Case 3:19-cv-00410-EMC Document 504 Filed 10/25/22 Page 1 of 41
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`ASETEK DANMARK A/S,
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`Plaintiff,
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`v.
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`COOLIT SYSTEMS INC, et al.,
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`Defendants.
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`Case No. 19-cv-00410-EMC
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`
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`ORDER GRANTING IN PART AND
`DENYING IN PART DEFENDANTS’
`MOTION FOR SUMMARY
`JUDGMENT; AND GRANTING IN
`PART AND DENYING IN PART
`PLAINTIFF’S MOTION FOR PARTIAL
`SUMMARY JUDGMENT
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`Docket Nos. 387, 394
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`
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`I.
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`INTRODUCTION
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`Plaintiff Asetek Danmark AS (“Asetek”) filed suit against CoolIT Systems, Inc. and its
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`subsidiaries, and Corsair Gaming, Inc. and its U.S. subsidiaries (collectively “CoolIT”), asserting
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`that CoolIT infringed and continues to infringe five of its patents — i.e., the ‘601, ‘196, ‘362, ‘354
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`and ‘355 patents (collectively “CoolIT Patents”). CoolIT counterclaimed, alleging that Asetek
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`infringed four of CoolIT’s patents — i.e., the ‘330, ‘284, ‘266, and ‘567 patents. All of the
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`allegedly infringed patents relate to liquid cooling systems and methods for cooling heat-
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`generating electronic components. Both parties move for summary judgment. For the reasons
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`stated below, the Court GRANTS IN PART Asetek’s Motion for summary judgment for validity
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`of the ‘362 Patent and DENIES IN PART the Motion for noninfringement of the CoolIT Patents.
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`The Court DENIES IN PART CoolIT’s Motion for summary judgment for validity of the CoolIT
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`Patents and GRANTS IN PART the Motion for noninfringement of the ‘362 Patent.
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`Shenzhen Apaltek Co., Ltd. Ex. 1021, Page 1 of 41
`Shenzhen Apaltek Co., Ltd. v. Asetek Danmark A/S
`IPR2022-01317
`
`

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`Case 3:19-cv-00410-EMC Document 504 Filed 10/25/22 Page 2 of 41
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`A.
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`Factual & Procedural Background
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`On January 23, 2019, Asetek filed this lawsuit against CoolIT. See Docket No. 1.
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`Asetek’s patented combination of a pump, a dual-chambered reservoir, and a cold plate into a
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`single pump unit allows improved efficiency and compactness that enables the pump unit to be
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`installed directly on the CPU/GPU of a computer motherboard, graphics card, or a server, have
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`decreased risk of coolant leakage, is easy to install and use, is simpler, and less costly. Docket No.
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`228 (SAC) at 4. CoolIT counterclaimed on April 11, 2019, alleging that Asetek’s Gen 4, Gen 5,
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`Gen 6, and Gen 7 products infringe its own patents — i.e., the ‘330, ‘284, ‘266, and ‘567
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`patents—which claim a fluid heat exchanger. See Docket No. 23; Docket No. 333 (Fourth
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`Amended Counterclaim) at 14.
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`On December 22, 2020, this Court issued a minute order consolidating this case with the
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`related case of Asetek Danmark A/S v. Corsair Gaming, Inc. et al., Case No. 3:20-cv-06541-EMC,
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`which asserted many of the same patents as this case. See Docket No. 207 at 1; SAC at 2-4.
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`Therefore, the consolidated complaint (“SAC”) alleges infringement against CoolIT and Corsair, a
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`provider of gaming and streaming products. See SAC.
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`The ‘354 and ‘355 patents were later found unpatentable by the Patent Trial and Appeal
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`Board (“PTAB”), and Asetek appealed to the Federal Circuit. See Docket No. 380 (Order to Stay)
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`at 3, n.2; Docket No. 465 (Joint Case Management Statement) at 5. There is a pending inter
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`partes review (“IPR”) of the ‘601 and ‘196 patents. Joint Case Management Statement at 3. On
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`September 30, 2021 and October 12, 2021, the ‘567 patent and some claims of the ‘266 Patents
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`were found unpatentable by the PTAB and are subject to an appeal. Id. This Court granted a
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`partial stay of litigation on February 10, 2022 as to Asetek’s ‘354, ‘355, ‘601, and ‘196 patents
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`and CoolIT’s ‘567 patent, pending inter partes review of the ‘601 and ‘196 patents. See Order to
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`Stay at 1. The stay did not affect the litigation as to Asetek’s ‘362 Patent and CoolIT’s ‘330, ‘284,
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`and ‘266 Patents currently at issue as they are not presently subject to IPR. See id.
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`B.
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`The ‘362 Patent
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`The ‘362 Patent claims an invention over prior art liquid cooling systems that were often
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`bulky with many components which increased the total installation time, size, and risk of leakage.
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`Shenzhen Apaltek Co., Ltd. Ex. 1021, Page 2 of 41
`Shenzhen Apaltek Co., Ltd. v. Asetek Danmark A/S
`IPR2022-01317
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`

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`Case 3:19-cv-00410-EMC Document 504 Filed 10/25/22 Page 3 of 41
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`Docket No. 1-1 (the ‘362 Patent) at 1:41-49. Asetek overcame this problem with a small and
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`compact design that is more efficient, easy to use and implement, and requires a low level of
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`maintenance. Id. at 1:53-52.
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`Only claims 17 and 19 are at issue in this case:
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`17. A method of operating a liquid cooling system for an electronic
`component positioned on a motherboard of a computer system,
`comprising:
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`separably thermally coupling a heat exchanging interface of a
`reservoir with the electronic component positioned at a first location
`on the motherboard, the reservoir including an upper chamber
`and a lower chamber, the upper chamber and the lower chamber
`being separate chambers that are vertically spaced apart and
`separated by at least a horizontal wall, the upper chamber and the
`lower chamber being fluidly coupled by one or more passageways,
`at least one of the one or more passageways being positioned on the
`horizontal wall, the heat exchanging interface being removably
`coupled to the reservoir such that an inside surface of the heat
`exchanging interface is exposed to the lower chamber of the
`reservoir;
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`positioning a heat radiator at a second location horizontally spaced
`apart from the first location, the heat radiator and the reservoir being
`fluidly coupled together by tubing that extends from the first
`location to the second location;
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`activating a pump to a circulate a cooling liquid through the
`reservoir and the heat radiator, the pump including a motor and an
`impeller having curved blades, the impeller being positioned in the
`reservoir; and
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`activating a fan to direct air through the heat radiator, the fan being
`operated by a motor separate from the motor of the pump.
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`18. The method of claim 17, wherein activating the pump includes
`circulating the cooling liquid between the upper and the lower
`chambers of the reservoir.
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`19. The method of claim 18, wherein circulating the cooling liquid
`between the upper and the lower chambers includes passing the
`cooling liquid from the upper chamber to the lower chamber through
`a single passageway of the one or more passageways.
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`‘362 Patent, Claims 17-19.
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`Asetek’s claimed invention has several notable features, including “an impeller having a
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`plurality of curved blades” and a single-receptacle “reservoir including an upper and a lower
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`chamber” contained within it which circulates cooling liquid to keep computer chips from
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`Shenzhen Apaltek Co., Ltd. Ex. 1021, Page 3 of 41
`Shenzhen Apaltek Co., Ltd. v. Asetek Danmark A/S
`IPR2022-01317
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`

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`Case 3:19-cv-00410-EMC Document 504 Filed 10/25/22 Page 4 of 41
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`overheating. See id. These limitations overcame prior art. Docket No. 387-3, Ex. 2 (U.S. Patent
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`No. 7,971,632 file history) (adding “curved blades”); see also Asetek Danmark A/S v. CMI USA
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`Inc., 852 F.3d 1352, 1357–58 (Fed. Cir. 2017) (“[T]he jury found that the claimed liquid-cooling
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`systems differ from the prior art . . . because the ‘reservoir’ is a ‘single receptacle that is divided
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`into an upper chamber and a lower chamber.’”). The parties and this Court previously construed
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`“chamber” as “compartment(s) within the reservoir” and “reservoir” as a “single receptacle
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`defining a fluid flow path.” Docket No. 67 (Joint Claim Construction Statement) at 2-3; Docket
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`No. 237 at 3, Docket No. 258 (Claim Construction Order) at 5. Furthermore, the parties stipulated
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`to the following:
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`1. The claimed “reservoir” in Asetek’s invention is a single
`receptacle that is divided into an upper chamber and a lower
`chamber, with the upper chamber providing the pumping function
`and the lower chamber providing the thermal exchange function.
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`2. Prior art devices included a pump, a single-chamber reservoir (as
`that term was used in the prior art), and a cold plate as separate
`components that were connected using tubing or attached together
`with clips or screws or permanently coupled.
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`3. Asetek’s patent claims are directed to a liquid cooling device
`comprising a dual chambered reservoir bounded by a heat -
`exchanging interface.
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`Docket No. 342 (Estoppel Joint Statement) at 2.
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`1.
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`The CMI Case
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`Asetek previously asserted the ‘362 Patent (and related U.S. Patent No. 8,245,764) in an
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`unrelated action against Cooler Master (“CMI”). See Asetek Danmark A/S v. CMI USA, Inc., Case
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`No. 4:13-cv-00457-JST (hereinafter the “CMI case”). Represented by the same counsel as in the
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`current case, Asetek argued that the patents were not invalid over the prior art because the ‘362
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`Patent’s “reservoir” limitation required a single receptacle while prior art Ryu disclosed two
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`separate receptacles attached together. See CMI USA Inc., 852 F.3d at 1357–58. The jury agreed
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`with Asetek and found the ‘362 Patent valid over Ryu. Asetek Danmark A/S v. CMI USA, Inc.,
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`No. 13-CV-00457-JST, 2015 WL 5568360, at *2 (N.D. Cal. Sept. 22, 2015), aff’d in part,
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`remanded in part, 842 F.3d 1350 (Fed. Cir. 2016), opinion modified and superseded on reh’g, 852
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`F.3d 1352 (Fed. Cir. 2017), and aff’d in part, vacated in part, 852 F.3d 1352 (Fed. Cir. 2017).
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`Shenzhen Apaltek Co., Ltd. Ex. 1021, Page 4 of 41
`Shenzhen Apaltek Co., Ltd. v. Asetek Danmark A/S
`IPR2022-01317
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`

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`Case 3:19-cv-00410-EMC Document 504 Filed 10/25/22 Page 5 of 41
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`The jury found the following key differences between the ‘362 Patent and the prior art:
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`Rather than connecting together multiple separate components (as in
`the prior art), Asetek’s patented pump head design combines, into a
`single unit, a pump and the claimed “reservoir” that has, among
`other things, dual chambers and is bounded by a removable cold
`plate. Also, the claimed “reservoir” in Asetek’s invention is a single
`receptacle that is divided into an upper chamber and a lower
`chamber, with the upper chamber providing the pumping function
`and the lower chamber providing the thermal exchange function.
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`Id. The Federal Circuit affirmed. See CMI USA Inc., 852 F.3d at 1357–58.
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`Thereafter in a motion for contempt sanctions, Asetek argued that CMI’s product with two
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`separate and separable receptacles infringed the ‘362 Patent, claiming that the single receptacle
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`reservoir argument was not the “crucial distinction” from the prior art. See Asetek Danmark A/S v.
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`CoolIT Sys. Inc., No. 19-CV-00410-EMC, 2022 WL 74160, at *4 (N.D. Cal. Jan. 7, 2022). Upon
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`this attempt to argue that a device with multiple separable receptacles can satisfy the single
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`receptacle reservoir limitation in the CMI case, CoolIT sought leave to amend answers to add
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`collateral and judicial estoppel defenses in the current action. Id. This Court granted the
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`amendment and noted that “should Asetek now argue in the instant case that a reservoir
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`encompasses multiple receptacles like it did at the July 27, 2021 CMI USA Inc. hearing, this
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`argument would appear to be inconsistent with its previous argument in CMI USA Inc. that a
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`reservoir limitation requires a single receptacle.” Id. at *9.
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`C.
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`The ‘266, ‘330, and ‘284 Patents
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`Eleven claims across the ‘330, ‘284, and ‘266 Patents remain, each reciting or depending
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`on an independent claim that recites a “plate” and a “plurality of [fins/walls]” defining a
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`“corresponding plurality of microchannels”:
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`13. A fluid heat exchanger for cooling an electronic device, the heat
`exchanger comprising:
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` a
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` plurality of walls defining a corresponding plurality of
`microchannels, wherein each microchannel extends from a first end
`to a second end;
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` a
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` plate overlying the walls; and
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` a
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` seal, wherein the seal is a portion of the plate;
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`Shenzhen Apaltek Co., Ltd. Ex. 1021, Page 5 of 41
`Shenzhen Apaltek Co., Ltd. v. Asetek Danmark A/S
`IPR2022-01317
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`

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`Case 3:19-cv-00410-EMC Document 504 Filed 10/25/22 Page 6 of 41
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`a fluid inlet passage configured to deliver a heat-exchange fluid
`through one aperture in the plate to each microchannel at a position
`between the corresponding first end and the corresponding second
`end of the respective microchannel;
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` a
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` fluid outlet passage configured to receive the heat-exchange fluid
`from the first end and the second end of each microchannel, wherein
`the fluid outlet passage has a first outlet region positioned adjacent
`the microchannel first ends and a second outlet region positioned
`adjacent the microchannel second ends, wherein the seal separates
`the fluid inlet passage from the fluid outlet passage;
`
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`wherein a flow of the heat-exchange fluid through the one
`aperture in the plate bifurcates into two sub flows within
`each microchannel, wherein the first outlet region receives
`one of the two sub flows adjacent the microchannel first ends
`and the second outlet region receives the other of the two sub
`flows adjacent the microchannel second ends, wherein the
`two sub flows recombine in the outlet passage.
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`15. The fluid heat exchanger according to claim 12, wherein the
`plurality of microchannels comprises at least two opposed outer
`microchannels and a centrally located microchannel positioned
`between the opposed outer microchannels, wherein the first outlet
`region comprises an outlet opening from each microchannel,
`wherein the outlet opening from the centrally located microchannel
`is larger than the outlet opening from at least one of the outer
`microchannels.
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`See, e.g., Docket No. 27-4 (the ‘266 Patent), claims 13, 15; Docket Nos. 27-1 (the ‘330 Patent);
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`27-2 (the ‘284 Patent).
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`On October 12, 2021, the PTAB issued a Final Written Decision (“FWD”) finding some of
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`the asserted claims of CoolIT’s ‘266 Patent unpatentable and some of the asserted claims
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`patentable. See generally Docket No. 394-5 (‘266 FWD). This decision came more than a month
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`after close of fact discovery and after the parties exchanged initial expert reports on September 16,
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`2021. Representative claim 1, which was considered by the PTAB, read as follows:
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`1. A heat exchange system comprising:
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` a
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` housing defining a recessed region and an outlet port fluidly
`coupled with the recessed region;
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` a
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` heat sink having a plurality of juxtaposed fins defining a
`corresponding plurality of microchannels between adjacent fins;
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` a
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` manifold body at least partially defining an opening overlying the
`microchannels,
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`wherein the manifold body defines a pair of compliant surfaces
`flanking the opening,
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`Shenzhen Apaltek Co., Ltd. Ex. 1021, Page 6 of 41
`Shenzhen Apaltek Co., Ltd. v. Asetek Danmark A/S
`IPR2022-01317
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`

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`Case 3:19-cv-00410-EMC Document 504 Filed 10/25/22 Page 7 of 41
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`wherein the compliant surfaces urge against the fins,
`defining a flow boundary of the microchannels,
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`wherein the opening extends transversely relative to the fins
`and is configured to distribute a working fluid among the
`microchannels,
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`wherein the manifold body partially occupies the recessed
`region of the housing, leaving a pair of opposed portions of
`the recessed region unfilled, defining opposed exhaust
`manifold portions flanking the opening and being configured
`to receive the working fluid from the microchannels, and
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`wherein the housing further defines an outlet plenum
`configured to receive the working fluid from the exhaust
`manifold portions and to convey the working fluid to the
`outlet port.
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`‘266 Patent, claim 1. The PTAB found claims 1, 2, 4, 5, and 9 unpatentable and claims 13-15 not
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`unpatentable. ‘266 FWD at 47.
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`A.
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`Summary Judgment
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`II.
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`LEGAL STANDARD
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`Federal Rule of Civil Procedure 56 provides that a “court shall grant summary judgment
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`[to a moving party] if the movant shows that there is no genuine dispute as to any material fact and
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`the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). An issue of fact is
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`genuine only if there is sufficient evidence for a reasonable jury to find for the nonmoving party.
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`See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-49 (1986). “The mere existence of a
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`scintilla of evidence . . . will be insufficient; there must be evidence on which the jury could
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`reasonably find for the [nonmoving party].” Id. at 252. At the summary judgment stage, evidence
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`must be viewed in the light most favorable to the nonmoving party, and all justifiable inferences
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`are to be drawn in the nonmovant’s favor. See id. at 255.1 Where a defendant moves for summary
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`judgment based on a claim for which the plaintiff bears the burden of proof, the defendant need
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`only point to the plaintiff’s failure “to make a showing sufficient to establish the existence of an
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`1 Evidence may be presented in a form that is not admissible at trial so long as it could ultimately
`be capable of being put in admissible form. See Fed. R. Civ. P. 56(c)(2) (“A party may object that
`the material cited to support or dispute a fact cannot be presented in a form that would be
`admissible in evidence”); Fonseca v. Sysco Food Servs. of Ariz., Inc., 374 F.3d 840, 846 (9th Cir.
`2004) (“Even the declarations that do contain hearsay are admissible for summary judgment
`purposes because they ‘could be presented in an admissible form at trial’”).
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`Shenzhen Apaltek Co., Ltd. Ex. 1021, Page 7 of 41
`Shenzhen Apaltek Co., Ltd. v. Asetek Danmark A/S
`IPR2022-01317
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`

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`Case 3:19-cv-00410-EMC Document 504 Filed 10/25/22 Page 8 of 41
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`element essential to [the plaintiff’s] case.” Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
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`“Summary judgment is appropriate in a patent case, as in other cases, when there is no genuine
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`issue as to any material fact and the moving party is entitled to judgment as a matter of law.” Nike
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`Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed. Cir. 1994); Fed. R. Civ. P. 56(a).
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`B.
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`Invalidity
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`A patent is presumed valid. 35 U.S.C. § 282. “The burden of establishing invalidity of a
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`patent or any claim thereof rests on the party asserting such invalidity.” Id.; Microsoft Corp. v. I4I
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`Ltd. P’ship, 564 U.S. 91, 102 (2011). Patents may be invalid as anticipated by prior art under 35
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`U.S.C. § 102, invalid as obvious in light of prior art under 35 U.S.C. § 103, or invalid for lack of
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`written description under 35 U.S.C. § 112, among other sections. For summary judgment of
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`validity, the patentee must show that “the nonmoving party, who bears the burden of proof at trial,
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`failed to produce clear and convincing evidence on an essential element of a defense upon which a
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`reasonable jury could invalidate the patent.” Eli Lilly and Co. v. Barr Labs., Inc., 251 F.3d 955,
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`962 (Fed. Cir. 2001).
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`C.
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`Noninfringement
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`“To establish infringement, every limitation set forth in a patent claim must be found in an
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`accused product or process exactly or by a substantial equivalent” under the all-limitations rule.
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`Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991) (citation omitted);
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`Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1358 (Fed. Cir. 2005). Compliance
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`with the all-limitations rule is “a question of law.” Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595
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`F.3d 1340, 1355 (Fed. Cir. 2010). Therefore, summary judgment of noninfringement is
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`appropriate where there is no genuine issue of material fact that the accused product does not
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`include one or more limitations of the asserted patent claim either literally or under the doctrine of
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`equivalents (“DOE”). Nike, 43 F.3d at 647; Carnegie Mellon Univ. v. Hoffmann-LaRoche, Inc.,
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`55 F. Supp. 2d 1024, 1043-45, 1047-48 (N.D. Cal. 1999) (granting summary judgment of no
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`infringement because the accused products did not include every limitation of the asserted claims
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`literally or by an equivalent). “Whether an element of the accused device is equivalent to a claim
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`limitation depends on ‘whether the substitute element matches the function, way, and result of the
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`Shenzhen Apaltek Co., Ltd. Ex. 1021, Page 8 of 41
`Shenzhen Apaltek Co., Ltd. v. Asetek Danmark A/S
`IPR2022-01317
`
`

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`Case 3:19-cv-00410-EMC Document 504 Filed 10/25/22 Page 9 of 41
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`claimed element or whether the substitute element plays a role substantially different from the
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`claimed element.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1160 (Fed. Cir. 1998). “If a theory of
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`equivalence would vitiate a claim limitation, [] then there can be no infringement under the
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`doctrine of equivalents as a matter of law.” Id. That is, a doctrine of equivalents argument “fails
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`if it renders a claim limitation inconsequential or ineffective.” Akzo Nobel Coatings, Inc. v.
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`DowChem. Co., 811 F.3d 1334, 1342 (Fed. Cir. 2016). If there is no vitiation of claim limitations,
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`the issue of equivalency becomes a question of fact that depends on whether the patentee can
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`“establish equivalency on a limitation-by-limitation basis by particularized testimony and linking
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`argument as to the insubstantiality of the differences between the claimed invention and the
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`accused device or process.” Id. Because the plaintiff bears the burden of demonstrating the
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`existence of each limitation in the accused product, if there is a lack of evidence to show an
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`accused product contains all of the limitations of the patent claims, the defendant is entitled to
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`summary judgment. Novartis Corp. v. Ben Venue Labs, Inc., 271 F.3d 1043, 1046 (Fed. Cir.
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`2001) (“Summary judgment must be granted against a party who has failed to introduce evidence
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`sufficient to establish the existence of an essential element of that party’s case, on which the party
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`will bear the burden of proof at trial.”); accord Flexuspine, Inc. v. Globus Med., Inc., 879 F.3d
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`1369, 1377 (Fed. Cir. 2018).
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`A.
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`Plaintiff’s Motion for Partial Summary Judgment
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`III.
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`DISCUSSION
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`Asetek moves for partial summary judgment on two issues. First, Asetek argues that
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`relevant claims 17 and 19 of its ‘362 Patent are not invalid as obvious combinations because
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`CoolIT failed to present evidence on motivation to combine and reasonable expectation of success
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`in making those alleged combinations. Second, Asetek argues that its accused Generation 5, 6,
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`and 7 products do not infringe CoolIT’s ‘330, ‘284, and the ‘266 Patents under the proper
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`construction of “plate.”
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`Validity of Asetek’s ‘362 Patent
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`1.
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`A party seeking to invalidate a patent based on obviousness must
`prove by clear and convincing evidence that a skilled artisan would
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`Northern District of California
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`United States District Court
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`Shenzhen Apaltek Co., Ltd. Ex. 1021, Page 9 of 41
`Shenzhen Apaltek Co., Ltd. v. Asetek Danmark A/S
`IPR2022-01317
`
`

`

`Case 3:19-cv-00410-EMC Document 504 Filed 10/25/22 Page 10 of 41
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`
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`have been motivated to combine the teachings of the prior art
`references to achieve the claimed invention, and that the skilled
`artisan would have had a reasonable expectation of success in doing
`so. The presence or absence of a motivation to combine references
`in an obviousness determination is a pure question of fact.
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`Novartis Pharms. Corp. v. W.-Ward Pharms. Int’l Ltd., 923 F.3d 1051, 1059 (Fed. Cir. 2019)
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`(citations and quotation marks omitted); accord Asia Vital Components Co. v. Asetek Danmark
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`A/S, 377 F. Supp. 3d 990, 1011 (N.D. Cal. 2019) (“In order to survive summary judgment,
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`[CoolIT] must provide evidence that . . . clearly and convincingly shows ‘that a person of ordinary
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`skill in the art would have been motivated to combine the prior art in the way claimed by the ‘362
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`Patent claims at issue and had a reasonable expectation of success in doing so.’”) (citation
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`omitted)). Therefore, summary judgment of non-obviousness is appropriate where the party
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`challenging patent validity fails to show the existence of clear and convincing evidence supporting
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`the factual bases of the legal conclusion of obviousness. See, e.g., Eisai Co. v. Dr. Reddy’s Labs.,
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`Ltd., 533 F.3d 1353, 1356, 1358-59 (Fed. Cir. 2008) (affirming district court’s grant of summary
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`judgment of non-obviousness for failure to provide any reason why a skilled artisan would have
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`modified a known compound to arrive at the claimed invention); see also Mytee Products, Inc. v.
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`Harris Research, Inc., 439 Fed. Appx. 882, 886 (Fed. Cir. 2011) (affirming district court’s grant
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`of summary judgment of non-obviousness for failing to “provide any reason why a person of
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`ordinary skill would have been motivated to combine the references”).
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`According to CoolIT’s expert, Dr. Abraham, prior arts Wu, Ryu, Batchelder, and Yu
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`disclose liquid cooling inventions attempting to solve similar issues. See Docket No. 423-12, Ex.
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`11 (Abraham Invalidity Rep.) ¶¶ 695-97, 701-05. Therefore, a person ordinarily skilled in the art
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`(“POSITA”) would have been motivated to combine them to create an invention similar to the
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`‘362 Patent. See id. Asetek argues that CoolIT fails to identify evidence that clearly and
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`convincingly shows that a POSITA would have been motivated to combine the prior art and would
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`have had reasonable success in doing so. Docket No. 451 (Asetek Reply) at 13. CoolIT responds
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`that CoolIT’s expert explains the motivation to combine the references and the reasonable
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`expectation of success in combining them. According to CoolIT, whether the expert’s
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`explanations are sufficient is a question of fact that should be decided by the jury. Docket No. 423
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`Shenzhen Apaltek Co., Ltd. Ex. 1021, Page 10 of 41
`Shenzhen Apaltek Co., Ltd. v. Asetek Danmark A/S
`IPR2022-01317
`
`

`

`Case 3:19-cv-00410-EMC Document 504 Filed 10/25/22 Page 11 of 41
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`(Asetek Opp’n) at 2, 9, 25 (citing In re Stepan Co., 868 F.3d 1342, 1346 (Fed. Cir. 2017);
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`Cumberland Pharms. Inc. v. Mylan Institutional LLC, 846 F.3d 1213, 1222 (Fed. Cir. 2017)
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`(“Whether a person of ordinary skill in the art would have been motivated to modify or combine
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`teachings in the prior art, and whether he would have had a reasonable expectation of success, are
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`questions of fact.”)).
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`While it is true that motivation to combine is a question of fact, mere conclusory
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`arguments by an expert without factual support are not “sufficient for the question of obviousness
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`to reach the jury.” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327
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`(Fed. Cir. 2012) (requiring explanation of “how specific references could be combined . . . or how
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`any specific combination would operate or read on the asserted claims). In the expert report, Dr.
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`Abraham merely copies and pastes blocks of quotes from the relevant prior art that describes the
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`necessity to cool the heat generated from the CPU through an efficient water-cooled cooling
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`system. Asetek Opp’n at 24-25; Docket No. 423-12, Ex. 11 (Abraham Invalidity Rep.) ¶¶ 697,
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`701, 703, 705. He then explains that “because [the prior art] are attempting to solve similar issues
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`and each disclose or teach known techniques that can be used for one another, a POS[IT]A, when
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`reading them together, would have been motivated to combine … [prior art].” Id. ¶¶ 702, 704,
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`706.
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`[E]ach of the prior art references cited herein provide sufficient
`detail to enable a person of ordinary skill in the art to practice the
`asserted claims without undue experimentation, and when used in
`combination, would provide a POSA with a reasonable expectation
`that the combination would be successful. That is, even if there were
`a requirement that each prior art reference be enabling, those
`references would satisfy such a requirement.
`. . .
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`[E]ach of the … Shin, Ryu, … Wu, Yu, [and] Batchelder …
`references enables a POSA to build and practice the disclosed
`cooling devices for their intended purposes. Each reference
`provides detailed drawings, figures, and/or schematics showing the
`structures of the disclosed cooling devices and their arrangements
`when used with the heat generating components that the cooling
`devices are supposed to cool. Each reference also provides detailed
`descriptions and/or drawings, figures, and/or schematics showing
`the inner workings of the disclosed cooling devices and how the
`cooling fluid flows through them. The references also all disclose or
`teach conventional components that would have been well known by
`a POSA, who would have been able to put them together in a known
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`Shenzhen Apaltek Co., Ltd. Ex. 1021, Page 11 of 41
`Shenzhen Apaltek Co., Ltd. v. Asetek Danmark A/S
`IPR2022-01317
`
`

`

`Case 3:19-cv-00410-EMC Document 504 Filed 10/25/22 Page 12 of 41
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`way with predictable results and a reasonable expectation of
`success.
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`Id. ¶¶ 712-13.
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`Therefore, Dr. Abraham merely describes the problem each of the prior art attempted to
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`solve and that it was possible to combine them. However, “knowledge of a problem and
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`motivation to solve it are entirely different from motivation to combine particular references.” TQ
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`Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1360 (Fed. Cir. 2019); Securus Techs., Inc. v.
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`Glob. Tel*Link Corp., 701 F. App’x 971, 977 (Fed. Cir. 2017) (“Securus failed to explain how or
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`why the skilled artisan would combine the teachings . . . a broad characterization of Susen and
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`Gainsboro as both falling within the same alleged field of ‘telecommunications monitoring and
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`control,’ . . . is not enough for Securus to meet its burden of presenting a sufficient rationale to
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`support an obviousness conclusion.”). Like Securus, CoolIT’s “broad characterization” of the
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`prior art in describing similar issues in the field of cooling devices is insufficient to support
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`obviousness. Furthermore, merely stating that “one in the field … could combine the[]
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`references” is insufficient. The party asserting obviousness must provide a “meaningful
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`explanation for why one of ordinary skill in the art would be motivated to combine [the particular]
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`references at the time of this invention.” InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d
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`1327, 1353-54 (Fed. Cir. 2014). The failure “to explain why a person of ordinary skill in the art
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`would have combined elements from specific references in the way the claimed invention do