Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 7
`Entered: February 6, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SHENZHEN APALTEK CO., LTD.,
`Petitioner,
`v.
`ASETEK DANMARK A/S,
`Patent Owner.
`
`IPR2022-01317
`Patent 8,245,764 B2
`
`
`
`
`
`
`
`
`
`Before WILLIAM V. SAINDON, KEVIN W. CHERRY, and
`JASON W. MELVIN, Administrative Patent Judges.
`MELVIN, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 7
`Entered: February 6, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SHENZHEN APALTEK CO., LTD.,
`Petitioner,
`v.
`ASETEK DANMARK A/S,
`Patent Owner.
`
`IPR2022-01317
`Patent 8,245,764 B2
`
`
`
`
`
`
`
`
`
`Before WILLIAM V. SAINDON, KEVIN W. CHERRY, and
`JASON W. MELVIN, Administrative Patent Judges.
`MELVIN, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2022-01317
`Patent 8,245,764 B2
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`
`INTRODUCTION
`I.
`ShenZhen Apaltek Co., Ltd. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting institution of inter partes review of claims 1–30 of
`U.S. Patent No. 8,245,764 B2 (Ex. 1001, “the ’764 patent”). Asetek
`Danmark A/S (“Patent Owner”) filed a Preliminary Response. Paper 5
`(“Prelim. Resp.”). As authorized, Petitioner filed a Preliminary Reply.
`Paper 6. Pursuant to 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have
`authority to determine whether to institute review.
`An inter partes review may not be instituted unless “the information
`presented in the petition . . . and any response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the
`reasons set forth below, we conclude that Petitioner has shown a reasonable
`likelihood it will prevail in establishing the unpatentability of at least one
`challenged claim, and we institute inter partes review.
`
`A. REAL PARTIES IN INTEREST
`Petitioner identifies itself as the real party-in-interest. Pet. 146. Patent
`Owner identifies Asetek Danmark A/S, Asetek USA, Inc., Asetek A/S, and
`Asetek Holdings, Inc. as the real parties-in-interest for Patent Owner.
`Paper 4, 1 (Patent Owner’s Mandatory Notices).
`
`B. RELATED MATTERS
`The parties identify the following related litigations: Asetek Danmark
`A/S v. CoolIT Systems, Inc., C.A. No. 3:19-cv-00410 (N.D. Cal.); Cooler
`Master Co., Ltd. v. Asetek Danmark A/S, C.A. No. 4:21-cv-04627 (N.D.
`Cal.); and Asetek Danmark A/S v. Shenzhen Apaltek Co., Ltd., C.A. No.
`
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`6:21-cv-00501 (W.D. Tex.) (transferred to N. D. Cal., May 6, 2022).
`Pet. 147; Paper 4, 1.
`The parties also identify the following Office proceedings:
`IPR2020-00522, IPR2020-00523, and IPR2020-00524, which were filed in
`February 2020 and concluded in August 2021, IPR2021-01195 against U.S.
`Patent No. 10,613,601 and IPR2021-01196 against U.S. Patent
`No. 10,599,196. Pet. 147; Paper 4, 1–2.
`
`C. THE ’764 PATENT
`The ’764 patent is titled “Cooling System for a Computer System.”
`Ex. 1001, Code (54). It issued from an application filed October 7, 2011, as
`a continuation of and claims priority to a PCT application filed May 6, 2005.
`Id. at Code (63).
`The ’764 patent relates to a liquid-cooling system for a computer
`system. Id. at Code (57). The specification explains, at the time of the
`invention, air cooling arrangements were the most-used cooling system for
`cooling central processing units (CPUs) in computer systems. Id. at 1:17–31.
`An alternative design known at the time of the invention was to use a
`cooling liquid circulating inside a closed system by means of a pumping unit
`with a heat exchanger past which the cooling liquid circulates. Id. at 1:32–
`36. The specification contends that liquid cooling is generally more efficient
`and quieter than air cooling, but that a liquid cooling design consists of
`“many components,” which increases the total installation time, size, and
`risk of leakage of the cooling liquid from the system. Id. at 1:37–47. Thus,
`one object of the invention is to provide a small and compact liquid-cooling
`solution that is more efficient than existing air-cooling arrangements and can
`be produced at low cost enabling high production volumes, be easy-to-use
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`and implement, can be used with existing CPU types and computer systems,
`and requires a low level of maintenance or no maintenance at all. Id. at
`1:51–60.
`An illustrative embodiment of such a device is depicted in Figures 7
`and 8, reproduced below.
`
`
`
`Figure 71 is a perspective view of the cooling system showing reservoir
`housing 14 with the heat exchanging surface 5 (shown in Figure 8) and the
`pump 21 (shown in Figure 8) inside the reservoir. Id. at 15:61–16:7. Figure 8
`is a cut-out view into reservoir housing 14, when the reservoir, pump 21, and
`
`
`1 It appears the specification transposes the description of Figure 7 with that
`of Figure 8. We refer to the description of “Figure 8” in the specification in
`our discussion of Figure 7, and we refer to the specification’s discussion of
`“Figure 7” in our discussion of Figure 8.
`4
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`heat exchanging surface 4 are situated inside the reservoir. Id. at 15:28–30.
`The reservoir has a tube inlet connection (not shown in Figure 8) through
`which the cooling liquid enters the reservoir. Id. at 15:30–32. From the tube
`inlet connection, the cooling liquid flows through the reservoir passing heat
`exchanging surface 4 and enters the inlet of the pump. Id. at 15:32–35. After
`the cooling liquid flows through the pump, the cooling liquid passes out of
`the outlet of the pump and further out through tube outlet connection 16. Id.
`at 15:35–37. As shown in Figure 7, tube inlet connection and tube outlet
`connection 16 are connected to heat radiator 11 by means of connecting
`tubes 24 and 25. Id. at 15:64–67. Cooling liquid flows into and out of the
`reservoir and the heat radiator through connecting tubes 24 and 25,
`respectively. Id. Heat radiator 11 (shown in Figure 7) cools the cooling
`liquid before it passes back into the reservoir. Id. at 15:67–16:4.
`The reservoir may be provided with channels or segments for
`establishing a certain flow-path for the cooling liquid through the reservoir
`to prevent the cooling liquid passing the reservoir too quickly to take up a
`sufficient amount of heat from the heat exchanging surface. Id. at 16:25–42.
`Figures 17 and 20 show the internal structures of a preferred
`embodiment of the reservoir according to the invention and are reproduced
`below. Id. at 21:12–22:59.
`
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`Figure 17 is an exploded perspective view of a preferred embodiment of a
`reservoir and a pump and the heat exchanging surface. Id. at 9:62–64.
`Figure 20 is a simplified schematic showing a cross-sectional view of the
`reservoir along plane 20-20 of Figure 17. Id. at 10:4–5. Reservoir housing 14
`as shown in Figures 17 and 20 is in the form of a double-sided chassis
`
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`having a substantially conical, circular configuration with stiffening ribs 36
`extending axially along the exterior of the reservoir housing and configured
`to mount an electrical motor. Id. at 21:14–21. Reservoir housing 14 has
`recess 40 intended for accommodating stator 37 of an electrical motor
`driving impellor 33 of the pump, which is attached to shaft 38 of rotor 39 of
`the electric motor. Id. at 21:28–40. The specification explains that “a liquid-
`proof division” is made between rotor 39 of the motor, which is submerged
`in the cooling liquid, and the stator 37 of the pump. Id. at 21:41–51.
`The enclosed space between impeller 33 and heating exchanging
`interface 4 is divided into two separate chambers by impeller cover 46A and
`intermediate member 47, as shown in Figure 20. The chamber formed by
`impeller 33 and impeller cover 46A is described as “pump chamber 46” and
`has outlet 34. Id. at 22:26–53.
`
`D. CHALLENGED CLAIMS
`Challenged claim 1 is independent and is reproduced below:
`1. A cooling system for a heat-generating component,
`comprising:
`a double-sided chassis adapted to mount a pump configured
`to circulate a cooling liquid, the pump comprising a
`stator and an impeller, the impeller being positioned on
`the underside of the chassis and the stator being
`positioned on the upper side of the chassis and isolated
`from the cooling liquid;
`a reservoir adapted to pass the cooling liquid therethrough,
`the reservoir including:
`a pump chamber including the impeller and formed
`below the chassis, the pump chamber being defined
`by at least an impeller cover having one or more
`passages for the cooling liquid to pass through;
`
`
`
`7
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`a thermal exchange chamber formed below the pump
`chamber and vertically spaced apart from the pump
`chamber, the pump chamber and the thermal
`exchange chamber being separate chambers that are
`fluidly coupled together by the one or more passages;
`and
`a heat-exchanging interface, the heat-exchanging
`interface forming a boundary wall of the thermal
`exchange chamber, and configured to be placed in
`thermal contact with a surface of the heat-generating
`component; and
`a heat radiator fluidly coupled to the reservoir and
`configured to dissipate heat from the cooling liquid.
`Id. at 27:39–64. Claims 10 and 15 are also independent and recite generally
`similar limitations. See id. at 28:27–43, 28:57–29:13. The other challenged
`claims depend, directly or indirectly, from claim 1, 10, or 15. Id. at 27:66–
`30:12; Ex. 1002, 1:18–2:35.
`
`E. PRIOR ART AND ASSERTED GROUNDS
`Petitioner asserts the following ground of unpatentability:
`Claims Challenged 35 U.S.C. § References/Basis
`1–19, 21-27, 29, 30 103
`Duan2
`
`1–19, 21-27, 29, 30 103
`
`Duan, Duan-I3
`
`8
`
`8
`
`103
`
`103
`
`Duan, Laing4
`
`Duan, Duan-I, Laing
`
`103
`
`Batchelder5, Duan
`
`1–30
`
`2 US Pub. No. 2006/0185830 A1, pub. Aug. 24, 2006 (Ex. 1006).
`3 US Pub. No. 2006/0185829 A1, pub. Aug. 24, 2006 (Ex. 1007).
`4 US Pub. No. 2004/0052663 A1, pub. Mar. 18, 2004 (Ex. 1015).
`5 US Pat. No. 6,019,165, iss. Feb. 1, 2000 (Ex. 1008).
`8
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`Claims Challenged 35 U.S.C. § References/Basis
`8
`103
`Batchelder, Duan, Laing
`
`Pet. 3. Petitioner also relies on the Declaration of George Karamanis, Ph.D.
`Ex. 1003.
`
`II. ANALYSIS
`A. 35 U.S.C. § 325(d)
`Patent Owner argues that we should deny institution under § 325(d)
`because the Petition presents challenges based on Batchelder, which the
`Examiner previously considered. Prelim. Resp. 10–14. In particular, the
`Examiner rejected the pending claims over a combination of Tamioka (US
`Pat. Pub. No. 2006/0069432) with Batchelder. Ex. 1004, 101–05.
`Significantly, the Examiner relied on Batchelder only as teaching (1) the use
`of copper and aluminum in a heat-exchanging interface and (2) the use of an
`intermediate member in the pump unit. Id. at 101–02.
`Applicant did not discuss Batchelder’s disclosures relative to
`Tamioka’s asserted deficiencies regarding claims 1 or 12. Ex. 1004, 81, 85.
`It did assert that Batchelder failed to rectify Tamioka’s asserted deficiencies
`regarding claim 17, but provided no explanation to support that assertion. Id.
`at 84. Our review of the record indicates that Petitioner relies on Batchelder
`in a significantly different combination than was previously considered by
`the Examiner. Thus, we conclude the Petition does not present the same art
`or arguments previously presented to the Office. See Advanced Bionics, LLC
`v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 7–
`9 (PTAB Feb. 13, 2020) (precedential).
`
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`Moreover, Petitioner presents four grounds against the challenged
`claims that do not involve Batchelder at all. Because Patent Owner’s
`arguments for discretionary denial under § 325(d) at best implicate only the
`grounds including Batchelder, we determine that § 325(d) is not sufficiently
`implicated such that its statutory purpose would be undermined by
`instituting here.6 Accordingly, Patent Owner’s argument based on § 325(d)
`is not persuasive.
`
`B. LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner proposes that a person of ordinary skill
`
`would have been knowledgeable regarding liquid cooling
`systems for computer systems, would have had a Bachelor of
`Science (B.S.) in electrical or mechanical engineering, or
`similar advanced post-graduate education in this area, or would
`have possessed at least 2-3 years of experience in liquid cooling
`systems for computer systems or similar systems. A POSITA
`would be knowledgeable of the concepts, components, and their
`functions described as “prior art” in the ’355 patent such as,
`e.g., pumps, radiators, fans, reservoirs, and other techniques of
`heat dissipation and liquid cooling. (Ex-1001,1:11-47.) In
`addition, a POSITA would be knowledgeable about electric
`motors and their components (e.g., electromagnetic coils,
`rotors, stators, AC/DC motors, etc.)
`Pet. 5–6 (citing Ex. 1003 ¶¶ 13–18). Patent Owner does not dispute this
`definition of a person of ordinary skill. See generally Prelim. Resp. For
`purposes of this Decision, we adopt Petitioner’s proposed level of ordinary
`skill as it appears to be consistent with the level of skill reflected by the
`specification and in the asserted prior art references.
`
`
`6 See SAS Q&As, D1 (June 5, 2018), available at https://www.uspto.gov/
`sites/default/files/documents/sas_qas_20180605.pdf.
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`
`C. CLAIM CONSTRUCTION
`For an inter partes review petition filed after November 13, 2018, we
`construe claim terms “using the same claim construction standard that would
`be used to construe the claim in a civil action under 35 U.S.C. 282(b).”
`37 C.F.R. § 42.100(b) (2019).
`Petitioner submits that the parties have stipulated to construe the term
`‘reservoir’ in the ’764 patent to mean ‘single receptacle defining a fluid flow
`path.’” Pet. 6 (citing Ex. 1005, 2; Ex. 1003 ¶ 19); accord Prelim. Resp. 4.
`We apply that definition for purposes of this decision.
`Based on our analysis of the issues in dispute at this stage of the
`proceeding, we conclude that no other claim term requires express
`construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`D. OBVIOUSNESS OVER DUAN
`Petitioner maps the language of independent claim 1 to Duan’s
`disclosures, modified as described below by those of Duan-I. Pet. 26–48.
`Duan’s system includes a cooling plate module with a cooling plate
`integrally formed with a liquid driving module such that the layout of the
`cooling plate module can be minimized to reduce space. Ex. 1006 ¶ 7.
`Figure 6, reproduced below, is a view of Duan’s “liquid cooling cyclic
`mechanism.” Id. ¶ 17.
`
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`Duan’s Figure 6 shows liquid cooling cyclic mechanism 100 for cooling
`CPU 200. Id. ¶ 22. Liquid cooling cyclic mechanism 100 comprises cooling
`module 10 and water tank module 20, which is connected with cooling plate
`module 10 through ducts. Id. Cooling plate module 10 includes cooling plate
`1, liquid driving module 2, and heat absorbing interface 11. Id. Heat
`absorbing face 11 is in contact with CPU 200 for dissipating heat generated
`by the CPU. Id. ¶ 26. Water tank 20 includes cooling stage 53. Id. ¶ 25.
`Driven by liquid driving module 2 (a pump), liquid heated by CPU 200
`flows to cooling stage 53, where heat dissipates through heat-dissipating fins
`531, and the resulting cool liquid flows back to cooling plate module 10. Id.
`¶ 23–26.
`
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`Petitioner asserts that, “[g]iven the known ‘compact trend of
`computer[s]’ recognized by Duan [¶0006], a POSITA would have been
`motivated to rotate Duan’s liquid driving module 2 (pump) counterclockwise
`by 90 degrees in Figure 7 to reduce the system’s overall height, in view of
`Duan-I.” Pet. 32 (citing Ex. 1003 ¶ 55). Petitioner relies on the similar
`cooling modules disclosed in Duan and Duan-I, depicted in Figure 7 of each
`reference and reproduced below:
`
`
`
`Id. (quoting Ex. 1006, Fig. 7; Ex. 1007, Fig. 7). Duan’s Figure 7 depicts
`cooling plate module 10 comprising liquid driving module 2 located on top
`of cooling plate 1 with impeller stage 223 having a rotational axis along the
`surface of CPU 200 being cooled. Ex. 1006 ¶¶ 22, 23, 27. Duan-I’s Figure 7
`depicts liquid-cooling heat dissipation apparatus 100 comprising liquid
`driving unit 2 located on top of cooling plate module 3 with impeller stage
`
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`23 having a rotational axis normal to the surface of CPU 200 being cooled.
`Ex. 1007 ¶¶ 20–22, 28.
`Thus, Petitioner identifies the reservoir of its asserted, modified
`system in an annotated illustration, reproduced below:
`
`
`
`Pet. 37 (quoting Ex. 1003 ¶ 63). Petitioner’s annotated illustration shows
`Duan’s modified cooling plate module with the asserted reservoir outlined in
`orange.
`Patent Owner argues that Duan lacks the claimed “reservoir.” Prelim.
`Resp. 5–10. In that argument, Patent Owner purports to contrast the ’764
`patent’s disclosures with the device Petitioner asserts. Patent Owner
`provides an annotated version of the ’764 patent’s Figure 20, reproduced
`below:
`
`
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`Prelim. Resp. 5 (annotating Ex. 1001, Fig. 20). Figure 20 depicts a
`cross-sectional view of Figure 17’s reservoir, including the reservoir housing
`(not enumerated), impeller cover 46A, pump chamber 46, intermediate
`member 47, heat exchange surface 4, and thermal exchange chamber 47A.
`Ex. 1001, 10:4–5, 21:13–22:53. Patent Owner asserts that Figure 20 depicts
`a single-receptacle reservoir “that includes dual chambers: a ‘pump
`chamber’ and a ‘thermal exchange chamber.’” Prelim. Resp. 4–5.
`In Patent Owner’s view, Duan’s cooling plate module 10 “includes
`two receptacles—one defined by accommodation chamber 21 and another
`defined by cap 3 and cooling plate 1—and those two receptacles are simply
`attached together.” Prelim. Resp. 6 (annotating Ex. 1006, Fig. 3).
`Patent Owner asserts that when the Federal Circuit affirmed the jury’s
`verdict in Asetek Danmark A/S/ v. CMI USA Inc., 852 F.3d 1352 (Fed. Cir.
`2017), it affirmed that “two separate receptacles attached together do not
`
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`form a single receptacle.” Prelim. Resp. 6 (citing CMI, 852 F.3d at 1357–
`58). While the court affirmed the verdict, the only invalidity issue it
`addressed was whether an asserted prior-art patent—Koga, US Patent
`No. 7,544,049—disclosed a “thermal exchange chamber.” CMI, 852 F.3d
`at 1360–62 (addressing whether, “as a matter of law, Koga's ‘sucking
`channel’ is a ‘thermal exchange chamber’ (a requirement of all asserted
`claims of the ’764 patent) because the ‘sucking channel’ ‘exchanges some
`heat.’”). Patent Owner does not assert that preclusion applies to bar
`Petitioner from an argument contrary to the jury’s findings or bar the Board
`from reaching a contrary finding regarding Koga’s asserted reservoir.
`Petitioner asserts different art here, in a different combination, and we will
`evaluate the record as presented.
`Patent Owner argues additionally that a district judge in prior
`litigation determined that whether an asserted reservoir formed from two
`structures is a “single receptacle” or two receptacles turns on “whether the
`first and second structures can each function as a receptacle.” Prelim.
`Resp. 8 (quoting Ex. 2003, 2–3 (Asetek Danmark A/S v. CoolIT Systems,
`Inc., Case 3:19-CV-00410-EMC, addressing summary judgment of
`noninfringement)). Applying that test, Patent Owner asserts that Duan’s
`drawings show its “accommodation chamber 21 and the combination of
`cap 3 and plate 1 can function independently.” Prelim. Resp. 8 (citing
`Ex. 1006, Figs. 2, 3, 6, 7). That assertion addresses Duan’s express
`disclosures without addressing Petitioner’s asserted combination. As
`summarized above, Petitioner asserts a modified version of Duan’s cooling
`unit. See Pet. 32–37. Thus, Patent Owner’s argument regarding Duan’s
`disclosed embodiment is inapposite.
`
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` As to the asserted combination, Patent Owner asserts “the single-
`receptacle ‘reservoir’ limitation cannot be satisfied by attaching two
`receptacles, irrespective of their orientation.” Prelim. Resp. 9. Patent Owner
`does not support or explain that assertion, or that Petitioner’s combination
`has two receptacles. Accordingly, it is not persuasive. Our review of the
`record leads us to conclude that the claim language reads on Petitioner’s
`asserted combination much as it would read on the embodiment depicted in
`the ’764 patent—a reservoir made from multiple pieces is divided into
`chambers by internal baffle elements.
`Patent Owner does not otherwise challenge Petitioner’s contentions.
`See Prelim. Resp. 9–10. We have reviewed the remainder of Petitioner’s
`contentions and conclude that they show Petitioner has a reasonable
`likelihood of success regarding obviousness over Duan and Duan-I. See
`Pet. 26–87.
`
`E. ADDITIONAL GROUNDS
`Petitioner presents additional grounds, which Patent Owner has not
`addressed other than as discussed above. We do not evaluate the additional
`grounds at this time, having determined that the ground based on Duan and
`Duan-I justifies institution. During trial, the parties may raise arguments
`regarding any ground in the Petition, and we will consider all grounds.
`
`III. CONCLUSION
`For the reasons discussed above, we conclude Petitioner has shown a
`reasonable likelihood of prevailing with respect to at least one claim. We
`have evaluated all of the parties’ submissions and determine that the record
`supports institution.
`
`
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`Our determination at this stage of the proceeding is based on the
`evidentiary record currently before us. This decision to institute trial is not a
`final decision as to patentability of any claim for which inter partes review
`has been instituted. Our final decision will be based on the full record
`developed during trial.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review
`of claims 1–30 of the ’764 patent is instituted on the grounds set forth in the
`Petition;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
`commencing on the entry date of this decision.
`
`
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`PETITIONER:
`James Ryerson
`Heath Briggs
`GREENBERG TRAURIG, LLP
`ryersonj@gtlaw.com
`briggsh@gtlaw.com
`
`PATENT OWNER:
`Eric Raciti
`Arpita Bhattacharyya
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT, & DUNNER LLP
`Eric.raciti@finnegan.com
`Arpita.bhattacharyya@finnegan.com
`
`
`
`
`
`
`19
`
`
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