`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`COOLIT SYSTEMS, INC.
`
`Petitioner,
`
`v.
`
`Asetek Danmark A/S,
`
`Patent Owner
`
`_________________
`
`Case IPR2021-01196
`U.S. Patent 10,599,196
`_________________
`
`
`
`PETITIONER’S REPLY
`
`
`
`
`
`
`
`
`
`
`
`
`B.
`
`C.
`
`I.
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ...................................................................... 1
`ARGUMENT .............................................................................. 2
`A.
`The word “into” in claim 1 does not concern the position
`of the “first passage.” ....................................................... 3
`Patent Owner’s substantively similar arguments were
`considered and rejected by the Board before. .................. 7
`Duan discloses or teaches that the “cooling liquid” is
`being “direct[ed] … from the outlet of the pump chamber
`into the thermal exchange chamber between a first end
`and a second end of the thermal exchanger chamber.” ... 9
`D. Duan discloses or teaches that “the second passage is
`positioned at [the] second end of the thermal exchange
`chamber.” ....................................................................... 12
`Patent Owner incorrectly conflates the passages with the
`cooling liquid directed by the passages. ......................... 14
`Patent Owner impermissibly adds a negative limitation to
`the phrase “between a first end and a second end,” but
`even under Patent Owner’s incorrect construction, Duan
`still meets it. ................................................................... 24
`III. CONCLUSION ......................................................................... 29
`
`
`
`E.
`
`F.
`
`
`
`
`
`U.S. Patent No. 10,599,196
`
`
`
`
`Petitioner’s Reply
`
`PETITIONER’S EXHIBIT LIST
`
`
`Exhibit(s)
`1001
`
`Description
`U.S. Patent No. 10,599,196 (“’196 patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`File history of U.S. Patent No. 10,599,196 (“’196 FH”)
`
`Declaration of Himanshu Pokharna, Ph.D. Regarding
`Invalidity of U.S. Patent No. 10,599,196
`
`U.S. Patent App. Pub. No. 2006/0185830 to Qiang-Fei Duan
`et al. (“Duan”)
`
`U.S. Patent No. 7,325,591 to Qiang-Fei Duan et al. (“Duan-
`1”)
`
`U.S. Patent No. 6,894,899 to Wu et al. (“Wu”)
`
`Institution Decision in IPR2020-00522 (Paper 9) entered
`August 24, 2020
`
`Institution Decision in IPR2020-00524 (Paper 9) entered
`August 24, 2020
`
`U.S. Patent No. 10,078,355 (“’355 patent”)
`
`U.S. Patent No. 9,733,681 (“’681 patent”)
`
`Claim Construction Order, filed on July 22, 2020 in Asetek
`Danmark A/S v. CoolIT Systems, Inc., No. 3:19-cv-00410-
`EMC (N.D. Cal.)
`Joint Supplemental Claim Construction and Pre- Hearing
`Statement Under Patent L.R. 4-3, filed on March 19, 2021 in
`Asetek Danmark A/S v. CoolIT Systems, Inc., No. 3:19-cv-
`00410-EMC (N.D. Cal.)
`Asetek’s Third Amended Disclosure of Asserted Claims and
`Infringement Contentions Relating to U.S. Patent Nos.
`8,240,362; 10,078,354; 10,078,355; 10,613,601; and
`10,599,196, served February 5, 2021 in Asetek Danmark A/S
`v. CoolIT Systems, Inc., Corsair Gaming, Inc., and Corsair
`
`ii
`
`
`
`U.S. Patent No. 10,599,196
`
`
`
`
`Petitioner’s Reply
`
`Exhibit(s)
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`Description
`Memory, Inc., No. 3:19-cv-00410-EMC (N.D. Cal.)
`Transcript of December 22, 2020 Hearing in Asetek
`Danmark A/S v. CoolIT Systems, Inc., Corsair Gaming, Inc.,
`and Corsair Memory, Inc., No. 3:19- cv-00410-EMC (N.D.
`Cal.)
`
`Transcript of May 18, 2021 Hearing in Asetek Danmark A/S
`v. CoolIT Systems, Inc., Corsair Gaming, Inc., and Corsair
`Memory, Inc., No. 3:19- cv-00410-EMC (N.D. Cal.)
`
`Disclaimer in Patent Under 37 CFR 1.231(a) (disclaiming
`claims 8-16 of the ’681 patent)
`
`File history of U.S. Patent App. Pub. No. 2006/0185830 to
`Qiang-Fei Duan et al. (“Duan FH”)
`
`First Amended Complaint for Patent Infringement, filed on
`January 22, 2021 in Asetek Danmark A/S v. CoolIT Systems,
`Inc., Corsair Gaming, Inc., and Corsair memory, Inc., No.
`3:19-cv-00410-EMC (N.D. Cal.) (“Amended Complaint”)
`
`File history of U.S. Patent App. No. 16/796,086 to Eriksen
`
`Patent Owner’s Response in IPR2019-00524 (Paper 21)
`
`Patent Owner’s Response in IPR2019-00522 (Paper 23)
`
`Email from trials@uspto.gov to James Ryerson et al.
`regarding IPR2021-01195 and IPR2021-01196 (Oct. 7,
`2021)
`
`Judgment Final Written Decision in IPR2020-00522 (Aug.
`19, 2021)
`
`Amended Case Management and Pretrial Order for Jury
`Trial, Asetek Danmark A/S v. CoolIT Systems Inc., et al.,
`Case No. 19-cv-00410-EMC (Oct. 11, 2021)
`
`iii
`
`
`
`U.S. Patent No. 10,599,196
`
`
`
`
`Petitioner’s Reply
`
`Exhibit(s)
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`Description
`Joint Statement Regarding the Parties’ Proposal for the
`Remainder of this Case, Asetek Danmark A/S v. CoolIT
`Systems Inc., et al., Case No. 19-cv-00410- EMC (Oct. 8,
`2021)
`
`U.S. Patent No. 10,078,355 B2 to Eriksen (“’355 patent”)
`
`Transcript of Official Electronic Sound Recording of
`Remote Zoom Videoconference Proceedings, Asetek
`Danmark A/S v. CoolIT Systems Inc., et al., Case No. 19-cv-
`00410-EMC (Oct. 7, 2021)
`
`Claim Construction Order, Asetek Danmark A/S v. CoolIT
`Systems Inc., et al., Case No. 19-cv-00410- EMC (Jul. 8,
`2021)
`
`Summary of Proceedings Held by Zoom Webinar, Asetek
`Danmark A/S v. CoolIT Systems Inc., et al., Case No. 19-cv-
`00410-EMC (Oct. 7, 2021)
`
`Order Granting Defendants’ Motion to Extend Case
`Schedule, Asetek Danmark A/S v. CoolIT Systems Inc., et
`al., Case No. 19-cv-00410-EMC (Jul. 25, 2021)
`
`Expert Report of Dr. John P. Abraham Regarding Invalidity
`of Asetek Danmark A/S’s Asserted Patent Claims, Asetek
`Danmark A/S v. CoolIT Systems Inc., et al., Case No. 19-cv-
`00410-EMC (Sept. 16, 2021)
`
`Patent Owner’s Preliminary Response, IPR2020- 00524
`(May 26, 2020)
`
`Patent Local Rules from the United States District Court of
`Northern District of California
`
`Fig. 8 of Patent Application Publication No. 2006/0185830
`A1 [NOT FILED]
`
`Fig. 8 of Patent Application Publication No. 2006/0185830
`A1 – Zoom-in version [NOT FILED]
`
`iv
`
`
`
`U.S. Patent No. 10,599,196
`
`
`
`
`Petitioner’s Reply
`
`Exhibit(s)
`1036
`
`Description
`Fig. 8 of Patent Application Publication No. 2006/0185830
`A1 – With inner green marks [NOT FILED]
`
`1037
`
`1038
`
`1039
`
`1040
`
`Fig. 8 of Patent Application Publication No. 2006/0185830
`A1 – With green outer marks [NOT FILED]
`
`Deposition transcript of David Tuckerman, Ph.D., May 20,
`2022
`
`Supplemental Declaration of Himanshu Pokharna, Ph.D.
`
`Final Written Decision, IPR2020-00522 (U.S. Patent No.
`10,078,355), dated Aug 19, 2021 (“’355-FWD”)
`
`
`v
`
`
`
`I.
`
`INTRODUCTION
`CoolIT Systems, Inc. (“Petitioner”) hereby submits this reply (“Reply”) to
`
`Patent Owner’s Response (Paper 13, hereinafter “POR”) in IPR2021-01196.
`
`Recognizing that the asserted prior art references read on the challenged claims 3-19,
`
`Patent Owner disclaimed those claims, leaving the patentability of claims 1 and 2 as
`
`the only disputed issues. (Ex-2008 (disclaiming claims 3-19 by Patent Owner).)
`
`Patent Owner, however, incorrectly argues in the POR that a single word,
`
`“into,” recited in claim 1 somehow concerns the position of the “first passage.” Not
`
`so. The claim language does not dictate the position of the first passage. Rather,
`
`claim 1 requires that “the first passage” be “configured to direct the cooling liquid …
`
`into the thermal exchange chamber,” while claim 2 requires that the “second
`
`passage” be “configured to direct the cooling liquid out of the thermal exchange
`
`chamber.” (Ex-1001 (U.S. Patent No. 10,599,196 (the “’196 patent”), at 28:53-64.)
`
`That is, the words “into” and “out of” in claims 1 and 2 concern the flow directions
`
`of the cooling liquid relative to the thermal exchange chamber. They do not concern
`
`the positions of the passages. (Cf. Ex-1007, at 17, n.6; cf. Ex-1008, at 27, n8.)
`
`Additional language in claim 2 makes it transparent that the inventor knew
`
`how to specify the position of a passage when he intended to–by expressly
`
`reciting it. Claim 2 separately and additionally requires that the “second passage”
`
`be “positioned at either a first [sic] end or a [sic] second end of the thermal exchange
`
`
`
`
`
`U.S. Patent No. 10,599,196
`
`chamber.” There is no such positional language concerning the “first passage” in
`
`Petitioner’s Reply
`
`
`
`either claim 1 or 2. Thus, the word “into” in claim 1 does not concern the position
`
`of the first passage. Rather, “into” concerns the flow direction of the cooling liquid
`
`as it is being directed “from the outlet of the pump chamber into the thermal
`
`exchange chamber.” (Ex-1001 (’196 patent), at 28:53-58.)
`
`As explained in the Petition (Paper 1, hereinafter “Pet.”) and reiterated below,
`
`Duan discloses or teaches that its “cooling liquid” is being “direct[ed] … from the
`
`outlet of the pump chamber into the thermal exchange chamber between a first end
`
`and a second end of the thermal exchanger [sic] chamber,” as required by claim 1.
`
`Duan further discloses or teaches that the physical structure of its “second passage”
`
`is “positioned at [the] second end of the thermal exchange chamber,” as required by
`
`claim 2. Patent Owner proposed unsupported claim constructions in a futile attempt
`
`to avoid this reality, but as explained below, even under those constructions, Duan
`
`still renders both claims 1 and 2 obvious and unpatentable. Thus, the Board should
`
`cancel both claims 1 and 2.
`
`II. ARGUMENT
`Patent Owner does not contest that the asserted prior art discloses or teaches
`
`the vast majority of the limitations in claims 1 and 2. Instead, Patent Owner argues
`
`that “the patentability of one or both of those claims rests on the proper construction
`
`of the limitation ‘the first passage is configured to direct the cooling liquid from the
`
`2
`
`
`
`U.S. Patent No. 10,599,196
`
`outlet of the pump chamber into the thermal exchange chamber between a first end
`
`Petitioner’s Reply
`
`
`
`and a second end of the thermal exchange chamber’ of claim 1 and the limitation
`
`‘at … [the] end of the thermal exchange chamber’ of claim 2.” But Patent Owner is
`
`wrong because Duan renders claims 1 and 2 invalid under the phrases’ plain and
`
`ordinary meanings and even under Patent Owner’s proposed constructions for them,
`
`as explained in the Petition and reiterated below.
`
`A. The word “into” in claim 1 does not concern the position of the
`“first passage.”
`As an initial matter, Patent Owner incorrectly places a premium on the word
`
`“into,” arguing that word somehow concerns the position of the “first passage.” But
`
`it does not. (Ex-1039 (Pokharna Supplemental Decl.), at ¶ 5.) And no matter how
`
`many times Patent Owner repeats that incorrect proposition, the language of claim 1
`
`still does not recite anything about where the “first passage” is located, as an
`
`objectively factual matter. (Ex-1001 (’196 patent), at 28:53-58.) Instead, only
`
`claim 2 expressly recites the position of the “second passage,” a point that Patent
`
`Owner glosses over. (Id. at 28:59-64; see also Ex-1039, at ¶ 6.) The actual claim
`
`language in claims 1 and 2 makes this transparent, as shown below:
`
` Claim 1: “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 exchanger [sic] chamber.”
`
`3
`
`
`
`U.S. Patent No. 10,599,196
`
`
`
`
`Petitioner’s Reply
`
` Claim 2: “the thermal exchange chamber includes at least one
`second passage configured to direct the cooling liquid out of the
`thermal exchange chamber, the at least one second passage is
`positioned at either a [sic] first end or a [sic] second end of the
`thermal exchange chamber.”
`
`(Id. at 28:53-64.) As can be seen above, claim 1 recites the function of the “first
`
`passage” by requiring it to be “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 exchanger [sic] chamber.” (Id. at 28:53-58; see also Pet.
`
`at 14-15.) But there is no express recitation whatsoever of the position (or location)
`
`of the first passage. (See Pet. at 14-15.)
`
`In contrast, claim 2 expressly recites that the “second passage is positioned at
`
`either a [sic] first end or a [sic] second end of the thermal exchange chamber” after
`
`separately reciting its function by requiring it to be “configured to direct the cooling
`
`liquid out of the thermal exchange chamber.” (Ex-1001 at 28:59-64.) A POSITA,
`
`when reading claims 1 and 2 together, would therefore have understood
`
`the following:
`
`(1) Claim 1 requires the “first passage” to perform the function of
`“direct[ing] 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 exchanger [sic] chamber”;
`(2) Claim 1 does not require any particular position or location of the
`
`4
`
`
`
`U.S. Patent No. 10,599,196
`
`
`
`
`Petitioner’s Reply
`
`“first passage”;
`(3) Claim 2 requires the “second passage” to perform the function of
`“direct[ing] the cooling liquid out of the thermal exchange chamber”;
`and
`(4) Claim 2, in contrast, requires the “second passage” to be “positioned
`at either a [sic] first end or a [sic] second end of the thermal exchange
`chamber” in addition to specifying its function.
`
`(See Phillips v. AWH Corp., 415 F.3d 1303, 1313-14 (Fed. Cir. 2005) (“Importantly,
`
`the person of ordinary skill in the art is deemed to read the claim term not only in
`
`the context of the particular claim in which the disputed term appears, but in the
`
`context of the entire patent … Other claims of the patent in question, both asserted
`
`and unasserted, can also be valuable sources of enlightenment as to the meaning of
`
`a claim term.”) (emphasis added); SRI Intn’l. v. Matsushita Elec. Corp. of Am., 775
`
`F.2d 1107, 1122 (Fed. Cir. 1985) (en banc) (“It is settled law that when a patent
`
`claim does not contain a certain limitation and another claim does, that limitation
`
`cannot be read into the former claim in determining either validity or
`
`infringement.”); Ex-1039, at ¶¶ 5-10.)
`
`Patent Owner’s arguments confuse the functions of the passages with their
`
`positions (or locations) by misinterpreting the word “into” in claim 1. (See Pet. at
`
`14-15.) But as can be seen above, claim 1 specifies the first passage’s function of
`
`“direct[ing] 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 exchanger
`
`5
`
`
`
`U.S. Patent No. 10,599,196
`
`[sic] chamber.” The claim language literally does not speak to the position or
`
`Petitioner’s Reply
`
`
`
`location of the first passage at all. Similarly, claim 2 specifies the function of the
`
`second passage to be “direct[ing] the cooling liquid out of the thermal exchange
`
`chamber.” In sum, the first and second passages function to direct the cooling liquid
`
`“into” and “out of” the thermal exchange chamber, respectively. That is, the words
`
`“into” and “out of” concern the flow directions of the cooling liquid as it is being
`
`directed by the passages, but not the positions or locations of the passages. (Ex-
`
`1039, at ¶¶ 5-10; cf. Ex-1007, at 17, n.6 (“We note further that the specification
`
`appears to use the verb form of ‘direct’ consistently with our understanding, to refer
`
`to the direction of a fluid flow.”); cf. Ex-1008, at 27, n8 (same).)
`
`This point is clarified further by claim 2, which separately, additionally, and
`
`expressly requires that the second passage be “positioned at either a [sic] first end or
`
`a [sic] second end of the thermal exchange chamber.” (Ex-1001 at 28:59-64.) No
`
`similar positional requirement is present in claim 1 concerning the first passage. (Id.
`
`at 28:53-58.) Thus, the contrast of the express language of the two claims confirms
`
`that the word “into” concerns the flow direction of the cooling liquid as the first
`
`passage performs its function, but not the position of the first passage itself. In sum,
`
`claim 1 requires that the cooling liquid be directed into the thermal exchange
`
`chamber between a first end and a second end of the thermal exchange chamber, and
`
`claim 2 requires that the cooling liquid be directed out of the thermal exchange
`
`6
`
`
`
`U.S. Patent No. 10,599,196
`
`chamber. That is, again, “into” and “out of” concern the flow directions of the
`
`Petitioner’s Reply
`
`
`
`cooling liquid relative to the thermal exchange chamber as it is being directed by
`
`the passages. (Ex-1039, at ¶¶ 5-10.)
`
`Patent Owner’s arguments, therefore, fail because they contradict the express
`
`language of the claims distinguishing the two passages’ required functions from the
`
`second passage’s position, as shown above.
`
`B.
`
`Patent Owner’s substantively similar arguments were considered
`and rejected by the Board before.
`Another PTAB panel has already analyzed and rejected substantively the
`
`same arguments of Patent Owner in IPR2020-00522 and IPR2020-00524 on
`
`virtually identical limitations. For example, the challenged claim 101 of U.S. Patent
`
`No. 10,078,355 (the “’355 patent”) in IPR2020-00522 recites:
`
` “a first passage fluidly coupling the pump chamber and the
`thermal exchange chamber, wherein the first passage directs the
`cooling liquid in the thermal exchange chamber between a first
`end and a second end of the thermal exchanger chamber”
`
`(Cf. Ex-1001 at 28:53-58.) Similarly, in IPR2020-00524, the challenged claim 8 of
`
`U.S. Patent No. 9,733,681 (the “’681 patent”) recites:
`
`
`1 “Patent Owner [did] not challenge Petitioner’s assertion[] of anticipation by Duan
`for claim[] 10” of the ’355 patent, which the Board has ruled is anticipated by Duan
`and unpatantable. (Ex-1040 (’355-FWD), at 20, 26.)
`
`7
`
`
`
`U.S. Patent No. 10,599,196
`
`
`
`
`Petitioner’s Reply
`
` “a first passage fluidly coupling the pump chamber and the
`thermal exchange chamber, wherein the first passage directs the
`cooling liquid into[2] the thermal exchange chamber between a
`first end and a second end of the thermal exchange chamber”
`
`(Cf. Ex-1001 at 28:53-58.) In both proceedings, the Board ruled as follows:
`
`Patent Owner appears to misread the claim language such that
`“between a first end and a second end of the thermal exchange
`chamber” applies to the location of the first fluid passage. The more
`natural reading instructs that the first passage must direct the cooling
`liquid between two ends of the thermal exchange chamber. The
`structure of the claim language first defines that the first passage
`“fluidly coupl[es] the pump chamber and the thermal exchange
`chamber” and then further restricts the function of the passage such
`that it “directs the cooling liquid … between a first end and a second
`end of the thermal exchanger chamber.”
`
`(IPR2020-00522, Institution Decision (Paper 9) at 16-17 (emphasis added; internal
`
`citations omitted); IPR2020-00524, Institution Decision (Paper 9) at 26-28
`
`(emphasis added; internal citations omitted).) As pointed out by the Board in those
`
`
`2 Patent Owner incorrectly suggests that the Board in IPR2020-00524 made a
`mistake in addressing the word “in” instead of “into” in the institution decision.
`(POR at 16.) But it is clear from the overall context of the institution decision, the
`Board was addressing claim 8 of the ’681 patent, which recites “into” instead of “in.”
`(IPR2020-00524, Institution Decision (Paper 9) at 26-27.)
`
`8
`
`
`
`U.S. Patent No. 10,599,196
`
`IPR proceedings and as applicable here, “the claim language does not require the
`
`Petitioner’s Reply
`
`
`
`first fluid passage be located between the first and second ends of the thermal
`
`exchange chamber.” (Cf. IPR2020-00522 (Institution Decision, Paper 9, at 17); cf.
`
`IPR2020-00524 (Institution Decision, Paper 9, at 27-28).) That is, “Patent Owner’s
`
`argument[s] regarding Duan’s outlet 24 would require a contorted reading of the
`
`claim language.” (Cf. IPR2020-00522, Institution Decision (Paper 9) at 17; cf.
`
`IPR2020-00524, Institution Decision (Paper 9) at 27.)
`
`C. Duan discloses or teaches that the “cooling liquid” is being
`“direct[ed] … from the outlet of the pump chamber into the
`thermal exchange chamber between a first end and a second end of
`the thermal exchanger chamber.”
`Patent Owner’s contorted arguments about Duan somehow not disclosing or
`
`teaching the above limitation should be rejected. As explained in the Petition, Duan
`
`plainly discloses or teaches that its “first passage … direct[s] 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
`
`exchanger chamber,”
`
`as shown on the right.
`
`9
`
`
`
`U.S. Patent No. 10,599,196
`
`(Pet. at 49.) In particular, the Petition explains that, “as shown in the [above] colored
`
`Petitioner’s Reply
`
`
`
`and annotated version of FIG. 8, Duan discloses a first passage (e.g., first liquid
`
`outlet 24) fluidly coupling the pump chamber (e.g., accommodation chamber 21 and
`
`lower cover 225) and the thermal exchange chamber (e.g., cap 3 and cooling plate
`
`1), wherein the first passage directs the cooling liquid into the thermal exchange
`
`chamber between a first end (e.g., location at first liquid outlet 24) and a second end
`
`(e.g., location at second liquid outlet 31) of the thermal exchange chamber, [of]
`
`which [the] ends are shown [above] with the green arrows[.]” (Id. at 48-49
`
`(emphasis added).) An enlarged and further annotated excerpt of the above figure
`
`puts the issue to rest, as shown below:
`
`
`
`10
`
`
`
`U.S. Patent No. 10,599,196
`
`(Pet. at 49 (excerpt, further annotated).) As can be seen above, the four blue arrows
`
`Petitioner’s Reply
`
`
`
`pointing downward going through the liquid outlet 24 between the red box (the
`
`“pump chamber”) and the cyan box (the “thermal exchange chamber”) correspond
`
`to “the cooling liquid from the outlet of the pump chamber into the thermal exchange
`
`chamber.” These arrows plainly and unequivocally flow “from” the red box (the
`
`“pump chamber”) “into” 3 the cyan box (the “thermal exchange chamber”)
`
`“between” the “first end” and the “second end” (both indicated and shaded in green)
`
`of the “thermal exchange chamber.” Thus, Duan discloses or teaches that the cooling
`
`liquid is “direct[ed] … from the outlet of the pump chamber into the thermal
`
`exchange chamber between a first end and a second end of the thermal exchanger
`
`chamber,” as recited in claim 1 of the ’196 patent. (Ex-1039, at ¶¶ 11-14.)
`
`
`
`
`
`
`
`
`
`
`3 Patent Owner’s assertion that somehow the Petition “disregards the word ‘into’ in
`the limitation” is, as shown here, patently incorrect. (POR, at 11-12.) The Petition
`clearly and expressly addresses the word “into” in claim 1 with both text and figures.
`
`11
`
`
`
`U.S. Patent No. 10,599,196
`
`
`
`
`Petitioner’s Reply
`
`D. Duan discloses or teaches that “the second passage is positioned at
`[the] second end of the thermal exchange chamber.”
`Duan also plainly discloses or teaches that the structure forming its “second
`
`passage is positioned at [the] second end of the thermal exchange chamber,” as
`
`shown below:
`
`
`
`12
`
`
`
`U.S. Patent No. 10,599,196
`
`(Pet. at 51 (pink second passage in annotated Figure 6 original, pink box and shading
`
`Petitioner’s Reply
`
`
`
`in table added); see also Ex-1039, at ¶¶ 15-17.) An enlarged and further annotated
`
`excerpt of Figure 6 above, when juxtaposed with the enlarged and annotated excerpt
`
`of Figure 8 shown further above, puts the issue to rest, as shown below:
`
`(Pet. at 51 (pink second passage in Figure 6 original, pink box and shading over pink
`
`13
`
`
`
`U.S. Patent No. 10,599,196
`
`second passage added), 49 (pink box and shading over second passage in Figure 8
`
`Petitioner’s Reply
`
`
`
`added); see also Ex-1039, at ¶ 18.) As can be seen above, the second liquid outlet
`
`31 (pink) in Figure 6 of Duan juxtaposed with the second liquid outlet 31 (pink) in
`
`Figure 8 of Duan corresponds to the “second passage.” The “second passage”
`
`colored in pink in Figure 8 is plainly and unequivocally “at the second end” colored
`
`in green in Figure 8. Petitioner’s position on Duan’s disclosure or teaching of the
`
`second passage’s location is even supported by Patent Owner’s agreement that an
`
`“‘end’ includes a sidewall” and Patent Owner’s belief “that a passage that is
`
`contiguous with a sidewall (i.e., an edge of the passage touches or connects to the
`
`sidewall) should also be considered ‘at … [the] end of the thermal exchange
`
`chamber.’” (POR at 18 (brackets original).) Thus, Duan discloses or teaches that
`
`“the second passage is … at [the] second end of the thermal exchange chamber.”
`
`E.
`
`Patent Owner incorrectly conflates the passages with the cooling
`liquid directed by the passages.
`As mentioned above, Patent Owner’s contorted arguments confuse the
`
`functions of the passages with their positions. In doing so, Patent Owner effectively
`
`and incorrectly conflates the first and second passages with the cooling liquid
`
`directed by them. But the claim language in claims 1 and 2 makes clear that the
`
`passages and the cooling liquid directed by them are not the same:
`
` Claim 1: “a first passage fluidly coupling the pump chamber and
`the thermal exchange chamber, wherein the first passage is
`
`14
`
`
`
`U.S. Patent No. 10,599,196
`
`
`
`
`Petitioner’s Reply
`
`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 exchanger [sic] chamber.”
`
` Claim 2: “the thermal exchange chamber includes at least one
`second passage configured to direct the cooling liquid out of the
`thermal exchange chamber, the at least one second passage is
`positioned at either a [sic] first end or a [sic] second end of the
`thermal exchange chamber.”
`
`(See Ex-1039, at ¶¶ 5-10.) As can be seen above, claim 1 requires that the
`
`“cooling liquid” be directed by the first passage “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.” But there is no recitation of where the first
`
`passage is in claim 1–only where the “cooling liquid” is as it is directed from the
`
`outlet of the pump chamber into the thermal exchange chamber. In contrast, claim
`
`2 expressly recites that the “second passage is positioned at [the] second end of the
`
`thermal exchange chamber” after separately requiring that the “cooling liquid” be
`
`directed by the “second passage” out of the thermal exchange chamber. But there is
`
`no recitation of where the cooling liquid is in claim 2–only where the second
`
`15
`
`
`
`U.S. Patent No. 10,599,196
`
`passage is. Put together, as explained by the Petition and above, a POSITA would
`
`Petitioner’s Reply
`
`
`
`have understood Duan to disclose or teach the limitations in both claims 1 and 2
`
`as follows:
`
`(Pet. at 49 (blue cooling liquid arrows, pink second passage, red cooling liquid
`
`arrows, and green sidewalls / ends in Figure 8 added); see also Ex-1039, at ¶¶ 5-10,
`
`19.) As can be seen above, a POSITA would have understood that the “cooling
`
`liquid” (indicated by the blue arrows pointing down on the left) in Duan is
`
`“direct[ed] … from the outlet of the pump chamber into the thermal exchange
`
`chamber between a first end [green sidewall on the left] and a second end [green
`
`sidewall on the right] of the thermal exchange[] chamber.” At the same time, a
`
`POSITA would have understood that the “second passage” (pink) in Duan “is
`
`16
`
`
`
`U.S. Patent No. 10,599,196
`
`positioned at [the] second end [green sidewall on the right] of the thermal exchange
`
`Petitioner’s Reply
`
`
`
`chamber” while directing the cooling liquid (red arrow on the right) “out of the
`
`thermal exchange chamber.” (See Ex-1039, at ¶¶ 5-10.)
`
`As discussed above, a separate PTAB panel also observed this distinction
`
`based on almost identical claim language as that in claim 1 of the ’196 patent.
`
`(IPR2020-00522, Institution Decision (Paper 9) at 16-17 (discussing “the first
`
`passage directs the cooling liquid in the thermal exchange chamber between a first
`
`end and a second end of the thermal exchange chamber” in claim 10 of U.S. Patent
`
`No. 10,078,355) and IPR2020-00524, Institution Decision (Paper 9) at 26-28
`
`(discussing “the first passage directs the cooling liquid into the thermal exchange
`
`chamber between a first end and a second end of the thermal exchange chamber” in
`
`claim 1 of U.S. Patent No. 9,733,681.) Indeed, as pointed out by the Board there
`
`and as applicable here, “the first passage must direct the cooling liquid between two
`
`ends of the thermal exchange chamber.” (IPR2020-00522 (Institution Decision,
`
`Paper 9, at 17); IPR2020-00524 (Institution Decision, Paper 9, at 27).) And the
`
`“second passage” here must be positioned at the second end of the thermal exchange
`
`chamber. Thus, Petitioner’s arguments on the cooling liquid and the passages are
`
`consistent with the PTAB’s rulings, as would have been understood by a POSITA,
`
`and as explained in the Petition (at 49, 51). (Cf. IPR2020-00522 (Institution
`
`Decision, Paper 9, at 17); cf. IPR2020-00524 (Institution Decision, Paper 9, at 27);
`
`17
`
`
`
`U.S. Patent No. 10,599,196
`
`see also Ex-1039, at ¶¶ 5-10.) Patent Owner’s incorrect arguments, in contrast,
`
`Petitioner’s Reply
`
`
`
`are not.
`
`Patent Owner’s arguments effectively and incorrectly conflate the “cooling
`
`liquid,” which flows inside the passages and is “direct[ed]” by them, with the
`
`passages themselves. Contrary to Patent Owner’s assertions, a POSITA would have
`
`first understood the “passage” limitation in the context of the claim language of the
`
`’196 patent to mean the structure4 that “direct[s]” the cooling liquid that flows inside
`
`
`4 The Petition makes clear that the physical structure of Duan’s second liquid outlet
`31 is mapped to the “second passage” limitation. (Pet. at 51-52 (mapping the
`physical structure of Duan’s second liquid outlet 31, annotated in pink, to the
`“second passage” limitation in the ’196 patent while citing to Ex-1003 (Pokharna
`Decl.) at ¶ 71, which shows the same mapping).) Patent Owner’s expert agreed
`during deposition that was how Petitioner’s expert mapped the “second passage”
`limitation to Duan: “Q. … Dr. Tuckerman, when reading Dr. Pokharna’s declaration,
`it is your understanding that Dr. Pokharna opines that the structure 31 of Duan is the
`alleged second passage as annotated in Figure 5 of Duan on Page 27 of your
`declaration [Ex-2016], correct? A. That is basically my understanding.” (Ex-1038,
`2022-05-20, Tuckerman Tr., at 80:9-17 (emphasis added).) With respect to the “first
`passage,” the Petition focuses on its function of “(e.g., first liquid outlet 24) fluidly
`coupling the pump chamber (e.g., accommodation chamber 21 and lower cover 225)
`and the thermal exchange chamber (e.g., cap 3 and cooling plate 1)[.]” (Pet. at 48-
`49.) The “fluid coupling” takes place at Duan’s “first liquid outlet 24” as made clear
`by the Petition. (Id.) This is because claim 1 only recites the functions of the “first
`
`
`18
`
`
`
`U.S. Patent No. 10,599,196
`
`the space defined by such structure. As explained by Dr. Pokharna, this is because
`
`Petitioner’s Reply
`
`
`
`only the physical structures, i.e., the passages, that form the spaces inside can
`
`actually “direct” the cooling liquid, which flows inside such spaces. (Ex-1039, at
`
`¶ 9.) In other words, the passages and the cooling liquid directed by the passages
`
`are not the same, contrary to Patent Owner’s incorrect arguments that effectively,
`
`and incorrectly, make them synonymous. See, e.g., Becton, Dickinson & Co. v. Tyco
`
`Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists
`
`elements separately, ‘the clear implication of the claim language’ is that those
`
`elements are ‘distinct component[s]’ of the patented invention.”)
`
`
`passage” but not the position or location of its physical structure. Patent Owner does
`not dispute Duan discloses or teaches a “first passage” recited in claim 1, only its
`position or location. (See generally POR.)
`
`19
`
`
`
`U.S. Patent No. 1
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
