throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Date: August 28, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`COOLER MASTER CO., LTD.,
`Petitioner,
`v.
`ASETEK DANMARK A/S,
`Patent Owner.
`
`IPR2023-00668
`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
`Granting Motion for Joinder
`35 U.S.C. § 315(c)
`
`
`
`
`
`
`
`

`

`IPR2023-00668
`Patent 8,245,764 B2
`
`
`I.
`INTRODUCTION
`Cooler Master Co., Ltd. (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
`to institute inter partes review of claims 1–30 of U.S. Patent
`No. 8,245,764 B2 (Ex. 1001, “the ’764 patent”). Petitioner filed also a
`Motion for Joinder seeking to join Petitioner as a party to Shenzhen Apaltek
`Co., Ltd. v. Asetek Danmark A/S, IPR2022-01317 (“the Apaltek IPR”).
`Paper 1 (“Mot.”). Asetek Danmark A/S (“Patent Owner”) did not file a
`Preliminary Response or an opposition to the Motion. 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 institute inter partes review and grant
`Petitioner’s Motion.
`
`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. Paper 5, 1 (Patent
`Owner’s Mandatory Notices).
`
`B. RELATED MATTERS
`Petitioner identifies the following related litigations: Cooler Master
`Co., Ltd. et al v. Asetek Danmark A/S, No. 5:21-cv-04627-EJD (N.D. Cal.);
`and Asetek Danmark A/S v. Shenzhen Apaltek Co., No. 3:22-cv-06179-WHO
`
`2
`
`

`

`IPR2023-00668
`Patent 8,245,764 B2
`
`(N.D. Cal.). Pet. 148. Patent Owner identifies Cooler Master Co., Ltd. v.
`Asetek Danmark A/S, No. 4:21-cv-04627 (N.D. Cal.). Paper 5, 1.
`Petitioner identifies IPR2020-00522, IPR2020-00523, and IPR2020-
`00524, which were filed in February 2020, concluded in August 2021, and
`are currently on appeal to the U.S. Court of Appeals for the Federal Circuit.
`Pet. 148. Patent Owner identifies IPR2022-01317, in which we instituted
`review. Paper 5, 1.
`
`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
`
`3
`
`

`

`IPR2023-00668
`Patent 8,245,764 B2
`
`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
`heat exchanging surface 4 are situated inside the reservoir. Id. at 15:28–30.
`
`
`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
`
`

`

`IPR2023-00668
`Patent 8,245,764 B2
`
`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.
`
`5
`
`

`

`IPR2023-00668
`Patent 8,245,764 B2
`
`
`
`
`
`
`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
`
`6
`
`

`

`IPR2023-00668
`Patent 8,245,764 B2
`
`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
`
`

`

`IPR2023-00668
`Patent 8,245,764 B2
`
`
`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:
`Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
`1–19, 21–27, 29, 30
`103
`Duan2
`
`1–19, 21–27, 29, 30
`
`8
`
`8
`
`1–30
`
`103
`
`103
`
`103
`
`103
`
`Duan, Duan-I3
`
`Duan, Laing4
`
`Duan, Duan-I, Laing
`
`Batchelder5, Duan
`
`
`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
`
`

`

`IPR2023-00668
`Patent 8,245,764 B2
`
`
`Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
`8
`103
`Batchelder, Duan, Laing
`
`Pet. 3. Petitioner also relies on the Declaration of Georgios Karamanis,
`Ph.D. Ex. 1003.
`
`II. ANALYSIS
`To join a petitioner to an instituted proceeding, the Board first
`determines whether the Petition “warrants” institution under 35 U.S.C.
`§ 314. 35 U.S.C. § 315(c); see Facebook, Inc. Windy City Innovations, LLC,
`973 F.3d 1321, 1332 (Fed. Cir. 2020).
`The Board next determines whether to exercise “discretion to decide
`whether to ‘join as a party’ the joinder applicant,” who is the Petitioner in
`this proceeding. Windy City, 973 F.3d at 1332. As moving party, Petitioner
`bears the burden of proving that it is entitled to the requested relief.
`37 C.F.R. § 42.20(c). A motion for joinder should (1) set forth the reasons
`joinder is appropriate; (2) identify any new grounds of unpatentability
`asserted in the petition; and (3) explain what impact (if any) joinder would
`have on the trial schedule for the existing review. See Kyocera Corp. v.
`SoftView, LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013). In
`addition, a motion for joinder must be filed “no later than one month after
`the institution date of any inter partes review for which joinder is requested.”
`37 C.F.R. § 42.122(b).
`
`A.
`INSTITUTION OF INTER PARTES REVIEW
`Petitioner represents that the “Petition is essentially a copy of the
`petition filed in” the Apaltek IPR and that the Petition “includes identical
`grounds.” Mot. 1. Our independent review of the Petition and the
`
`9
`
`

`

`IPR2023-00668
`Patent 8,245,764 B2
`
`Apaltek IPR petition confirms Petitioner’s representations, and that the
`Petitions in the two proceedings are substantially the same.
`Having already considered the merits of those challenges and the
`evidence in the Apaltek IPR and having determined that the threshold for
`institution of inter partes review has been met, we determine that the Petition
`here also presents a reasonable likelihood of prevailing on the challenges to
`at least one claim. Therefore, for the same reasons stated in our Decision to
`Institute in the Apaltek IPR, we institute inter partes review in this
`proceeding on the grounds presented in the Petition. See IPR2022-01317,
`Paper 7.
`
`B. MOTION FOR JOINDER
`Petitioner timely filed its Motion for Joinder on March 6, 2023, which
`was no later than one month after the institution of the Apaltek IPR on
`February 6, 2023. See 37 C.F.R. § 42.122(b).
`We determine that Petitioner has met its burden of showing that
`joinder is appropriate because, as set forth above, the Petition is substantially
`identical to the petition in the Apaltek IPR, contains the same grounds based
`on the same evidence, and relies on the same declaration of Georgios
`Karamanis, Ph.D. (Ex. 1003). Petitioner also represents that joinder will not
`impact the Apaltek IPR schedule. Mot. 3 (“Petitioner agrees to the deadlines
`set forth in the Apaltek IPR Scheduling Order”).
`Additionally, Petitioner represents that it is willing to accept a limited,
`“understudy role” to ShenZhen Apaltek Co., Ltd. (the original petitioner in
`the Apaltek IPR) “as long as Apaltek remains a party to the Apaltek IPR.”
`Id. at 4. Specifically, Petitioner represents that in its understudy role, it
`agrees that the following conditions will apply:
`
`10
`
`

`

`IPR2023-00668
`Patent 8,245,764 B2
`
`
`(a) Petitioner will not make any substantive filings and shall be
`bound by the filings of Apaltek, unless a filing concerns
`termination and settlement, or issues solely involving
`Petitioner.
`
`(b) Petitioner will not present any argument or make any
`presentation at oral hearing unless an issue solely involves
`Petitioner, or when addressing Board-approved motions that do
`not affect Apaltek.
`
`(c) Petitioner will not seek to cross-examine or defend the
`cross-examination of any witness, unless the topic of cross-
`examination concerns issues solely involving Petitioner, within
`the time permitted by Apaltek alone and with Apaltek’s
`agreement.
`
`(d) Petitioner will not seek discovery from Patent Owner,
`unless issues arise that are unique to, and only applicable to,
`Petitioner.
`
`(e) Petitioner will not rely on expert testimony beyond that
`submitted by Apaltek unless and until Apaltek is terminated as
`party to the proceedings, prior to any necessary depositions.
`Petitioner’s expert, Dr. Karamanis, is the same expert used in
`the Apaltek IPR, and his expert declaration submitted herein is
`substantively identical to the declaration he submitted in the
`Apaltek IPR.
`Id. at 4–5. Patent Owner has not filed an opposition to Petitioner’s Motion.
`Thus, Petitioner’s Motion stands unopposed .
`Under these circumstances, we agree with Petitioner that joinder is
`appropriate and will not unduly impact the ongoing trial in the Apaltek IPR.
`We limit Petitioner’s participation in the Apaltek IPR proceeding, as
`follows: (1) Apaltek alone is responsible for all petitioner filings in the
`proceeding until such time that it is no longer an entity in the proceeding,
`and (2) Petitioner is bound by all filings by Apaltek in the Apaltek IPR
`
`11
`
`

`

`IPR2023-00668
`Patent 8,245,764 B2
`
`proceeding, except for (a) filings regarding termination or settlement, and
`(b) filings where Petitioner receives permission to file an independent paper.
`Petitioner must obtain prior Board authorization to file any paper or take any
`action on its own in the proceeding, so long as Apaltek remains as a non-
`terminated petitioner in the proceeding. This arrangement promotes the just
`and efficient administration of the ongoing trial in the Apaltek IPR and
`protects the interests of Apaltek as original petitioner in IPR2022-01317 and
`of Patent Owner.
`
`III. CONCLUSION
`For the reasons discussed above, we institute inter partes review of
`the challenged claims of the ’764 patent based on the asserted
`unpatentability grounds. We grant Petitioner’s Motion for Joinder and join
`Petitioner to IPR2022-01317, with the limitations set forth above.
`
`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. § 315(c) and
`37 C.F.R. § 42.122, Petitioner’s Motion for Joinder is granted, and
`Petitioner is joined as a petitioner to IPR2022-01317, subject to the above-
`described limitations on Petitioner’s participation;
`FURTHER ORDERED that the asserted grounds of unpatentability on
`which the Board instituted inter partes review in IPR2022-01317 are
`unchanged and remain the only instituted grounds;
`
`12
`
`

`

`IPR2023-00668
`Patent 8,245,764 B2
`
`
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2022-01317, including any schedule changes agreed by the parties in
`that proceeding pursuant to the Scheduling Order, shall govern the trial
`schedule in IPR2022-01317;
`FURTHER ORDERED that the case caption in IPR2022-01317 for all
`further submissions shall be modified to add Cooler Master Co., Ltd. as a
`named Petitioner, and to indicate by footnote the joinder of Petitioner to that
`proceeding, as indicated in the attached sample case caption;
`FURTHER ORDERED that a copy of this Decision be entered into
`the record of IPR2022-01317.
`
`
`
`13
`
`

`

`IPR2023-00668
`Patent 8,245,764 B2
`
`FOR PETITIONER:
`
`James Ryerson
`Heath Briggs
`Kyle D. Chen
`GREENBERG TRAURIG, LLP
`ryersonj@gtlaw.com
`briggsh@gtlaw.com
`kchen@gtlaw.com
`
`
`FOR PATENT OWNER:
`
`Eric P. Raciti
`Arpita Bhattacharyya
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`eric.raciti@finnegan.com
`arpita.bhattacharyya@finnegan.com
`regional-desk@finnegan.com
`
`
`
`
`
`14
`
`

`

`IPR2023-00668
`Patent 8,245,764 B2
`
`
`[Sample Case Caption]
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SHENZHEN APALTEK CO., LTD. and
`COOLER MASTER CO., LTD.,
`Petitioner,
`v.
`ASETEK DANMARK A/S,
`Patent Owner.
`
`IPR2022-01317
`Patent 8,245,764 B2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Cooler Master Co., Ltd., which filed a petition in IPR2023-00668, has been
`joined as a party to this proceeding.
`
`15
`
`

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