Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 10
`Entered: December 28, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`COOLIT SYSTEMS, INC.,
`Petitioner,
`v.
`ASETEK DANMARK A/S,
`Patent Owner.
`
`IPR2021-01196
`Patent 10,599,196 B2
`
`
`
`
`
`
`
`
`
`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`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
`
`
`
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`IPR2021-01196
`Patent 10,599,196 B2
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`
`INTRODUCTION
`I.
`CoolIT Systems, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting institution of inter partes review of claims 1–19 of U.S. Patent
`No. 10,599,196 B2 (Ex. 1001, “the ’196 patent”). Asetek Danmark A/S
`(“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.). In
`the Preliminary Response, Patent Owner notes that it has disclaimed
`claims 3–19. Prelim. Resp. 3; Ex. 2008. Thus, claims 1 and 2 remain at issue
`(the “challenged claims”). We authorized Petitioner to file a Preliminary
`Reply (Paper 7, “Prelim. Reply”) and Patent Owner to file a Preliminary
`Sur-reply (Paper 8, “Prelim. Sur-reply”). 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
`The Petition identifies CoolIT Systems, Inc. as the real party-in-
`interest for Petitioner. Pet. 94. 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).
`
`
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`2
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`B. RELATED MATTERS
`The parties identify Asetek Danmark A/S v. CoolIT Systems, Inc., Case
`No. 3:19-cv-00410-EMC (N.D. Cal.) (filed on January 23, 2019, currently
`pending); Asetek Danmark A/S v. Corsair Gaming, Inc., Case No. 3:20-cv-
`06541-EMC (N.D. Cal.) (filed on September 17, 2021, currently pending);
`and Asetek Danmark A/S v. Shenzhen Apaltek Co., Case No. 6:21-cv-00501
`(W.D. Tex.) (filed on May 14, 2021, currently pending) as the related co-
`pending district-court litigations. Pet. 95; Paper 4, 1. Petitioner also
`identifies the following pending petitions for inter partes review involving
`patents that are related to the ’196 patent: IPR2020-00522 (No. 10,078,355
`B2, filed February 7, 2019); IPR2020-00523 (No. 10,078,354 B2, filed
`February 7, 2020); IPR2020-00524 (No. 9,933,681 B2, filed February 7,
`2020); and IPR2021-01195 (No. 10,613,601, filed concurrently). Pet. 95.
`
`C. THE ’196 PATENT
`The ’196 patent is titled “Cooling System for a Computer System.”
`Ex. 1001, code (54). It issued from an application filed May 29, 2018, as a
`continuation of application No. 15/626,706, which issued as Patent No.
`10,078,355 (“the ’355 patent”) and claims priority to a PCT application filed
`May 6, 2005, now abandoned. Id., code (63).
`The ’196 patent relates to a liquid-cooling system for a computer
`system. Id., 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 1:24–
`: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 1:38–
`3
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`:42. 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 1:43–:48. 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 is
`produced at low cost, enabling high production volumes. Id. at 1:56–:63.
`Another object of the invention is to create an arrangement which is easy-to-
`use and implement, used with existing CPU types and computer systems,
`and requires a low level of maintenance or no maintenance at all. Id. at
`1:63–:67.
`An illustrative embodiment of such a device is depicted in Figures 7
`and 8, reproduced below.
`
`
`
`4
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`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 16:18–:21. 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 15:50–:52.
`The reservoir has a tube inlet connection (not shown in Figure 8) through
`which the cooling liquid enters the reservoir. Id. at 15:52–:57. 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 15:55–:57.
`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 15:57–:59. 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 16:21–:23. Cooling liquid flows into and
`out of the reservoir and the heat radiator through connecting tubes 24 and
`25, respectively. Id. at 16:23–:25. Heat radiator 11 (shown in Figure 7) cools
`the cooling liquid before it passes back into the reservoir. Id. at 16:25–:32.
`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 16:51–:64.
`
`
`1 We agree with Petitioner that it appears that the specification transposes
`the description of Figure 7 with that of Figure 8. Pet. 5 n.1. 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.
`
`
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`5
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`
`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 10:19–:20, 21:52–:53.
`
`
`
`
`
`Figure 17 is an exploded perspective view of a preferred embodiment of a
`reservoir and a pump and the heat exchanging surface. Id. at 10:10–:12.
`
`
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`6
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`Figure 20 is a simplified schematic showing a cross-sectional view of the
`reservoir along plane 20-20 of Figure 17. Id. at 10:19–:20. Reservoir
`housing 14, as shown in Figures 17 and 20, is in the form of a double-sided
`chassis 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 21:53–:61. 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 22:1–:5. 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 22:14–:18.
`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. Id. at 23:22–:24. The
`chamber formed by impeller 33 and impeller cover 46A is described as
`“pump chamber 46” and has outlet 34. Id. at 23:24–:29.
`
`D. CHALLENGED CLAIMS
`Challenged claim 1 is independent; claim 1 is reproduced below:
`1. A liquid cooling system for cooling a heat-generating
`component of a computer, comprising:
`a reservoir configured to circulate a cooling liquid
`therethrough, the reservoir including:
`a pump chamber housing an impeller and defined at least in
`part by an impeller cover and a double-sided chassis, the
`impeller being positioned on one side of the chassis and
`a stator of the pump is positioned on an opposite side of
`the chassis, wherein the pump chamber includes:
`
`
`
`7
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`an inlet defined by the impeller cover positioned below a
`center of the impeller configured to enable a cooling
`liquid to flow into the center of the pump chamber;
`an outlet defined by the impeller cover positioned
`tangentially to the circumference of the impeller;
`a thermal exchange chamber configured to be disposed
`between the pump chamber and a heat-generating
`component when the system is installed on a heat-
`generating component;
`a heat-exchanging interface forming a boundary wall of the
`thermal exchange chamber, the heat-exchanging
`interface has an outer surface configured to be placed in
`thermal contact with a surface of a heat-generating
`component and an inner surface that defines a plurality
`of channels that direct the flow of a cooling liquid
`within the thermal exchange chamber;
`a heat radiator adapted to pass the cooling liquid
`therethrough, the heat radiator being fluidly coupled to
`the reservoir via fluid conduits, the heat radiator being
`configured to dissipate heat from the cooling liquid;
`a first passage fluidly coupling the pump chamber and the
`thermal exchange chamber, wherein the first passage is
`configured to direct the cooling liquid from the outlet of
`the pump chamber into the thermal exchange chamber
`between a first end and a second end of the thermal
`exchanger chamber.
`Id. at 28:22–:58. Claim 2 depends from claim 1.
`
`
`
`8
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`
`E. PRIOR ART AND ASSERTED GROUNDS
`Petitioner asserts the following ground of unpatentability:2
`Claims Challenged 35 U.S.C. § References/Basis
`1, 2
`103
`Duan3
`
`Pet. 3. Petitioner relies also on the Declaration of Himanshu Pokharna, Ph.D.
`Ex. 1003.
`
`II. ANALYSIS
`A. REAL PARTIES IN INTEREST
`Patent Owner argues that we should deny institution under 35 U.S.C.
`§ 312(a)(2) because the Petition does not name all real parties in interest
`(“RPI”). Prelim. Resp. 1–2. Section 312(a)(2) requires that the “petition
`identif[y] all real parties in interest.” 35 U.S.C. § 312(a)(2). This provision
`serves important notice functions to patent owners, to identify whether the
`petitioner is barred from bringing an IPR due to an RPI that is time-barred or
`otherwise estopped, and to the Board, to identify conflicts of interests that
`are not readily apparent from the identity of the petitioner. Patent Owner
`argues that Corsair Gaming, Inc. and Corsair Memory, Inc. (collectively,
`“Corsair”) are Petitioner CoolIT’s longstanding customers, co-defendants,
`and indemnitees in the district-court litigation.4 Prelim. Resp. 1–2, 16–18.
`Patent Owner asserts that this is not an inadvertent omission, but rather that
`CoolIT and Corsair are deliberately trying to hide Corsair’s status as an RPI,
`
`
`2 As noted above, Patent Owner disclaimed claims 3–19 (see Ex. 2008), so
`we consider only the sole ground addressing claims 1 or 2.
`3 US Pub. No. 2006/0185830, published Aug. 24, 2006 (Ex. 1004).
`4 The panel confirms that it does not have a conflict with Corsair Gaming,
`Inc., or Corsair Memory, Inc.
`
`
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`and thus trying to lay the groundwork for an argument that Corsair should
`not be subject to estoppel in the district-court action. Id. at 2. Petitioner
`asserts that the Petition correctly names all RPIs and further contends that
`there is no time bar implication and no evidence that Corsair is attempting to
`advance invalidity arguments beyond those put forward by Petitioner. Reply
`11–12.
`Under the Board’s precedential decision in SharkNinja Operating
`LLC v. iRobot Corp., when no time-bar or estoppel would apply once
`determining Petitioner did not name all RPIs, the Board need not address the
`issue. IPR2020-00734, Paper 11 (Oct. 6, 2020) (precedential); Lumentum
`Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 at 6
`(PTAB Mar. 4, 2016) (precedential) (“[O]ur jurisdiction to consider a
`petition does not require a ‘correct’ identification of all RPIs in a petition.”);
`see also Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927
`F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real
`parties in interest under § 312(a)(2), the Director can, and does, allow the
`petitioner to add a real party in interest.” (quoting Wi-Fi One, LLC v.
`Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc))). This
`approach also serves the interest of cost and efficiency.5
`Here, there is no allegation that the one-year time bar under 35 U.S.C.
`§ 315(b) would prevent Corsair from bringing an independent IPR. See
`Prelim. Sur-reply 5–6; Prelim. Resp. 1–2. Nor have the statutory estoppel
`provisions been implicated. The statutory estoppel provisions aim to protect
`patent owners from harassment via successive petitions by the same or
`
`
`5 See 37 C.F.R. § 42.1(b) (“This part shall be construed to secure the just,
`speedy, and inexpensive resolution of every proceeding.”).
`10
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`related parties, to prevent parties from having a “second bite at the apple,”
`and to protect the integrity of both the USPTO and federal courts by assuring
`that all issues are promptly raised and vetted. Cf. Fed. R. Civ. P. 17(a)
`(Advisory Committee Note to 1966 Amendment to Rule17(a)). Here, there
`is no evidence that Corsair is pursuing estopped invalidity grounds (see
`Prelim. Reply 11–12; Prelim. Sur-reply 6–7; Prelim. Resp. 1–2, 19–20), and
`if it were, that would be an issue for the district court to resolve. Thus, on
`this record, we will not consider whether Corsair must be named as an RPI
`in this proceeding.
`
`B. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a)
`BASED ON PARALLEL PROCEEDING
`Patent Owner contends we should exercise our discretion to deny the
`Petition under § 314(a), because of the copending district-court litigation
`involving the parties, which will be resolved before the Board’s final written
`decision. Prelim. Resp. 1. As guided by our precedent, we consider a number
`of factors when determining whether to deny institution based on the parallel
`district-court litigation. See Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential).
`
`1. Whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted
`Petitioner moved to stay the district-court case, but the district court
`denied the motion. Ex. 2014, 1. Petitioner argues that the court “effectively
`stayed almost all of the remaining case to wait for the IPR institution
`decision.” Reply 10. The court, however, set a new trial date for July 25,
`2022, adding two and a half months to the schedule, because of a criminal
`case on the docket taking priority. Ex. 1027, 7:25–10:2. Thus, the court did
`
`
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`not issue a stay, but directed the parties to meet and confer to stipulate a new
`schedule based on the July 25, 2022, trial date and continue with expert
`reports and depositions. Id. at 11:22–13:19; see Ex. 1024. Further, although
`the court denied a stay, it indicated that, “[i]f an IPR is instituted, then that's
`a different matter.” Ex. 1027, 4:11–:16. The court recognized that we have
`issued a Final Written Decision for Petitioner’s challenge to the ’355 patent,
`in which we determined all challenged claims unpatentable (see IPR2020-
`00522, Paper 36; Ex. 1027, 7:12–:14), and indicated that it would “sever and
`stay with respect to anything that’s been invalidated.” Ex. 1027, 40:3–:14.
`We will not speculate as to whether the court will be inclined to stay its case
`in light of this Institution Decision. We determine that this factor is neutral.
`
`2. Proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision
`The district-court litigation has a trial date of July 25, 2022, which is
`five months before the deadline for a final written decision in this
`proceeding (one year after this Institution Decision). Ex. 1024, 1. As
`discussed above and below, however, given the limited overlap between the
`issues in the district-court litigation and this proceeding, the time overlap has
`less significance. We determine that this factor weighs slightly in favor of
`exercising discretion to deny institution.
`
`3.
`
`Investment in the parallel proceeding by the court and the parties
`Petitioner contends that because the asserted claims in the ’196 patent
`almost completely overlap with the ’355 patent, which was also asserted in
`the litigation, the parties have not invested significant time and effort in the
`litigation that is unique to the ’196 patent. Pet. 88–89; Reply 7–8. Patent
`Owner, however, contends that at the time of the expected institution
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`decision in December 2021, the parties will have completed the bulk of the
`work in the district-court litigation, including completing claim construction
`specific to the ’196 patent, closing fact discovery, and serving opening
`expert reports. Prelim. Sur-reply 3–4. In addition, rebuttal expert reports will
`be served by December 8, 2021, and expert discovery will close soon after
`the Board’s institution decision. Prelim. Sur-reply 3–4. These facts counsel
`against institution.
`Petitioner filed the Petition here approximately five months after
`Patent Owner served its amended infringement contentions, first asserting
`the ’196 patent. See Pet. 88–89 (citing Ex. 1013, 3, 13); Fintiv,
`IPR2020-00019, Paper 11, 11 (“If the evidence shows that the petitioner
`filed the petition expeditiously, such as promptly after becoming aware of
`the claims being asserted, this fact has weighed against exercising the
`authority to deny institution under NHK.”). Thus, although the district-court
`proceeding has completed substantial fact discovery and some expert
`discovery, that is not a result of Petitioner’s delay. The litigation involves
`numerous other patents, so preparing a petition less than five months after
`asserted claims are identified was a diligent approach by Petitioner. Given
`that diligence and the work that remains to be done, we conclude this factor
`weighs slightly against exercising discretion to deny institution.
`
`4. Overlap between issues raised in the petition
`and in the parallel proceeding
`Following Patent Owner’s disclaimer, no claims stand challenged here
`but not at issue in the district court. Petitioner submits that, “[s]hould the
`IPR trial based on this Petition be instituted, Petitioner hereby stipulates that
`it will not pursue any invalidity grounds against the ’196 patent in the
`
`
`
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`district court that have been raised in this Petition.” Pet. at 89. Petitioner
`asserts that “if the IPR trial is instituted, there will be no overlap or concerns
`of duplicative efforts between the district court trial and this IPR
`proceeding.” Id. However, “Petitioner stipulates only that it will not pursue,
`in district court, the ‘same grounds’ presented in the Petition in this case.”
`Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC,
`Case IPR2019-01393, Paper 24, 12 n.5 (June 16, 2020). Petitioner did not
`stipulate that it would not pursue any ground raised or that could have been
`reasonably raised in an IPR.6 Id.
`Nonetheless, Petitioner’s stipulation mitigates to some degree the
`concerns of duplicative efforts between the district court and the Board, as
`well as concerns of potentially conflicting decisions. Id. at 12; Sand
`Revolution II, IPR2019-01393, Paper 24, 12. Thus, we find that this factor
`weighs somewhat against exercising discretion to deny institution.
`
`5. Whether the petitioner and the defendant in the parallel proceeding
`are the same party
`The parties in the district-court litigation and this proceeding are the
`same. Pet. 93; see Prelim. Resp. 10. Thus, this factor weighs in favor of
`exercising discretion to deny institution.
`
`6. Other circumstances that impact the Board’s exercise of discretion,
`including the merits
`Petitioner argues that it presents a substantively strong case, weighing
`against discretionary denial. Pet. 87–88. Patent Owner disagrees. Prelim.
`
`
`6 I.e., any ground that could be raised under §§ 102 or 103 on the basis of
`prior-art patents or printed publications.
`
`
`
`
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`Resp. 12–15. In this regard, Petitioner notes the similarity between claim 1
`of the ’196 patent and claim 1 of its parent, the ’355 patent. See Pet. 2–4
`(comparing claim 1 of the ’196 patent with claim 1 of the ’355 patent). And
`Petitioner points out that the ground here is based on the same prior-art of
`Duan as was at issue in IPR2020-00522. See id. at 2–3, 87–88. In that
`proceeding, we issued a Final Written Decision on August 19, 2021,
`determining all challenged claims unpatentable as anticipated by Duan
`(including ’355 patent, claim 1) or obvious over Duan in combination with
`other references. IPR2020-00522, Paper 40. Further, Petitioner points out
`that Patent Owner’s distinction here over the claims of the ’355 patent
`depends on an issue we resolved against Patent Owner in IPR2020-00524,
`involving Patent Owner’s related ’681 patent.7 Id. at 13 n.3
`In light of the similarity between the claims at issue here and those of
`the ’355 patent, the overlap in the asserted prior art, and our prior
`determination of unpatentability regarding the ’355 patent, we conclude that
`the merits of Petitioner’s case in this proceeding are substantively strong.
`Thus, this factor weighs strongly in favor of institution.
`
`7. Holistic assessment of factors and conclusion
`We consider the above factors and take “a holistic view of whether
`efficiency and integrity of the system are best served by denying or
`instituting review.” Fintiv, Paper 11 at 6. In weighing the totality of the
`evidence, we decide not to exercise discretion under § 314(a) to deny
`institution.
`
`
`7 US 9,733,681 B2.
`
`
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`C. LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner proposes that a person of ordinary skill
`
`would have earned at least a bachelor’s degree, such as a B.S.
`(bachelor of science), or equivalent thereof, in mechanical
`engineering or a closely related field and possessed at least
`three years of specialized experience in heat transfer devices for
`thermal management in electronics and computer systems, or in
`similar systems.
`Pet. 9 (citing Ex. 1003 ¶¶ 23–26). 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. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can
`reflect the appropriate level of ordinary skill in the art).
`
`D. 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) (2020). The parties stipulated to constructions of
`“reservoir,” “chamber,” “double-sided chassis,” “stator,” and “either a first
`end or a second end of the thermal exchange chamber” in district-court
`litigation. Ex. 1012, 2. Petitioner proposes additional constructions for “an
`inlet . . . positioned below a center of the impeller” and “wherein the first
`passage is configured to direct the cooling liquid from the outlet of the pump
`chamber into the thermal exchange chamber between a first end and a
`second end of the thermal exchange chamber.” Pet. 12–15.
`
`
`
`16
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`Patent Owner disputes the Petitioner’s construction of “wherein the
`first passage is configured to direct the cooling liquid from the outlet of the
`pump chamber into the thermal exchange chamber between a first end and a
`second end of the thermal exchange chamber.” See Prelim. Resp. 20–24. We
`discuss that language below, in context, and conclude that no other claim
`term identified by the parties requires express construction at this time. See
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017).
`
`E. OBVIOUSNESS OVER DUAN
`Petitioner relies primarily on Duan for most of the limitations of
`independent claims 1, 10, and 16. Pet. 20, 65. Patent Owner contends that
`Duan does not render independent claim 1 obvious “because Duan does not
`disclose cooling liquid entering into the thermal exchange chamber
`‘between’ the ends of the thermal exchange chamber.” Prelim. Resp. 20.
`Rather, Patent Owner argues that Duan has “end-to-end flow in the alleged
`thermal exchange chamber, which requires cooling liquid to enter at one end
`of the thermal exchange chamber and exit at the opposite end.” Id.
`
`
`
`17
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`Pet. 49 (annotating Ex. 1004, Fig. 8). Figure 8 depicts a sectional view of
`Duan’s cooling-plate module. Ex. 1004 ¶ 19. Petitioner’s annotations
`identify first liquid outlet 24 and second liquid outlet 31 of the thermal
`exchange chamber, carrying fluid into and out of, respectively, a chamber
`formed by cap 3 and cooling plate 1. Ex. 1004 ¶ 27, Fig. 8; see Pet. 49.
`According to Patent Owner, Duan’s outlet 24 “is located at the first
`end of the alleged thermal exchange chamber” rather than “between the first
`and second ends of the alleged thermal exchange chamber” as claimed in the
`’196 patent. Prelim. Resp. 20–21. Patent Owner’s contention turns on the
`construction of the phrase in claim 1, “wherein the first passage is
`configured to direct the cooling liquid from the outlet of the pump chamber
`18
`
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`into the thermal exchange chamber between a first end and a second end of
`the thermal exchange chamber.” Ex. 1001, 28:54–:58 (emphasis added).
`Patent Owner distinguishes claim 1 of the ’196 patent from similar
`claims of U.S. Patent No. 9,733,681 and U.S. Patent No. 10,078,355—and
`the Board’s decisions regarding those claims—because the Board never
`addressed the meaning, scope, or relevance of the limitation directing
`cooling liquid “into the thermal exchange chamber.” Prelim. Sur-reply 8.
`Rather, the Board considered the limitation directing cooling liquid “in the
`thermal exchange chamber.” Id. (emphasis added) (citing CoolIT Sys., Inc. v.
`Asetek Danmark A/S, IPR2020-00524, Paper 9, at 10–11, 26 (P.T.A.B. Aug.
`19, 2021)). Patent Owner further argues that disregarding the term “into” in
`the claim limitation ignores the positional requirement of the first passage
`relative to the thermal exchange chamber. Prelim. Resp. 23.
`
`Accepting Patent Owner’s construction, the limitation excludes a
`passage that enters the ends—or the sidewalls—of the thermal exchange
`chamber. Yet, Duan’s Figure 8 shows that first liquid outlet 24 (i.e., Duan’s
`first passage) is not at the end of the thermal exchange chamber but between
`the two ends or sidewalls. See Ex. 1004, Fig. 8. Indeed, there is a distinct
`portion of the chamber lateral to where the first passage connects to the
`chamber. Id. Figure 8 further shows that first liquid outlet 24 directs the
`cooling liquid from the outlet of the pump chamber into the thermal
`exchange chamber. See id. Therefore, even accepting Patent Owner’s
`construction of the claim limitation does not support denying institution.
`Patent Owner does not offer any further arguments against institution.
`We have reviewed Petitioner’s contentions regarding obviousness over
`Duan, Wu, Duan-1, and Admitted Prior Art, and conclude that Petitioner has
`
`
`
`19
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`shown a reasonable likelihood of prevailing with respect to obviousness of
`claims 1 and 2.
`
`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. We conclude that instituting review in this proceeding is
`in the interest of efficient administration of the Office and the integrity of the
`patent system. See 35 U.S.C. § 316(b). Accordingly, we institute an inter
`partes review of all challenged claims under all grounds set forth in the
`Petition.
`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 the ’196 patent is instituted on claims 1 and 2, and the ground identified
`above;
`FURTHER