`
`
`
`
`
`
`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
`
`
`
`Patent No. 8,245,764
`Title: COOLING SYSTEM FOR A COMPUTER SYSTEM
`
`IPR Case No.: IPR2022-01317
`
`
`
`REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 8,245,764
`IPR2022-01317
`
`
`
`
`Petitioner’s Reply to POPR
`
`TABLE OF EXHIBITS
`
`Exhibit
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`U.S. Patent No. 8,245,764 (“’764 patent”)
`
`Inter Partes Reexamination Certificate, Reexamination Request
`95/002,386, U.S. Patent No. 8,245,764
`
`Declaration of Georgios Karamanis, Ph.D. Regarding U.S. Patent
`No. 8,245,764 (“Karamanis Dec.”)
`
`
`File history of U.S. Patent No. 8,245,764 (“’764-FH”)
`
`Defendants’ Reply Claim Construction Brief filed on April 12,
`2022 in Asetek Danmark A/S v. Shenzhen Apaltek Co., Ltd., Case
`No. 6:21-cv-501-ADA (W.D. Tex.) (Doc. 61)
`
`U.S. Patent Publication No. 2006/0185830 (“Duan”)
`
`U.S. Patent Publication No. 2006/0185829 (“Duan-I”)
`
`U.S. Patent No. 6,019,165 to Batchelder (“Batchelder”)
`
`Patent Owner’s Response, Paper No. 21 in IPR2020-00523 (Nov.
`30 2020) (“’354-POR”)
`
`U.S. Patent No. 10,078,354 (the “’354 patent”)
`
`Final Written Decision in IPR2020-00523, Paper No. 36 (Aug. 19,
`2021) (“’354-FWD”)
`
`File history of Reexamination Request 95/002,386, U.S. Patent
`No. 8,245,764 (“’764-Rexam-FH”)
`
`Institution Decision, Paper No. 10, IPR2021-01196 (Dec. 28,
`2021) (“’196-Institution”)
`
`Certified Translation of Japanese Unexamined Patent App. Pub.
`No. 2002-151638 to Takayuki Shin (“Shin”)
`
`ii
`
`
`
`U.S. Patent No. 8,245,764
`IPR2022-01317
`
`
`Exhibit
`
`
`
`Petitioner’s Reply to POPR
`
`Description
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`
`
`U.S. Patent Publication No. 2004/0052663 (“Laing”)
`
`U.S. Patent No. 10,078,355 to Eriksen (“the ’355 patent”)
`
`Final Written Decision, Paper 40 in IPR2020-00522 (Aug. 19,
`2021) (“FWD-522”)
`
`Petition for Inter Partes Review, Paper 2 in IPR2020-00522 (Feb.
`7, 2020) (“Petition-522”)
`
`Deposition of Marc Hodes, Ph.D. in IPR2020-00522 (Nov. 2,
`2020) (“Hodes Depo. Tr.”)
`
`Declaration of Marc Hodes, Ph.D. in IPR2020-00522 (Feb. 7,
`2020) (“Decl. of Dr. Hodes”)
`
`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, Asetek
`Danmark A/S v. Coolit Systems Inc., et al., Case No. 19-cv-00410-
`EMC, Docket No. 504 (Oct. 25, 2022) (“NDCA ruling”)
`
`iii
`
`
`
`Patent No. 8,245,764
`IPR2022-001317
`Pursuant to the Board’s authorization on December 1st, 2022, Petitioner
`
`Petition Requesting Inter Partes Review
`
`
`
`Shenzhen Apaltek Ltd. Co. (“Petitioner” or “Apaltek”) hereby replies to Patent
`
`Owner’s Preliminary Response (“POPR”) submitted by Asetek Danmark A/S
`
`(“Patent Owner” or “Asetek”).
`
`Duan (Ex-1006): Patent Owner is precluded from arguing that Duan “fails
`
`to disclose a single-receptacle ‘reservoir’” because the Board already ruled that
`
`Duan does. Patent Owner litigated the same issue before and never challenged the
`
`Board’s ruling in IPR2020-00522 regarding the related U.S. Patent No. 10,078,355
`
`(the “’355 patent”). The ’355 patent (Ex-1016) and U.S. Patent No. 8,245,764 (the
`
`“’764 patent”) at issue in this IPR are both continuations of U.S. App. No.
`
`11/919/974 and claim the same “reservoir,” which the Board ruled Duan discloses
`
`under the same construction. Compare See Ex-1016 (the ’355 patent) at 28:19-22
`
`(claim 1 reciting a “reservoir”); Ex-1017 (FWD-522) at 23 (“Petitioner has shown
`
`Duan anticipates claim 1 by a preponderance of the evidence.”). Patent Owner never
`
`challenged the Board’s such finding, which is now final. Thus, Patent Owner is
`
`precluded from relitigating the same issue in this IPR.
`
`“Collateral estoppel may bar litigation in cases with different but related
`
`patents when there are common issues.” ArcelorMittal Atlantique et Lorraine v. AK
`
`Steel Corp., 908 F.3d 1267, 1274 (Fed. Cir. 2018). Collateral estoppel, or issue
`
`preclusion, requires four factors: “(1) identity of the issues in a prior proceeding; (2)
`
`1
`
`
`
`U.S. Patent No. 8,245,764
`IPR2022-01317
`
`the issues were actually litigated; (3) the determination of the issues was necessary
`
`Petitioner’s Reply to POPR
`
`
`
`to the resulting judgment; and, (4) the party defending against preclusion had a full
`
`and fair opportunity to litigate the issues.” Jet, Inc. v. Sewage Aeration Sys., 223
`
`F.3d 1360, 1365-66 (Fed. Cir. 2000). Here, all four factors are met, as shown below.
`
`First, the issue—whether Duan discloses the claimed “reservoir”—is identical
`
`to that in IPR2020-00522. There, the term “reservoir” was construed as a “single
`
`receptacle defining a fluid flow path,” which is the same here. Compare POPR at 4
`
`(“The parties … construed “reservoir” as a ‘single receptacle defining a fluid flow
`
`path,’ ….”) with Ex-1018 at PDF p. 20 (“The parties have stipulated … to construe
`
`the term ‘reservoir[]’ … to mean ‘single receptacle defining a fluid flow path.’”).
`
`The petition in IPR2020-00522 mapped Duan’s accommodation chamber 21, cap 3,
`
`and cooling plate 1 to the “reservoir” limitation in the same way that the Petition for
`
`this IPR does. Compare Ex-1018 (Petition-522) at PDF pp. 24-28 (“Regarding the
`
`reservoir, Duan discloses a structure formed by an accommodation chamber 21, cap
`
`3, and cooling plate 1[.] … Duan’s accommodation chamber 21 (of which the
`
`interior is colored lime green), cap 3 (light blue), and cooling plate 1 (dark blue)
`
`form the physical boundaries of a housing th[at] discloses the claimed ‘reservoir.’”)
`
`with Petition (Paper 1) at 34-36 (“Accordingly, Duan teaches a reservoir
`
`(accommodation chamber 21, cap 3, and cooling plate 1) adapted to pass the cooling
`
`liquid therethrough.”). Thus, the issue is same.
`
`2
`
`
`
`U.S. Patent No. 8,245,764
`IPR2022-01317
`
`
`
`
`Petitioner’s Reply to POPR
`
`Second, Patent Owner actually litigated the same issue by deposing the IPR
`
`petitioner’s expert witness on it and then submitting the testimony to the Board. (See
`
`Ex-1019 (Hodes Depo. Tr.) (previously “Asetek Exhibit 2016” submitted in
`
`IPR2020-00522).) Courts consider a deposition of a witness as part of a litigation.
`
`See, e.g., Tavory v. NTP, Inc., 297 F. App’x 976, 978 (Fed. Cir. 2008) (“As part of
`
`that litigation, in 2002, Tavory was deposed as a witness for NTP.”); see also
`
`Grosdidier v. Chairman, Broad. Bd. of Governors, 774 F. Supp. 2d 76, 93 (D.D.C.
`
`2011) (“Dia was deposed as part of the EEOC litigation in February 2007”). When
`
`deposing the petitioner’s expert, Dr. Marc Hodes (who has a Ph.D. from MIT (Ex-
`
`1020 at ¶ 2)), Patent Owner challenged his opinion that Duan discloses a “reservoir”
`
`in the same way: by suggesting Duan’s pump chamber (accommodation chamber
`
`21) and thermal exchange chamber (cap 3) were “spatially separated and connected
`
`with a tubing.” Compare Ex-1019 at 40:22-46:13 with POPR at 9 (“Accommodation
`
`chamber 21 and cap 3 may be spatially separated and connected by tubing”). Dr.
`
`Hodes responded to this same challenge by pointing out that, in Duan’s Figure 8, the
`
`“[t]he hatch pattern [between the two chambers] doesn’t change,” thus indicating a
`
`“monolithic,” or single-receptacle, reservoir including both chambers:
`
`Q. The accommodation chamber 21 of Duan, which forms the pump
`chamber, and the region between cap 3 and cooling plate 1 of Duan,
`which, in your opinion, forms the thermal exchange chamber, are
`spatially separated and connected with a tubing, correct?
`
`
`3
`
`
`
`U.S. Patent No. 8,245,764
`IPR2022-01317
`
`
`
`
`Petitioner’s Reply to POPR
`
`A. … I wouldn't characterize it as tubing between the accommodation
`chamber/lower cover, because in [Duan’s] Figure 8 on page 48 [of my
`declaration, Ex-1020], you can see that the -- it’s hard to see, but the --
`I’m just making my screen bigger. The hatch pattern doesn’t change.
`So, there’s a solid wall that comes up from the cap [3] and
`eventually becomes part of the accommodation chamber [21].
`They’re monolithic. ….
`
`(Ex-1019 at 40:22-46:13 (emphasis added); compare Ex-1020 at 48 (annotated Fig.
`
`8 of Duan) (below-left) with Ex-1006 at PDF p. 9 (annotated Fig. 8 of Duan) (below-
`
`right) (green text, arrows and boxes added in this filing for both Figs.).)
`
`
`
`Same hatch pattern
`
`
`
`As shown above, Dr. Hodes explained that the corresponding hatch pattern (green
`
`boxes) of Duan’s thermal exchange chamber, i.e., cap 3 (blue box), extends
`
`upwardly to Duan’s pump chamber, i.e., accommodation chamber 21 in liquid
`
`4
`
`
`
`U.S. Patent No. 8,245,764
`IPR2022-01317
`
`driving module 2 (red box) without change, indicating that Duan’s thermal exchange
`
`Petitioner’s Reply to POPR
`
`
`
`chamber and pump chamber belong to the same “monolithic” single-receptacle
`
`“reservoir.”1 Thus, Patent Owner actually litigated the same issue.
`
`Third, the determination of the same issue was necessary to the Board’s final
`
`decision that Duan anticipates claim 1 of the ’355 patent. Claim 1 of the ’355 patent
`
`recites “reservoir,” so Duan’s disclosure of “reservoir” was necessary to the Board’s
`
`judgment that Duan anticipates claim 1. Compare Ex-1016 (the ’355 patent) at
`
`28:19-22 (claim 1 reciting a “reservoir”) with Ex-1017 (FWD-522) at 23 (“We have
`
`reviewed Petitioner’s contentions and for the reasons set forth by Petitioner,
`
`determine that Petitioner has shown Duan anticipates claim 1 by a preponderance of
`
`the evidence.”) (citation omitted).
`
`
`
` 1
`
` The NDCA ruling, in contrast, is that two originally separable receptacles (yellow
`and blue structures below, respectively) functioning independently are still two
`receptacles even after they are screwed together and connected by a tubing:
`
`(Ex-1021 (complete NDCA ruling) at 31-32, 35-38).)
`
`5
`
`
`
`
`
`U.S. Patent No. 8,245,764
`IPR2022-01317
`
`
`
`
`Petitioner’s Reply to POPR
`
`Finally, Patent Owner had a full and fair opportunity to litigate the issue. As
`
`explained above, Patent Owner actually litigated the identical issue by challenging
`
`Dr. Hodes’s opinion that Duan discloses a “reservoir.” Thus, Patent Owner had a
`
`full and fair opportunity to dispute Dr. Hodes’s opinion, and to further address
`
`Duan’s disclosure of “reservoir” in the subsequent patent owner’s response
`
`supported by Patent Owner’s own expert, in Patent Owner’s sur-reply, and at the
`
`oral argument (but did not). See Ex-1017 (FWD-522) at 23 (“Other than as
`
`discussed, Patent Owner does not challenge Petitioner’s contentions for anticipation
`
`of claim 1 by Duan. Thus, Patent Owner has waived any such challenge.”) (citations
`
`omitted). That is, Patent Owner had a full and fair opportunity to litigate Duan’s
`
`disclosure of “reservoir.” In sum, because all four factors for issue preclusion are
`
`met, Patent Owner is precluded from arguing the same issue again in this IPR. See
`
`Jet, 223 F.3d at 1365-66; see also Papst Licensing GMBH & Co. KG v. Samsung
`
`Elecs. Am., Inc., 924 F.3d 1243, 1252 (Fed. Cir. 2019) (“readily conclud[ing] that
`
`the conditions for issue preclusion [were] met” where a prior IPR decision “resolved
`
`against [patent owner] the claim-construction and [prior art]-teaching issues now
`
`before us, and those resolutions were essential to the Board’s decision”).
`
`*
`
`*
`
`*
`
`Patent Owner’s argument for a discretionary denial under §325(d) and the
`
`Advanced Bionics’ factors focuses exclusively “on Ground 5” and “the Batchelder
`
`6
`
`
`
`U.S. Patent No. 8,245,764
`IPR2022-01317
`
`reference” that do not even apply to Grounds 1-4. POPR at 11-12; Pet. at 3. Patent
`
`Petitioner’s Reply to POPR
`
`
`
`Owner does not dispute that “the same or substantially the same prior art or
`
`arguments” applied in Grounds 1-4 (Duan, Duan-I, and Laing) were not
`
`“previously . . . presented to the Office,” and thus § 325(d) does not apply here. And
`
`even improperly restricting the analysis to a single reference, a discretionary denial
`
`would still be inappropriate because the Examiner erred in evaluating Batchelder.
`
`Batchelder (Ex-1008): Petitioner respectfully submits a prior error by the
`
`Examiner in light of the subsequent jury verdict and finding by the Board that
`
`Batchelder discloses a “reservoir” including a “lower chamber” that “provid[es] the
`
`thermal exchange function” and is “vertically displaced” from the “upper chamber.”
`
`See Cellco v. Huawei, IPR2020-01117, Paper 10 at 11 (PTAB Feb. 3, 2021)
`
`(“Petitioner has sufficiently demonstrated that the Examiner erred in a manner
`
`material to the patentability of the claims by identifying specific teachings of the
`
`prior art that disclose the claim limitations that the Examiner overlooked or
`
`misapprehended.”). Specifically, a jury found the claimed “reservoir” in both the
`
`’764 patent at issue in this IPR and in a related U.S. Patent No. 8,240,362 (the “’362
`
`patent”) to be “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.” (Ex-2002 at 4.) In IPR2020-
`
`00523, the Board also found that claim 8 of U.S. Patent No. 10,078,354 (the “’354
`
`7
`
`
`
`U.S. Patent No. 8,245,764
`IPR2022-01317
`
`patent,” a descendant of the ’362 patent) claiming the same “reservoir” construed in
`
`Petitioner’s Reply to POPR
`
`
`
`the same way “reads on Batchelder’s disclosures” without modification. (Ex-1011
`
`(FWD-523) at 20; Ex-1010 (the ’354 patent) at 1:4-10.) Claim 8 of the ’354 patent
`
`recites: “a reservoir … including: an upper chamber and a lower chamber, wherein
`
`the upper chamber and the lower chamber are vertically displaced fluid-containing
`
`chambers ….” (Ex-1010 (the ’354 patent) at 19:43-58.) Combining the above,
`
`Batchelder’s disclosures read on a “reservoir” including a “lower chamber” that
`
`“provid[es] the thermal exchange function” and is “vertically displaced” from the
`
`“upper chamber.” That is, Batchelder discloses a “lower chamber” that is a “thermal
`
`exchange chamber” separate from the “upper chamber” that is a “pump chamber,”
`
`with the two chambers “vertically spaced apart” from each other, as claimed in the
`
`’764 patent. Thus, Petitioner respectfully submits the Examiner’s prior finding that
`
`Batchelder does not disclose a “thermal exchange chamber” separate and vertically
`
`spaced apart from the “pump chamber” is erroneous. (Ex-1004 at PDF p. 59.)
`
`Indeed, Batchelder does disclose or teach such a “thermal exchange chamber”
`
`separate from a “pump chamber” by the “metal sheet 206” and “vertically spaced
`
`apart” by at least the thickness of the “metal sheet 206” from the “pump chamber.”
`
`(See, e.g., Pet. at 101-103.)
`
`Prior Proceedings (POPR at 1-3): The cited proceedings are all irrelevant
`
`because they did not assert the same prior art combinations as those in this IPR.
`
`8
`
`
`
`U.S. Patent No. 8,245,764
`IPR2022-01317
`
`
`
`
`Date: December 23, 2022
`
`
`
`
`
`
`
`Petitioner’s Reply to POPR
`
`Respectfully submitted,
`GREENBERG TRAURIG, LLP
`By: /James L. Ryerson/
`
`
`James L. Ryerson (Reg. No. 64,617)
`Counsel for Petitioner
`
`
`
`9
`
`
`
`U.S. Patent No. 8,245,764
`IPR2022-01317
`
`
`
`
`Petitioner’s Reply to POPR
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that a true and correct copy of the preceding paper
`
`and cited exhibits were served on counsel of record for the ’764 patent by electronic
`
`mail. Both parties consented to electronic service prior to the filing of this Petition.
`
`Eric Rapiti
`Eric.Raciti@finnegan.com
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`Two Seaport Lane
`Boston, MA 02210-2001
`
`Robert F. McCauley
`robert.mccauley@finnegan.com
`Arpita Bhattacharyya
`arpita.bhattacharyya@finnegan.com
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`3300 Hillview Avenue
`Palo Alto, California 94304
`William Esper
`William.Esper@finnegan.com
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`1875 Explorer St Suite 800
`Reston, VA 20190
`
`
`
`
`
`Date: December 23, 2022
`
`
`
`Respectfully submitted,
`GREENBERG TRAURIG, LLP
`By: /James L. Ryerson/
`
`
`James L. Ryerson (Reg. No. 64,617)
`Counsel for Petitioner
`
`
`
`10
`
`
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
