\ Rotten oveny
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`USING. GOV
`ey
`571-272-7822
`
`Paper 6
`Date: August 28, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COOLER MASTER CO., LTD.,
`Petitioner,
`
`V.
`
`ASETEK DANMARK A/S,
`Patent Owner.
`
`IPR2023-00668
`Patent 8,245,764 B2
`
`Before WILLIAM V. SAINDON, KEVIN W. CHERRY,and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN,Administrative Patent Judge.
`
`DECISION
`Granting Institution of /nter Partes Review
`35 US.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(0)
`
`
`
`USING. GOV
`ey
`571-272-7822
`
`Paper 6
`Date: August 28, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COOLER MASTER CO., LTD.,
`Petitioner,
`
`V.
`
`ASETEK DANMARK A/S,
`Patent Owner.
`
`IPR2023-00668
`Patent 8,245,764 B2
`
`Before WILLIAM V. SAINDON, KEVIN W. CHERRY,and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN,Administrative Patent Judge.
`
`DECISION
`Granting Institution of /nter Partes Review
`35 US.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(0)
`
`
`
`IPR2023-00668
`Patent 8,245,764 B2
`
`I.
`
`INTRODUCTION
`
`Cooler Master Co., Ltd. (“Petitioner”) filed a Petition (Paper 3, “Pet.”’)
`
`to institute inter partes review of claims 1—30 of U.S. Patent
`
`No. 8,245,764 B2 (Ex. 1001, “the °764 patent’). Petitioner filed also a
`
`Motion for Joinder seeking to join Petitioner as a party to Shenzhen Apaltek
`
`Co., Lid. v. Asetek Danmark A/S, IPR2022-01317 (‘the Apaltek IPR”).
`
`Paper | (“Mot.’’). Asetek Danmark A/S (“Patent Owner’) did notfile a
`
`Preliminary Response or an opposition to the Motion. Pursuant to 35 U.S.C.
`
`§ 314 and 37 C.F.R. § 42.4(a), we have authority to determine whether to
`
`institute review.
`
`An inter partes review maynotbeinstituted unless “the information
`
`presented in the petition .. . and any response .
`
`.
`
`. showsthat there is a
`
`reasonablelikelihood that the petitioner would prevail with respectto at
`
`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the
`
`reasonsset forth below, we institute inter partes review and grant
`
`Petitioner’s Motion.
`
`A. REAL PARTIES IN INTEREST
`
`Petitioner identifies itself as the real party-in-interest. Pet. 146. Patent
`
`Owneridentifies Asetek Danmark A/S, Asetek USA,Inc., Asetek A/S, and
`
`Asetek Holdings, Inc. as the real parties-in-interest. Paper 5, 1 (Patent
`
`Owner’s Mandatory Notices).
`
`B.
`
`RELATED MATTERS
`
`Petitioner identifies the following related litigations: Cooler Master
`
`Co., Ltd. et al vy. Asetek Danmark A/S, No. 5:21-cv-04627-EJD (N.D. Cal.);
`
`and Asetek Danmark A/S y. Shenzhen Apaltek Co., No. 3:22-cv-06179-WHO
`
`
`
`IPR2023-00668
`Patent 8,245,764 B2
`
`(N.D. Cal.). Pet. 148. Patent Owneridentifies Cooler Master Co., Ltd. v.
`
`Asetek Danmark A/S, No. 4:21-cv-04627 (N.D. Cal.). Paper 5, 1.
`
`Petitioner identifies IPR2020-00522, IPR2020-00523, and IPR2020-
`
`00524, which were filed in February 2020, concluded in August 2021, and
`
`are currently on appeal to the U.S. Court of Appeals for the Federal Circuit.
`
`Pet. 148. Patent Owneridentifies [PR2022-01317, in which weinstituted
`
`review. Paper5, 1.
`
`C. THE’764 PATENT
`
`The °764 patentis titled “Cooling System for a Computer System.”
`
`Ex. 1001, Code (54). It issued from an application filed October 7, 2011, as
`
`a continuation of and claimspriority to a PCT application filed May 6, 2005.
`
`Id. at Code (63).
`
`The °764 patentrelates to a liquid-cooling system for a computer
`
`system. /d. at Code (57). The specification explains, at the time of the
`
`invention, air cooling arrangements were the most-used cooling system for
`
`cooling central processing units (CPUs) in computer systems. /d. at 1:17—31.
`
`An alternative design knownat the time of the invention wasto 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. /d. at 1:32-
`
`36. The specification contendsthat liquid cooling is generally moreefficient
`
`and quieter than air cooling, but that a liquid cooling design consists of
`
`“many components,” which increasesthe total installation time, size, and
`
`risk of leakage of the cooling liquid from the system. /d. at 1:37—47. Thus,
`
`one object of the invention is to provide a small and compact liquid-cooling
`
`solution that is more efficient than existing air-cooling arrangements and can
`
`be produced at low cost enabling high production volumes, be easy-to-use
`
`
`
`IPR2023-00668
`Patent 8,245,764 B2
`
`and implement, can be used with existing CPU types and computer systems,
`
`and requires a low level of maintenance or no maintenanceatall. /d. at
`
`1:51-60.
`
`An illustrative embodiment of such a device is depicted in Figures 7
`
`and 8, reproduced below.
`
`
`
`ennemtenseecrnererstiy
`
`
`
`FIG. 7
`
`Figure 7! 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. /d. at 15:61—16:7. Figure 8
`
`is a cut-out view into reservoir housing 14, when the reservoir, pump 21, and
`
`heat exchanging surface 4 are situated inside the reservoir. /d. at 15:28-30.
`
`' It appears the specification transposesthe description of Figure 7 with that
`of Figure 8. We refer to the description of “Figure 8”in the specification in
`our discussion of Figure 7, and werefer to the specification’s discussion of
`“Figure 7” in our discussion of Figure 8.
`
`4
`
`
`
`IPR2023-00668
`Patent 8,245,764 B2
`
`The reservoir has a tube inlet connection (not shown in Figure 8) through
`
`which the cooling liquid enters the reservoir. /d. at 15:30—32. From the tube
`
`inlet connection, the cooling liquid flows through the reservoir passing heat
`
`exchanging surface 4 and enters the inlet of the pump. /d. at 15:32—35. After
`
`the cooling liquid flows through the pump,the cooling liquid passes out of
`
`the outlet of the pump and further out through tube outlet connection 16. /d.
`
`at 15:35—37. As shownin Figure 7, tube inlet connection and tube outlet
`
`connection 16 are connected to heat radiator 11 by meansof connecting
`
`tubes 24 and 25. /d. at 15:64—67. Cooling liquid flowsinto and out of the
`
`reservoir and the heat radiator through connecting tubes 24 and 25,
`
`respectively. /d. Heat radiator 11 (shown in Figure 7) cools the cooling
`
`liquid before it passes back into the reservoir. /d. at 15:67—16:4.
`
`The reservoir may be provided with channels or segments for
`
`establishing a certain flow-path for the cooling liquid through the reservoir
`
`to prevent the cooling liquid passing the reservoir too quickly to take up a
`
`sufficient amount of heat from the heat exchanging surface. /d. at 16:25—42.
`
`Figures 17 and 20 show theinternal structures of a preferred
`
`embodiment of the reservoir according to the invention and are reproduced
`
`below. /d. at 21:12-22:59.
`
`
`
`IPR2023-00668
`Patent 8,245,764 B2
`
`FIG. 77
`
`FIG. 20
`
`Figure 17 is an exploded perspective view of a preferred embodimentof a
`
`reservoir and a pump and the heat exchanging surface. /d. at 9:62-64.
`
`Figure 20 is a simplified schematic showing a cross-sectional view of the
`
`reservoir along plane 20-20 of Figure 17. /d. at 10:4—5. Reservoir housing 14
`
`as shown in Figures 17 and 201s in the form of a double-sided chassis
`
`
`
`IPR2023-00668
`Patent 8,245,764 B2
`
`having a substantially conical, circular configuration with stiffening ribs 36
`
`extending axially along the exterior of the reservoir housing and configured
`
`to mount an electrical motor. /d. at 21:14—21. Reservoir housing 14 has
`
`recess 40 intended for accommodating stator 37 of an electrical motor
`
`driving impellor 33 of the pump, whichis attached to shaft 38 of rotor 39 of
`
`the electric motor. /d. at 21:28—40. The specification explains that “a liquid-
`
`proof division” is made between rotor 39 of the motor, which is submerged
`
`in the cooling liquid, and the stator 37 of the pump. /d. at 21:41-51.
`
`The enclosed space between impeller 33 and heating exchanging
`
`interface 4 is divided into two separate chambers by impeller cover 46A and
`
`intermediate member 47, as shownin Figure 20. The chamber formed by
`
`impeller 33 and impeller cover 46A is described as “pump chamber 46” and
`
`has outlet 34. /d. at 22:26—-53.
`
`D.
`
`CHALLENGED CLAIMS
`
`Challenged claim 1 is independent and is reproduced below:
`
`1. Acooling system for a heat-generating component,
`comprising:
`
`a double-sided chassis adapted to mount a pump configured
`to circulate a cooling liquid, the pump comprising a
`stator and an impeller, the impeller being positioned on
`the underside of the chassis and the stator being
`positioned on the upperside of the chassis and isolated
`from the cooling liquid;
`
`a reservoir adapted to pass the cooling liquid therethrough,
`the reservoir including:
`
`a pump chamberincluding the impeller and formed
`below the chassis, the pump chamberbeing defined
`by at least an impeller cover having one or more
`passages for the cooling liquid to pass through;
`
`
`
`IPR2023-00668
`Patent 8,245,764 B2
`
`a thermal exchange chamber formed below the pump
`chamberand vertically spaced apart from the pump
`chamber, the pump chamberand the thermal
`exchange chamber being separate chambers that are
`fluidly coupled together by the one or more passages;
`and
`
`a heat-exchanging interface, the heat-exchanging
`interface forming a boundary wall of the thermal
`exchange chamber, and configured to be placed in
`thermal contact with a surface of the heat-generating
`component; and
`
`a heat radiator fluidly coupled to the reservoir and
`configured to dissipate heat from the cooling liquid.
`
`Id. at 27:39-64. Claims 10 and 15 are also independentandrecite generally
`
`similar limitations. See id. at 28:27-43, 28:57-29:13. The other challenged
`
`claims depend,directly or indirectly, from claim 1, 10, or 15. /d. at 27:66—
`
`30:12; Ex. 1002, 1:18-2:35.
`
`E.
`
`PRIOR ART AND ASSERTED GROUNDS
`
`Petitioner asserts the following ground of unpatentability:
`
`
`
`1-19, 21-27, 29,30|103 Duan
`
`
`
`
`
`
`Duan, Duan-I, Laing
`
` 103 Duan, Laing*
`
`1-19, 21-27, 29,30|103 Duan, Duan-P?
`
`
`
`Batchelder’, Duan
`
`7 US Pub. No. 2006/0185830 Al, pub. Aug. 24, 2006 (Ex. 1006).
`3 US Pub. No. 2006/0185829 A1, pub. Aug. 24, 2006 (Ex. 1007).
`+ US Pub. No. 2004/0052663 A1, pub. Mar. 18, 2004 (Ex. 1015).
`> US Pat. No. 6,019,165, iss. Feb. 1, 2000 (Ex. 1008).
`
`8
`
`
`
`IPR2023-00668
`Patent 8,245,764 B2
`
` Batchelder, Duan, Laing
`
`Pet. 3. Petitioner also relies on the Declaration of Georgios Karamanis,
`
`Ph.D. Ex. 1003.
`
`II. ANALYSIS
`
`To join a petitioner to an instituted proceeding, the Board first
`
`determines whether the Petition “warrants” institution under 35 U.S.C.
`
`§ 314.35 U.S.C. § 315(c); see Facebook, Inc. Windy City Innovations, LLC,
`
`973 F.3d 1321, 1332 (Fed. Cir. 2020).
`
`The Board next determines whether to exercise “discretion to decide
`
`whetherto ‘join as a party’ the joinder applicant,” whois the Petitioner in
`
`this proceeding. Windy City, 973 F.3d at 1332. As moving party, Petitioner
`
`bears the burden of proving thatit is entitled to the requested relief.
`
`37 C.F.R. § 42.20(c). A motion for joinder should (1) set forth the reasons
`
`joinder is appropriate; (2) identify any new groundsof unpatentability
`
`asserted in the petition; and (3) explain what impact (if any) joinder would
`
`have on the trial schedule for the existing review. See Kyocera Corp.v.
`
`SoftView, LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013). In
`
`addition, a motion for joinder must be filed “no later than one month after
`
`the institution date of any inter partes review for which joinder is requested.”
`
`37 CER. § 42.122(b).
`
`A.
`
`INSTITUTION OF INTER PARTES REVIEW
`
`Petitioner represents that the “Petition is essentially a copy of the
`
`petition filed in” the Apaltek IPR and that the Petition “includesidentical
`
`grounds.” Mot. 1. Our independent review of the Petition and the
`
`
`
`IPR2023-00668
`Patent 8,245,764 B2
`
`Apaltek IPR petition confirms Petitioner’s representations, and that the
`
`Petitions in the two proceedingsare substantially the same.
`
`Having already considered the merits of those challenges and the
`
`evidence in the Apaltek IPR and having determinedthat the threshold for
`
`institution of inter partes review has been met, we determinethat the Petition
`
`here also presents a reasonable likelihood of prevailing on the challenges to
`
`at least one claim. Therefore, for the same reasonsstated in our Decision to
`
`Institute in the Apaltek IPR, we institute inter partes review in this
`
`proceeding on the grounds presented in the Petition. See IPR2022-01317,
`
`Paper 7.
`
`B. MOTION FOR JOINDER
`
`Petitioner timely filed its Motion for Joinder on March 6, 2023, which
`
`was nolater than one monthafter the institution of the Apaltek IPR on
`
`February 6, 2023. See 37 C.F.R. § 42.122(b).
`
`Wedetermine that Petitioner has met its burden of showingthat
`
`joinder is appropriate because,as set forth above, the Petition is substantially
`
`identical to the petition in the Apaltek IPR, contains the same grounds based
`
`on the sameevidence, andrelies on the same declaration of Georgios
`
`Karamanis, Ph.D. (Ex. 1003). Petitioner also represents that joinder will not
`
`impact the Apaltek IPR schedule. Mot. 3 (“Petitioner agrees to the deadlines
`
`set forth in the Apaltek IPR Scheduling Order”).
`
`Additionally, Petitioner represents that it is willing to accept a limited,
`
`“understudy role” to ShenZhen Apaltek Co., Ltd. (the original petitioner in
`
`the Apaltek IPR) “as long as Apaltek remainsa party to the Apaltek IPR.”
`
`Id. at 4. Specifically, Petitioner represents that in its understudyrole, it
`
`agrees that the following conditions will apply:
`
`10
`
`
`
`IPR2023-00668
`Patent 8,245,764 B2
`
`(a) Petitioner will not make any substantive filings and shall be
`boundbythe filings of Apaltek, unless a filing concerns
`termination and settlement, or issues solely involving
`Petitioner.
`
`(b) Petitioner will not present any argument or make any
`presentation at oral hearing unless an issue solely involves
`Petitioner, or when addressing Board-approved motions that do
`not affect Apaltek.
`
`(c) Petitioner will not seek to cross-examine or defend the
`cross-examination of any witness, unless the topic of cross-
`examination concernsissues solely involving Petitioner, within
`the time permitted by Apaltek alone and with Apaltek’s
`agreement.
`
`(d) Petitioner will not seek discovery from Patent Owner,
`unless issues arise that are unique to, and only applicableto,
`Petitioner.
`
`(e) Petitioner will not rely on expert testimony beyondthat
`submitted by Apaltek unless and until Apaltek is terminated as
`party to the proceedings, prior to any necessary depositions.
`Petitioner’s expert, Dr. Karamanis, is the same expert used in
`the Apaltek IPR, and his expert declaration submitted herein is
`substantively identical to the declaration he submitted in the
`Apaltek IPR.
`
`Id. at 4-5. Patent Owner hasnot filed an opposition to Petitioner’s Motion.
`
`Thus, Petitioner’s Motion stands unopposed.
`
`Under these circumstances, we agree with Petitioner that joinderis
`
`appropriate and will not unduly impact the ongoingtrial in the Apaltek IPR.
`
`Welimit Petitioner’s participation in the Apaltek IPR proceeding, as
`
`follows: (1) Apaltek alone is responsible for all petitioner filings in the
`
`proceeding until such time thatit is no longer an entity in the proceeding,
`
`and (2) Petitioner is bound byall filings by Apaltek in the Apaltek IPR
`
`11
`
`
`
`IPR2023-00668
`Patent 8,245,764 B2
`
`proceeding, except for (a) filings regarding termination or settlement, and
`
`(b) filings where Petitioner receives permission to file an independent paper.
`
`Petitioner must obtain prior Board authorization to file any paper or take any
`
`action on its own in the proceeding, so long as Apaltek remainsas a non-
`
`terminated petitioner in the proceeding. This arrangement promotes the just
`
`and efficient administration of the ongoingtrial in the Apaltek IPR and
`
`protects the interests of Apaltek as original petitioner in IPR2022-01317 and
`
`of Patent Owner.
`
`II. CONCLUSION
`
`For the reasons discussed above, weinstitute inter partes review of
`
`the challenged claims of the ’764 patent based on the asserted
`
`unpatentability grounds. We grant Petitioner’s Motion for Joinder and join
`
`Petitioner to IPR2022-01317, with the limitations set forth above.
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDEREDthat, pursuant to 35 U.S.C. § 314(a), inter partes review
`
`of claims 1—30 of the ’764 patentis instituted on the grounds set forth in the
`
`Petition;
`
`FURTHER ORDEREDthat, pursuant to 35 U.S.C. § 315(c) and
`
`37 C.F.R. § 42.122, Petitioner’s Motion for Joinder is granted, and
`
`Petitioner is joined as a petitioner to IPR2022-01317, subject to the above-
`
`described limitations on Petitioner’s participation;
`
`FURTHER ORDEREDthatthe asserted grounds of unpatentability on
`
`which the Board instituted inter partes review in IPR2022-01317 are
`
`unchanged and remain the only instituted grounds;
`
`12
`
`
`
`IPR2023-00668
`Patent 8,245,764 B2
`
`FURTHER ORDEREDthat the Scheduling Order entered in
`
`IPR2022-01317, including any schedule changes agreed by the parties in
`
`that proceeding pursuantto the Scheduling Order, shall govern the trial
`
`schedule in IPR2022-01317;
`
`FURTHER ORDEREDthat the case caption in IPR2022-01317 forall
`
`further submissionsshall be modified to add Cooler Master Co., Ltd. as a
`
`named Petitioner, and to indicate by footnote the joinder of Petitioner to that
`
`proceeding, as indicated in the attached sample case caption;
`
`FURTHER ORDEREDthat a copy of this Decision be entered into
`
`the record of IPR2022-01317.
`
`13
`
`
`
`IPR2023-00668
`Patent 8,245,764 B2
`
`FOR PETITIONER:
`
`James Ryerson
`Heath Briggs
`Kyle D. Chen
`GREENBERG TRAURIG, LLP
`ryersonj@gtlaw.com
`briggsh@gtlaw.com
`kchen@gtlaw.com
`
`FOR PATENT OWNER:
`
`Eric P. Raciti
`Arpita Bhattacharyya
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`eric.raciti@finnegan.com
`arpita.bhattacharyya@finnegan.com
`regional-desk@finnegan.com
`
`14
`
`
`
`IPR2023-00668
`Patent 8,245,764 B2
`
`[Sample Case Caption]
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SHENZHEN APALTEK CO., LTD. and
`COOLER MASTER CoO., LTD.,
`Petitioner,
`
`V.
`
`ASETEK DANMARK A/S,
`Patent Owner.
`
`IPR2022-01317*
`Patent 8,245,764 B2
`
`* Cooler Master Co., Ltd., which filed a petition in IPR2023-00668, has been
`joined as a party to this proceeding.
`
`15
`
`
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