.S.C. § 102, a provision in the patent law
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`regarding anticipation. I have been told that, in an inter partes review
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`proceeding, patent claims may be deemed unpatentable if it is shown by
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`preponderance of the evidence that the claims were anticipated by prior art
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`patents or printed publications.
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`17. I have been told that for a claim to be anticipated under § 102, every limitation
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`of the claimed invention must be disclosed by a single prior art reference,
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`viewed from the perspective of a person of ordinary skill in the art.
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`C. Obviousness
`18. I have been told that under 35 U.S.C. § 103(a), “[a] patent may not be obtained
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`although the invention is not identically disclosed or described as set forth in
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`section 102, if the differences between the subject matter sought to be patented
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`and the prior art are such that the subject matter would have been obvious at
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`the time the invention was made to a person having ordinary skill in the art to
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`which said subject matter pertains.”
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`19. When considering the issues of obviousness, I have been told that I am to do
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`the following:
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`a. Determine the scope and content of the prior art;
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`b. Ascertain the differences between the prior art and the claims at issue;
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`c. Resolve the level of ordinary skill in the pertinent art; and
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`d. Consider evidence of secondary indicia of non-obviousness (if
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`available).
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`20. I have been told that the relevant time for considering whether a claim would
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`have been obvious to a person of ordinary skill in the art is the time of alleged
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`invention, which I have assumed is shortly before the effective filing date of
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`the application leading to the ’196 patent.
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`21. I have been told that any assertion of secondary indicia of non-obviousness
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`must be accompanied by a nexus between the merits of the invention and the
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`evidence offered.
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`22. I have been told that a reference may be combined with other references to
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`disclose each element of the invention under § 103. I have been told that a
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`reference may also be combined with the knowledge of a person of ordinary
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`skill in the art and that this knowledge may be used to combine multiple
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`references. I have also been told that a person of ordinary skill in the art is
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`presumed to know the relevant prior art. I have been told that the obviousness
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`analysis may account for the inferences and creative steps that a person of
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`ordinary skill in the art would employ.
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`23. I have been told that whether a prior art reference renders a patent claim
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`unpatentable as obvious is determined from the perspective of a person of
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`ordinary skill in the art. I have been told that there is no requirement that the
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`prior art contain an express teaching or suggestion to combine known
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`elements to achieve the claimed invention, but that a motivation or rationale
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`for combining prior art elements in a way that realizes the claimed invention
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`is required to show obviousness, and that it seeks to counter impermissible
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`hindsight analysis.
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`24. I have been told that when a work is available in one field, design alternatives
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`and other market forces can prompt variations of it, either in the same field or
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`in another. I have been told that if a person of ordinary skill in the art can
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`implement a predictable variation and would see the benefit of doing so, that
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`variation is likely to be obvious. I have been told that, when there is a design
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`need or market pressure and there are a finite number of predictable solutions,
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`a person of ordinary skill in the art has good reason to pursue those known
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`options that realizes the claimed invention. In addition, I have been informed
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`and I understand that there must be a reasonable expectation of success—not
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`absolute predictability of success—in combining prior art teachings to arrive
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`at the claimed invention.
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`III. DEFINITION OF A PERSON OF ORDINARY SKILL IN THE ART
`25. The ’196 patent has an effective filing date of May 6, 2005. A person having
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`ordinary skill in the field of liquid cooling systems at that time (i.e., in May
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`2005) would have
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`(i) completed college
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`level course work
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`in
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`thermodynamics, fluid mechanics, and heat transfer, and (ii) attained two or
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`more years of experience in designing liquid cooling systems for computers,
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`servers, or other electronic devices, or very similar technology. Alternatively,
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`a person with a more advanced degree in the above fields may have had less
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`practical experience and be a person of ordinary skill in the art.
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`26. I believe that I have the relevant experience and understanding of one of
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`ordinary skill in this field.
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`27. The claims of the ’196 patent are not unpatentable under either Petitioner’s
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`definition of a “POSITA” (Pet., 9), or my definition given above.
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`IV. THE ’196 PATENT
`28. Computers (and particularly their central processing units, or “CPUs”)
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`generate heat during operation, and as CPU performance increases, so does
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`heat generation. The performance of a computer CPU chip is proportional to
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`the density of the circuits and the clock speed. The greater the circuit density
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`and clock speed, the greater the performance of the CPU. As CPU
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`performance increases, so does the amount of heat generated by the CPU, and
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`also the need for efficient and effective dissipation of the heat generated by
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`the CPU. This is true for both personal computers (desktops, laptops,
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`netbooks, etc.) and computer servers/data centers.
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`29. There are various air cooling and liquid cooling methods to manage heat in a
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`computer system. While air cooling systems are cheaper and easier to install,
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`air cooling has a fundamental limit in heat density, and this limit is surpassed
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`in many high-end applications, often necessitating a shift towards liquid
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`cooling systems. Liquid cooling systems are more efficient at heat removal
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`than air cooling systems. Prior art liquid cooling systems, however, were
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`bulky and posed significant risk of leakage because they comprised several
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`separate components (such as a heat exchanger, a liquid reservoir, a pump,
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`and a heat radiator) coupled together using tubes, as shown in Prior Art Figure
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`3 of the Asetek patents (depicted below).
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`30. The ’196 patent discloses many technological advances in the art of computer
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`liquid cooling. Among other things, Asetek’s patented technology disclosed
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`in the ’196 patent is a significant advancement from the modular approach of
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`the prior art liquid cooling devices. Figure 17 of the ’196 patent represents a
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`preferred embodiment of the claimed invention. Figure 20 also illustrates
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`various aspects of the claimed invention. As evident from the patent claims
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`and the figures, Asetek’s claimed invention has, among other features, a pump
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`unit that combines a pump, a dual-chambered “reservoir,” and a “heat-
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`exchanging interface” (i.e., a cold plate) into a single component. The
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`reservoir in Asetek’s patented design is divided into two chambers, referred
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`to as the “pump chamber” and “thermal exchange chamber,” as shown in
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`Figure 20 (annotated below). The chambers are vertically spaced apart and are
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`fluidly coupled together to allow for heat dissipation from the CPU via the
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`“heat exchanging interface,” which forms a boundary wall of the thermal
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`exchange chamber, and which is placed in thermal contact with the CPU. This
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`novel and innovative configuration, among other features of the patented
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`inventions, enables separate and independent optimization of the pumping
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`function in the pump chamber and the heat transfer function in the thermal
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`exchange chamber.
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`31. In exemplary embodiments disclosed and claimed in the ’196 patent, the
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`pump chamber is defined by a double-sided chassis and an impeller cover. For
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`example, in the preferred embodiment shown in Figure 17, pump chamber 46
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`is defined by a double-sided chassis on the top and impeller cover 46A on the
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`bottom. See ’196 patent, 23:1-29. Cooling liquid enters pump chamber 46
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`through an inlet in impeller cover 46A, the inlet being positioned below the
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`rotational center of an impeller 33 housed in the pump chamber. See id. at
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`23:1-29, Fig. 17. Cooling liquid exits pump chamber 46 through an outlet 34
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`provided in impeller cover 46A, the outlet being positioned tangentially to the
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`circumference of impeller 33. Id. Thermal exchange chamber 47A is defined
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`between pump chamber 46 and heat exchange interface 4. See id. at Fig. 17.
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`Cooling liquid enters the thermal exchange chamber 47A through a passage
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`48 positioned between a first end and a second end of thermal exchange
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`chamber 47A. See generally ’196 patent, 23:1-29, Fig. 17. Cooling liquid
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`collects heat from thermal exchange chamber 47A and exits through passage
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`49 provided at the end of the thermal exchange chamber. See id.
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`32. In addition to improved efficiency and compactness, Asetek’s patented
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`designs have greatly reduced and/or eliminated the risk of coolant leakage and
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`have enabled pre-filled (factory assembled) liquid cooling products that are
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`easy to install by users. The novel and innovative concepts disclosed in the
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`’196 patent have also made manufacturing of liquid cooling products simpler
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`and less costly.
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`V. THE DUAN REFERENCE
`33. The only ground applicable to claims 1 and 2 is Ground 1 (obviousness based
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`on Duan). Accordingly, Duan (Ex. 1004) is the only reference I have
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`discussed in this Declaration.
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`34. Duan discloses a “cooling plate module” for cooling a central processing unit
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`(CPU). Ex. 1004, ¶[0002]. Duan’s “cooling plate module” includes a “cooling
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`plate [] integrally formed with [a] liquid driving module such that the layout
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`of the cooling plate module can be minimized to reduce space.” Id. at ¶[0007].
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`The “liquid driving module” includes an “accommodation chamber” and a
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`“liquid driving unit.” Id. at ¶[0009]. The “liquid driving unit” drives the
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`coolant through a cooling loop comprising the “cooling plate module” and a
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`“water tank module” that cools heated coolant. Id. at ¶¶[0009], [0010].
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`35. Figure 6, annotated below, shows Duan’s cooling plate module 10 in
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`communication with water tank module 20 through ducts. Id. at ¶[0022].
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`Cooling plate module 10 includes a cooling plate 1 and a liquid driving
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`module 2, which comprises an accommodation chamber 21 and a liquid
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`driving unit 22 located in accommodation chamber 21 and configured to drive
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`the coolant (accommodation chamber 21 and liquid driving unit 22 are not
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`annotated in the figure below but are included in liquid driving module 2). Id.
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`at ¶¶[0022], [0023]. The coolant collects heat from CPU 200 at cooling plate
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`1, which has a heat absorbing face 11 in thermal contact with the CPU. Ex.
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`1004, Fig. 6 (annotated below), ¶[0022]. The heated coolant flows to water
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`tank module 20 where the coolant is cooled, and the cooled coolant flows back
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`to the liquid driving module 2 and then to cooling plate 1. Id. at Fig. 6,
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`¶¶[0022], [0027], [0028].
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`36. Cooling plate 1 is assembled with a cap 3 to define a closed space therein
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`(the alleged “thermal exchange chamber”). Id. at ¶[0023], Fig. 7 (not shown);
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`Ex. 1003, ¶61. Heat-dissipating plates 12 are located in the cap. Ex. 1004,
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`¶[0024]. Liquid driving module 2 has a lower cover 225, which includes a
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`liquid inlet 23 through which cooled coolant from the water tank module 20
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`enters accommodation chamber 21 and is driven by liquid driving unit 22. Id.
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`at ¶¶[0023], [0027]. According to Petitioner’s expert, Dr. Pokharna, lower
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`cover 225 and accommodation chamber 21 together form the claimed “pump
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`chamber.” Ex. 1003, ¶¶55, 57. Coolant in accommodation chamber 21 flows
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`to cap 3 through first liquid outlet 24. Ex. 1004, Fig. 8, ¶[0027]. The coolant
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`collects heat from heat-dissipating plates 12 in cap 3. Id. at ¶[0027]. Cap 3
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`includes a second liquid outlet 31 through which heated coolant exits and
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`flows to water tank module 20. Id. at Figs. 6 and 8, ¶[0023].
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`37. According to Dr. Pokharna, the combination of accommodation chamber 21,
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`lower cover 225, cap 3, and cooling plate 1 forms the claimed “reservoir.” Ex.
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`1003, ¶¶51-53.
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`VI. CLAIM CONSTRUCTION
`In my opinion, only the limitation “the first passage is configured to direct the
`38.
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`cooling liquid from the outlet of the pump chamber into the thermal exchange
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`chamber between a first end and a second end of the thermal exchange
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`chamber” of claim 1 and the limitation “at . . . [the] end of the thermal
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`exchange chamber” of claim 2 require review and determination by the Board
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`because Petitioner is misinterpreting the meaning of these claim limitations
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`and applying it to Duan incorrectly.
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`A.
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`“the first passage is configured to direct the cooling liquid from
`the outlet of the pump chamber into the thermal exchange
`chamber between a first end and a second end of the thermal
`exchange chamber”
`39. To a person skilled in the art, the above limitation in claim 1 would mean that
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`the first passage, which fluidly couples the pump chamber and the thermal
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`exchange chamber, is positioned in between a first end and a second end of
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`the thermal exchange chamber, such that cooling liquid enters the thermal
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`exchange chamber in between a first end and a second end of the thermal
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`exchange chamber (not immediately adjacent to a first end or a second end).
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`In other words, the proper construction of this claim limitation is: “the first
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`passage is configured to direct the cooling liquid into the thermal exchange
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`chamber at a location in between a first end and a second end of the thermal
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`exchanger chamber.”
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`40. This interpretation is fully supported by the specification of the ’196 patent.
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`The preferred embodiment shown in Figure 17 (annotated below) shows that
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`the “first passage 48 for leading cooling liquid from the pump chamber 46 to
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`a thermal exchange chamber 47A” is positioned in between a first end and a
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`second (and not immediately adjacent to the end) of thermal exchange
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`chamber 47A. See generally ’196 patent, 23:1-29. In contrast, the “second
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`passage 49 for leading cooling liquid from the thermal exchange chamber
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`47A” is provided at the end of the thermal exchange chamber. Id.
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`41.
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`I disagree with Dr. Pokharna that “[t]here is no claim language that directly
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`provides the location of the first passage itself” and that the first passage must
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`only be “configured to direct the cooling liquid between two ends of the
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`thermal exchange chamber.” Ex. 1003, ¶46 (emphasis in original). Dr.
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`Pokharna’s interpretation disregards the term “into” in the claim limitation.
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`Specifically, this claim limitation specifies that cooling liquid is directed “into
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`the thermal exchange chamber between a first end and a second end of the
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`thermal exchanger chamber,” thus providing a location where cooling liquid
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`enters the thermal exchange chamber. Moreover, given that cooling liquid
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`enters the thermal exchange chamber through the first passage, the location of
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`the first passage relative to the thermal exchange chamber is one and the same
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`as (or tantamount to) the location where cooling liquid enters the thermal
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`exchange chamber. That is, the location of the first passage equates to the
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`location where cooling liquid enters the thermal exchange chamber. Dr.
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`Pokharna’s interpretation in his declaration, however, disregards the
`
`positional requirement of the first passage relative to the thermal exchange
`
`chamber that is imposed by the word “into” in the claim limitation.
`
`42.
`
`If Dr. Pokharna’s interpretation is accepted, then the preferred embodiment
`
`shown in Figure 17 (annotated above) will be excluded from the claim scope
`
`because in the embodiment shown in Figure 17, cooling liquid is not directed
`
`from one end of the thermal exchange chamber to the other end. Rather, the
`
`first passage is positioned in between the ends of the thermal exchange
`
`chamber, such that cooling liquid is directed into the thermal exchange
`
`chamber at a location in between the first and second ends, and cooling liquid
`
`then spreads outwardly from that entry location towards the ends of the
`
`20
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`
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`IPR2021-01196
`U.S. Patent No 10,599,196
`Declaration of D. Tuckerman
`
`thermal exchange chamber. See Ex. 1001, Fig. 17 (showing heat-transfer
`
`features (pins) between the first passage 48 and the first end of the thermal
`
`exchange chamber 47A, thus showing that liquid spreads outwardly from the
`
`entry location towards both ends of the thermal exchange chamber before
`
`exiting through second passage 49).
`
`43.
`
`In the Institution Decision, the Board contended that “[a]ccepting Patent
`
`Owner’s construction, the limitation excludes a passage that enters the ends—
`
`or the sidewalls—of the thermal exchange chamber.” Paper 10 (“DI”) at 19.
`
`My proposed construction, however, does not mean that “between a first end
`
`and a second end” only excludes the sidewalls of the thermal exchange
`
`chamber. In my opinion, “end” of the thermal exchange chamber should be
`
`interpreted to include regions immediately adjacent to the sidewalls of the
`
`thermal exchange chamber. Thus, “between a first end and a second end”
`
`should mean that the first passage is not located immediately adjacent to the
`
`sidewalls, rather there should be some appreciable space between an edge of
`
`the first passage and the sidewalls, so that cooling liquid can spread outwardly
`
`from the location of the first passage towards the ends of the thermal exchange
`
`chamber.
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`21
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`IPR2021-01196
`U.S. Patent No 10,599,196
`Declaration of D. Tuckerman
`
`44. Nevertheless, if “between a first end and a second end” is construed to only
`
`exclude the sidewalls of the thermal exchange chamber, then the phrase the
`
`“second passage is positioned at either [the] first end or [the] second end of
`
`the thermal exchange chamber” in claim 2 must mean that the “second
`
`passage” is located on or through a sidewall of the thermal exchange chamber,
`
`which would exclude the preferred embodiment shown in Figure 17 (more on
`
`this below).
`
`“at . . . [the] end of the thermal exchange chamber”
`B.
`In the Institution Decision, the Board interpreted the term “end” to mean a
`
`45.
`
`sidewall of the thermal exchange chamber. DI at 19. Although “end” includes
`
`a sidewall, a passage that is contiguous with a sidewall, i.e., an edge of the
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`passage that is connected to or touching a sidewall, should also be considered
`
`“at . . . [the] end of the thermal exchange chamber.” This interpretation is fully
`
`supported by the specification of the ’196 patent. The preferred embodiment
`
`shown in Figure 17 (annotated above) shows that the “second passage 49 for
`
`leading cooling liquid from the thermal exchange chamber 47A” is not located
`
`on a sidewall of thermal exchange chamber 47A. Rather, it is located at the
`
`edge of intermediate member 47 (which defines the upper boundary wall of
`
`the thermal exchange chamber), such that when the device is fully assembled,
`
`22
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`
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`IPR2021-01196
`U.S. Patent No 10,599,196
`Declaration of D. Tuckerman
`
`second passage 49 is contiguous with a sidewall of thermal exchange chamber
`
`47A, and thus at the end of that chamber.
`
`46.
`
`If, however, “at . . . [the] end” is interpreted to mean only the sidewall, then
`
`the preferred embodiment shown in Figure 17 would be excluded from the
`
`scope of the claims because second passage 49 of the Figure 17 embodiment
`
`is not on a sidewall but is contiguous with a sidewall of thermal exchange
`
`chamber 47A.
`
`VII. DUAN DOES NOT DISCLOSE ALL LIMITATIONS OF CLAIMS 1
`AND 2
`47. Duan does not disclose the limitation “a first passage fluidly coupling the
`
`pump chamber and the thermal exchange chamber, wherein the first passage
`
`is configured to direct the cooling liquid from the outlet of the pump chamber
`
`into the thermal exchange chamber between a first end and a second end of
`
`the thermal exchange chamber” of claim 1.
`
`48. This is because Duan does not disclose cooling liquid entering into the thermal
`
`exchange chamber “between” the ends of the thermal exchange chamber.
`
`Instead, as shown in Figures 6 and 8 of Duan, the Duan device has end-to-end
`
`flow in the alleged thermal exchange chamber, which requires cooling liquid
`
`to enter adjacent to one end of the thermal exchange chamber and exit adjacent
`
`to the opposite end. And when cooling liquid is entering the chamber adjacent
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`23
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`IPR2021-01196
`U.S. Patent No 10,599,196
`Declaration of D. Tuckerman
`
`to an end of the chamber, it is not entering the chamber in between the ends
`
`of the chamber.
`
`49. Specifically, Dr. Pokharna maps the “first passage” to first liquid outlet 24 of
`
`Duan. Ex. 1003, ¶70. But as his own annotations (on page 63 of his
`
`declaration) show, outlet 24 is immediately adjacent the sidewalls of cap 3,
`
`and thus not located between the first and second ends of the alleged thermal
`
`exchange chamber. Therefore, outlet 24 is not configured to direct cooling
`
`liquid into the thermal exchange chamber at a location between a first end and
`
`a second end of the thermal exchange chamber, as required by claim 1.
`
`50.
`
`In the Institution Decision, the Board argued that “Duan’s Figure 8 shows that
`
`first liquid outlet 24 (i.e., Duan’s first passage) is not at the end of the thermal
`
`exchange chamber but between the two ends or sidewalls” because “there is a
`
`distinct portion of the chamber lateral to where the first passage connects to
`
`the chamber.” DI at 19 (citations omitted; emphasis in original). I disagree
`
`that outlet 24 is “between the two ends or sidewalls” just because Figure 8
`
`shows a small portion of the chamber lateral to outlet 24. Instead, as shown in
`
`Figure 4 (reproduced below), an edge of outlet 24 is immediately adjacent to
`
`one of the sidewalls of the thermal exchange chamber. Therefore, outlet 24 is
`
`not configured to direct cooling liquid into the alleged thermal exchange
`
`24
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`
`
`IPR2021-0
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