Trials@uspto.gov
`571-272-7822
`
`Paper No.10
`Entered: December28, 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 ChiefAdministrative Patent Judge,
`KEVIN W. CHERRY,and JASON W. MELVIN,
`Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 US.C. § 314
`
`
`571-272-7822
`
`Paper No.10
`Entered: December28, 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 ChiefAdministrative Patent Judge,
`KEVIN W. CHERRY,and JASON W. MELVIN,
`Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 US.C. § 314
`
`
`
`IPR2021-01196
`Patent 10,599,196 B2
`
`I.
`
`INTRODUCTION
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`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
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`(‘Patent Owner’) filed a Preliminary Response (Paper6, “Prelim. Resp.). In
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`the Preliminary Response, Patent Ownernotesthat it has disclaimed
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`claims 3-19. Prelim. Resp. 3; Ex. 2008. Thus, claims 1 and 2 remainat issue
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`(the “challenged claims”). We authorized Petitionerto file a Preliminary
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`Reply (Paper 7, “Prelim. Reply”) and Patent Ownertofile a Preliminary
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`Sur-reply (Paper8, “Prelim. Sur-reply”). Pursuant to 35 U.S.C. § 314 and
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`37 C.F.R. § 42.4(a), we have authority to determine whetherto institute
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`review.
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`An inter partes review may notbeinstituted unless “the information
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`presented in the petition . .. and any response .
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`.
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`. showsthat there is a
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`reasonable likelihood that the petitioner would prevail with respect to at
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`least 1 of the claims challengedin the petition.” 35 U.S.C. § 314(a). For the
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`reasons set forth below, we concludethat Petitioner has showna reasonable
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`likelihood it will prevail in establishing the unpatentability of at least one
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`challenged claim, and weinstitute inter partes review.
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`A. REAL PARTIES IN INTEREST
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`The Petition identifies CoolIT Systems, Inc.as the real party-in-
`
`interest for Petitioner. Pet. 94. Patent Owneridentifies Asetek Danmark A/S,
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`Asetek USA,Inc., Asetek A/S, and Asetek Holdings,Inc. as the real parties-.
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`in-interest for Patent Owner. Paper 4, 1 (Patent Owner’s Mandatory
`
`Notices).
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`
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`IPR2021-01196
`Patent 10,599,196 B2
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`B.
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`RELATED MATTERS
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`The parties identify Asetek Danmark A/S v. CoolIT Systems, Inc., Case
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`No. 3:19-cv-00410-EMC (N.D.Cal.) (filed on January 23, 2019, currently
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`pending); Asetek Danmark A/S v. Corsair Gaming, Inc., Case No. 3:20-cv-
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`06541-EMC (N.D. Cal.) (filed on September 17, 2021, currently pending);
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`and Asetek Danmark A/S v. Shenzhen Apaltek Co., Case No. 6:21-cv-00501
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`(W.D. Tex.) (filed on May 14, 2021, currently pending)as the related co-
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`pending district-court litigations. Pet. 95; Paper 4, 1. Petitioner also
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`identifies the following pending petitions for inter partes review involving
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`patents that are related to the ’196 patent: IPR2020-00522 (No. 10,078,355
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`B2, filed February 7, 2019); IPR2020-00523 (No. 10,078,354 B2,filed
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`February 7, 2020); IPR2020-00524 (No. 9,933,681 B2, filed February 7,
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`2020); and IPR2021-01195 (No. 10,613,601, filed concurrently). Pet. 95.
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`C. THE’196 PATENT
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`The ’196 patentis titled “Cooling System for a Computer System.”
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`Ex. 1001, code (54). It issued from an application filed May 29, 2018, as a
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`continuation of application No. 15/626,706, which issued as Patent No.
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`10,078,355 (“the ’355 patent’’) and claimspriority to a PCT application filed
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`May6, 2005, now abandoned.Id., code (63).
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`The ’196 patentrelates to a liquid-cooling system for a computer
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`system. Id., code (57). The specification explains, at the time of the
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`invention, air cooling arrangements were the most-used cooling system for
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`cooling central processing units (CPUs) in computer systems. Jd. at 1:24—
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`331. An alternative design knownat the time of the invention wasto use a
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`cooling liquid circulating inside a closed system by means of a pumping unit
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`with a heat exchanger past which the cooling liquid circulates. /d. at 1:38-
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`3
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`IPR2021-01196
`Patent 10,599,196 B2
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`42. The specification contendsthat liquid cooling is generally more efficient
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`and quieter than air cooling, but that a liquid cooling design consists of
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`“many components,” whichincreasesthetotal installation time, size, and
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`risk of leakage of the cooling liquid from the system. Jd. at 1:43-:48. Thus,
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`one object of the invention is to provide a small and compact liquid-cooling
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`solution that is more efficient than existing air-cooling arrangements andis
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`produced at low cost, enabling high production volumes. Jd. at 1:56-:63.
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`Another object of the invention is to create an arrangement whichis easy-to-
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`use and implement, used with existing CPU types and computer systems,
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`and requires a low level of maintenance or no maintenanceat all. Jd. at
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`1:63—:67.
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`Anillustrative embodiment of such a device is depicted in Figures 7
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`and 8, reproduced below.
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`
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`IPR2021-01196
`Patent 10,599,196 B2
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`Figure 7! is a perspective view of the cooling system showingreservoir
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`housing 14 with the heat exchanging surface 5 (shownin Figure 8) and the
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`pump 21 (shown in Figure 8) inside the reservoir. Jd. at 16:18—:21. Figure 8
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`is a cut-out view into reservoir housing 14, whenthe reservoir, pump 21, and
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`heat exchanging surface 4 are situated inside the reservoir. Jd. at 15:50-:52.
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`The reservoir has a tube inlet connection (not shown in Figure 8) through
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`whichthe cooling liquid enters the reservoir. Jd. at 15:52—:57. From the tube
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`inlet connection, the cooling liquid flows through the reservoir passing heat
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`exchanging surface 4 and enters the inlet of the pump. /d. at 15:55-:57.
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`After the cooling liquid flows through the pump, the cooling liquid passes
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`out of the outlet of the pump and further out through tube outlet connection
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`16. Id. at 15:57—:59. As shownin Figure 7, tube inlet connection and tube
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`outlet connection 16 are connected to heat radiator 11 by means of
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`connecting tubes 24 and 25. /d. at 16:21-—:23. Cooling liquid flows into and
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`out of the reservoir and the heat radiator through connecting tubes 24 and
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`25, respectively. Jd. at 16:23-:25. Heat radiator 11 (shown in Figure 7) cools
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`the cooling liquid before it passes back into the reservoir. Jd. at 16:25—:32.
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`The reservoir may be provided with channels or segments for
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`establishing a certain flow-path for the cooling liquid through the reservoir
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`to prevent the cooling liquid passing the reservoir too quickly to take up a
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`sufficient amount of heat from the heat exchanging surface. Jd. at 16:51—:64.
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`' 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 werefer to the specification’s discussion of “Figure 7” in our
`discussion ofFigure 8.
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`5
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`IPR2021-01196
`Patent 10,599,196 B2
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`Figures 17 and 20 showtheinternal structures of a preferred
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`embodiment of the reservoir according to the invention and are reproduced
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`below. Jd. at 10:19-:20, 21:52-:53.
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`FIG. 20
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`Figure 17 is an exploded perspective view of a preferred embodimentof a
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`reservoir and a pump andthe heat exchanging surface. Jd. at 10:10-:12.
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`6
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`IPR2021-01196
`Patent 10,599,196 B2
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`Figure 20 is a simplified schematic showing a cross-sectional view of the
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`reservoir along plane 20-20 of Figure 17. /d. at 10:19-:20. Reservoir
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`housing 14, as shownin Figures 17 and 20, is in the form of a double-sided
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`chassis having a substantially conical, circular configuration with stiffening
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`ribs 36 extending axially along the exterior of the reservoir housing and
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`configured to mountan electrical motor. Jd. at 21:53-:61. Reservoir housing
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`14 has recess 40 intended for accommodating stator 37 of an electrical motor
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`driving impellor 33 of the pump, whichis attached to shaft 38 of rotor 39 of
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`the electric motor. Jd. at 22:1—:5. The specification explains that “a liquid-
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`proof division” is made betweenrotor 39 of the motor, which is submerged
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`in the cooling liquid, and the stator 37 of the pump. /d. at 22:14-:18.
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`The enclosed space between impeller 33 and heating exchanging
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`interface 4 is divided into two separate chambers by impeller cover 46A and
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`intermediate member47, as shownin Figure 20. Jd. at 23:22—:24. The
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`chamber formed by impeller 33 and impeller cover 46A is described as
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`“pump chamber 46”and has outlet 34. Jd. at 23:24—:29.
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`D. CHALLENGED CLAIMS
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`Challenged claim 1 is independent; claim 1 is reproduced below:
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`1. A liquid cooling system for cooling a heat-generating
`componentof a computer, comprising:
`a reservoir configured to circulate a cooling liquid
`therethrough,the reservoir including:
`a pump chamberhousing an impeller and definedatleast in
`part by an impeller cover and a double-sided chassis, the
`impeller being positioned on oneside of the chassis and
`a stator of the pumpis positioned on an opposite side of
`the chassis, wherein the pump chamberincludes:
`
`
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`IPR2021-01196
`Patent 10,599,196 B2
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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 chamberand a heat-generating
`component whenthe 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
`componentand aninnersurface 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, whereinthefirst passage is
`configured to direct the cooling liquid from the outlet of
`the pump chamberinto the thermal exchange chamber
`between a first end and a second endofthe thermal
`exchanger chamber.
`
`Id. at 28:22—:58. Claim 2 depends from claim 1.
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`
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`IPR2021-01196
`Patent 10,599,196 B2
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`E.
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`PRIOR ART AND ASSERTED GROUNDS
`
`Petitioner asserts the following ground of unpatentability:*
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`Claims Challenged| 35 U.S.C. §
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`Pet. 3. Petitioner relies also on the Declaration of Himanshu Pokharna, Ph.D.
`
`Ex. 1003.
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`II. ANALYSIS
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`A. REAL PARTIESIN INTEREST
`
`Patent Ownerargues that we should denyinstitution under 35 U.S.C.
`
`§ 312(a)(2) because the Petition does not nameall real parties in interest
`
`(“RPI”). Prelim. Resp. 1-2. Section 312(a)(2) requires that the “petition
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`identiff[y] all real parties in interest.” 35 U.S.C. § 312(a)(2). This provision
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`serves important notice functions to patent owners, to identify whether the
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`petitioner is barred from bringing an IPR dueto an RPI that is time-barred or
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`otherwise estopped, and to the Board,to identify conflicts of interests that
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`are not readily apparent from the identity of the petitioner. Patent Owner
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`argues that Corsair Gaming, Inc. and Corsair Memory,Inc. (collectively,
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`“Corsair’”) are Petitioner CoolIT’s longstanding customers, co-defendants,
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`and indemnitees in the district-court litigation.* Prelim. Resp. 1-2, 16-18.
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`Patent Ownerasserts that this is not an inadvertent omission, but rather that
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`CoolIT and Corsair are deliberately trying to hide Corsair’s status as an RPI,
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`? As noted above, Patent Ownerdisclaimed claims 3-19 (see Ex. 2008), so
`weconsider only the sole ground addressing claims 1 or2.
`3 US Pub. No. 2006/0185830, published Aug. 24, 2006 (Ex. 1004).
`4 The panel confirmsthat it does not have a conflict with Corsair Gaming,
`Inc., or Corsair Memory,Inc.
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`9
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`IPR2021-01196
`Patent 10,599,196 B2
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`and thus trying to lay the groundwork for an argument that Corsair should
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`not be subject to estoppel in the district-court action. Jd. at 2. Petitioner
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`asserts that the Petition correctly namesall RPIs and further contendsthat
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`there is no time bar implication and no evidence that Corsair is attempting to
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`advance invalidity arguments beyondthose put forward by Petitioner. Reply
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`11-12.
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`Underthe Board’s precedential decision in SharkNinja Operating
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`LLC v. iRobot Corp., when no time-bar or estoppel would apply once
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`determining Petitioner did not name all RPIs, the Board need not address the
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`issue. IPR2020-00734, Paper 11 (Oct. 6, 2020) (precedential); Lumentum
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`Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 at 6
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`(PTAB Mar. 4, 2016) (precedential) (“[O]Jur jurisdiction to consider a
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`petition does not require a ‘correct’ identification of all RPIs in a petition.”);
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`see also Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927
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`F.3d 1232, 1240 (Fed. Cir. 2019) (“{I]f a petition fails to identify all real
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`parties in interest under § 312(a)(2), the Director can, and does, allow the
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`petitioner to add a real party in interest.” (quoting Wi-Fi One, LLCv.
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`Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc))). This
`approachalso serves the interest of cost and efficiency.°
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`Here,there is no allegation that the one-year time bar under 35 U.S.C.
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`§ 315(b) would prevent Corsair from bringing an independent IPR. See
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`Prelim. Sur-reply 5—6; Prelim. Resp. 1-2. Nor have the statutory estoppel
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`provisions been implicated. The statutory estoppel provisions aim to protect
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`patent owners from harassmentvia successive petitions by the sameor
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`> See 37 C.F.R. § 42.1(b) (“This part shall be construed to secure the just,
`speedy, and inexpensiveresolution of every proceeding.”).
`10
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`1PR2021-01 196
`Patent 10,599,196 B2
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`related parties, to prevent parties from having a “second bite at the apple,”
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`and to protect theintegrity of both the USPTO andfederal courts by assuring
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`that all issues are promptly raised and vetted. Cf Fed. R. Civ. P. 17(a)
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`(Advisory Committee Note to 1966 Amendmentto Rule17(a)). Here, there
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`is no evidence that Corsair is pursuing estopped invalidity grounds (see
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`Prelim. Reply 11-12; Prelim. Sur-reply 6—7; Prelim. Resp. 1—2, 19-20), and
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`if it were, that would be an issue for the district court to resolve. Thus, on
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`this record, we will not consider whether Corsair must be named as an RPI
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`in this proceeding.
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`B. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a)
`BASED ON PARALLEL PROCEEDING
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`Patent Owner contends we should exercise our discretion to deny the
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`Petition under § 314(a), because of the copending district-court litigation
`
`involving the parties, which will be resolved before the Board’s final written
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`decision. Prelim. Resp. 1. As guided by our precedent, we consider a number
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`of factors when determining whetherto denyinstitution based onthe parallel
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`district-court litigation. See Apple Inc. v. Fintiv, Inc., IPR2020-00019,
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`Paper 11 at 5—6 (PTAB Mar.20, 2020) (precedential).
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`1. Whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted
`Petitioner movedto stay the district-court case, but the district court
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`denied the motion. Ex. 2014, 1. Petitioner argues that the court “effectively
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`stayed almostall of the remaining case to wait for the IPR institution
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`decision.” Reply 10. The court, however, set a newtrial date for July 25,
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`2022, adding two and a half monthsto the schedule, because of a criminal
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`case on the dockettaking priority. Ex. 1027, 7:25-10:2. Thus, the court did
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`11
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`IPR2021-01196
`Patent 10,599,196 B2
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`not issue a stay, but directed the parties to meet and conferto stipulate a new
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`schedule based on the July 25, 2022, trial date and continue with expert
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`reports and depositions. /d. at 11:22—13:19; see Ex. 1024. Further, although
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`the court deniedastay,it indicated that, “[i]f an IPR is instituted, then that's
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`a different matter.” Ex. 1027, 4:11-:16. The court recognized that we have
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`issued a Final Written Decision for Petitioner’s challenge to the ’355 patent,
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`in which we determinedall challenged claims unpatentable (see IPR2020-
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`00522, Paper 36; Ex. 1027, 7:12—:14), and indicated that it would “sever and
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`stay with respect to anything that’s been invalidated.” Ex. 1027, 40:3-:14.
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`Wewill not speculate as to whether the court will be inclined to stay its case
`in light of this Institution Decision. We determinethatthis factoris neutral.
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`2.
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`Proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision
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`Thedistrict-court litigation has a trial date of July 25, 2022, whichis
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`five months before the deadline for a final written decision in this
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`proceeding (one yearafterthis Institution Decision). Ex. 1024, 1. As
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`discussed above and below, however, given the limited overlap between the
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`issues in the district-court litigation and this proceeding, the time overlap has
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`less significance. We determinethat this factor weighs slightly in favor of
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`exercising discretion to denyinstitution.
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`3.
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`Investmentin the parallel proceeding by the court and the parties
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`Petitioner contends that because the asserted claims in the ’196 patent
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`almost completely overlap with the ’355 patent, which wasalso asserted in
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`the litigation, the parties have not invested significant time and effort in the
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`litigation that is unique to the ’196 patent. Pet. 88-89; Reply 7-8. Patent
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`Owner, however, contendsthat at the time of the expected institution
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`12
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`IPR2021-01196
`Patent 10,599,196 B2
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`decision in December 2021, the parties will have completed the bulk of the
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`workin the district-court litigation, including completing claim construction
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`specific to the ’196 patent, closing fact discovery, and serving opening
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`expert reports. Prelim. Sur-reply 3-4. In addition, rebuttal expert reports will
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`be served by December8, 2021, and expert discovery will close soon after
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`the Board’s institution decision. Prelim. Sur-reply 3-4. These facts counsel
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`against institution.
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`Petitioner filed the Petition here approximately five months after
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`Patent Ownerserved its amended infringement contentions, first asserting
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`the °196 patent. See Pet. 88-89 (citing Ex. 1013, 3, 13); Fintiv,
`IPR2020-00019, Paper 11, 11 (“Ifthe evidence showsthat the petitioner
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`filed the petition expeditiously, such as promptly after becoming aware of
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`the claims being asserted, this fact has weighed against exercising the
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`authority to deny institution under NHK.’). Thus, althoughthe district-court
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`proceeding has completed substantial fact discovery and some expert
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`discovery, that is not a result of Petitioner’s delay. The litigation involves
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`numerousother patents, so preparing a petition less than five monthsafter
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`asserted claims are identified was a diligent approach by Petitioner. Given
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`that diligence and the work that remains to be done, we concludethis factor
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`weighsslightly against exercising discretion to deny institution.
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`4. Overlap between issues raised in the petition
`and in the parallel proceeding
`Following Patent Owner’s disclaimer, no claims stand challenged here
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`but not at issue in the district court. Petitioner submits that, “[s]hould the
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`IPRtrial based on this Petition be instituted, Petitioner hereby stipulates that
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`it will not pursue any invalidity grounds against the ’196 patent in the
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`13
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`IPR2021-01196
`Patent 10,599,196 B2
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`district court that have beenraised in this Petition.” Pet. at 89. Petitioner
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`asserts that “if the IPR trial is instituted, there will be no overlap or concerns
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`of duplicative efforts between the district court trial and this IPR
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`proceeding.” Jd. However, “Petitioner stipulates only that it will not pursue,
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`in district court, the ‘same grounds’ presented in the Petition in this case.”
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`Sand Revolution I, LLC v. Continental Intermodal Group — Trucking LLC,
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`Case IPR2019-01393, Paper 24, 12 n.5 (June 16, 2020). Petitioner did not
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`stipulate that it would not pursue any groundraised or that could have been
`reasonably raised in an IPR.° Jd.
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`Nonetheless, Petitioner’s stipulation mitigates to some degree the
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`concerns of duplicative efforts between the district court and the Board, as
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`well as concernsofpotentially conflicting decisions. Jd. at 12; Sand
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`Revolution IT, YPR2019-01393, Paper 24, 12. Thus, we find that this factor
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`weighs somewhat against exercising discretion to deny institution.
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`5. Whether the petitioner and the defendantin the parallel proceeding
`are the same party
`Theparties in the district-court litigation and this proceeding are the
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`same. Pet. 93; see Prelim. Resp. 10. Thus, this factor weighs in favor of
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`exercising discretion to deny institution.
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`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 Ownerdisagrees. Prelim.
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`6 T.e., any ground that could be raised under §§ 102 or 103 on thebasis of
`prior-art patents or printed publications.
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`14
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`IPR2021-01196
`Patent 10,599,196 B2
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`Resp. 12-15. In this regard, Petitioner notes the similarity between claim 1
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`of the ’196 patent and claim 1 ofits parent, the °355 patent. See Pet. 2-4
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`(comparing claim | of the ’196 patent with claim 1 of the °355 patent). And
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`Petitioner points out that the ground here is based on the sameprior-art of
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`Duan as wasat issue in IPR2020-00522. See id. at 2-3, 87-88. In that
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`proceeding, we issued a Final Written Decision on August 19, 2021,
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`determiningall challenged claims unpatentable as anticipated by Duan
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`(including ’355 patent, claim 1) or obvious over Duan in combination with
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`other references. IPR2020-00522, Paper 40. Further, Petitioner points out
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`that Patent Owner’s distinction here over the claims of the °355 patent
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`depends on anissue we resolved against Patent Owner in IPR2020-00524,
`involving Patent Owner’s related ’681 patent.’ Jd. at 13 n.3
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`In light of the similarity between the claims at issue here and those of
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`the ’355 patent, the overlap in the asserted prior art, and our prior
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`determination of unpatentability regarding the ’355 patent, we concludethat
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`the merits of Petitioner’s case in this proceeding are substantively strong.
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`Thus, this factor weighs strongly in favor ofinstitution.
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`7. Holistic assessment of factors and conclusion
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`Weconsider the above factors and take “a holistic view of whether
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`efficiency and integrity of the system are best served by denying or
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`instituting review.” Fintiv, Paper 11 at 6. In weighingthetotality of the
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`evidence, we decide notto exercise discretion under § 314(a) to deny
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`institution.
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`7US9,733,681 B2.
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`15
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`IPR2021-01196
`Patent 10,599,196 B2
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`C.
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`LEVEL OF ORDINARYSKILL IN THE ART
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`Petitioner proposesthat a person of ordinary skill
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`would have earnedat 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 managementin electronics and computer systems, or in
`similar systems.
`
`Pet. 9 (citing Ex. 1003 {ff 23-26). Patent Owner doesnotdisputethis
`
`definition of a person of ordinary skill. See generally Prelim. Resp. For
`purposesof 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 priorart references. See Okajimav.
`
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the priorart itself can
`
`reflect the appropriate level of ordinary skill in theart).
`
`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 endof 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 thefirst
`
`passage is configuredto direct the cooling liquid from the outlet of the pump
`
`chamberinto the thermal exchange chamberbetweena first end and a
`
`second end of the thermal exchange chamber.” Pet. 12-15.
`
`16
`
`
`
`IPR2021-01196
`Patent 10,599,196 B2
`
`Patent Ownerdisputes the Petitioner’s construction of “wherein the
`
`first passage is configured to direct the cooling liquid from the outlet of the
`
`pump chamberinto the thermal exchange chamber betweena first end and a
`
`second end of the thermal exchange chamber.” See Prelim. Resp. 20-24. We
`
`discuss that language below,in context, and concludethat 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 contendsthat
`
`Duandoes not render independentclaim 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 Ownerargues that Duan has “end-to-end flowin the alleged
`
`thermal exchange chamber, which requires cooling liquid to enter at one end
`
`of the thermal exchange chamberandexit at the opposite end.”Jd.
`
`17
`
`
`
`IPR2021-01196
`Patent 10,599,196 B2
`
`Secondliquid outlet 31
`
`Pump chamber: liquid driving module 2
`comprising accommodation chamber 21
`
`
`
`
`
`Liquid outlet 24
`
`
`
`First end
`
`
`; ea7,
`* Wty
`= FIG. 8
`
`Pr
`
`,
`
`cooling plate 1
`
`Thermal exchange chamber:
`cap 3 and cooling plate 1
`
`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 secondliquid 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 ofthe alleged thermal exchange chamber”rather than “betweenthe first
`
`and second endsofthe alleged thermal exchange chamber”as claimedin 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
`
`
`
`IPR2021-01196
`Patent 10,599,196 B2
`
`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 Ownerdistinguishes 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—becausethe Board never
`
`addressed the meaning, scope, or relevance ofthe 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.” Jd. (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 Ownerfurther argues that disregarding the term “into”in
`
`the claim limitation ignores the positional requirementof 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—orthe sidewalls—ofthe thermal exchange
`
`chamber. Yet, Duan’s Figure 8 showsthatfirst liquid outlet 24 (i.e., Duan’s
`
`first passage) is not at the end of the thermal exchange chamberbut between
`
`the two endsor sidewalls. See Ex. 1004, Fig. 8. Indeed, there is a distinct
`
`portion of the chamberlateral to where the first passage connects to the
`
`chamber. /d. Figure 8 further showsthat first liquid outlet 24 directs the
`
`cooling liquid from the outlet of the pump chamberinto the thermal
`
`exchange chamber. See id. Therefore, even accepting Patent Owner’s
`
`construction of the claim limitation does not support denying institution.
`
`Patent Ownerdoesnot offer any further arguments againstinstitution.
`
`Wehave reviewed Petitioner’s contentions regarding obviousness over
`
`Duan, Wu, Duan-1, and AdmittedPrior Art, and conclude that Petitioner has
`
`19
`
`
`
`IPR2021-01196
`Patent 10,599,196 B2
`
`shown a reasonable likelihood of prevailing with respect to obviousness of
`
`claims 1 and 2.
`
`If. 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 determinethat the record
`
`supportsinstitution. We conclude that instituting review in this proceedingis
`
`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 ofall challenged claims underall groundsset forth in the
`
`Petition.
`
`Our determination at this stage of the proceeding is based on the
`
`evidentiary record currently before us. This decisionto institutetrial is not a
`
`final decision as to patentability of any claim for which inter partes review
`
`has beeninstituted. Our final decision will be based on the full record
`
`developed duringtrial.
`
`Accordingly,it is
`
`IV. ORDER
`
`ORDEREDthat, pursuant to 35 U.S.C. § 314(a), inter partes review
`
`of the ’196 patentis instituted on claims 1 and 2, and the groundidentified
`
`above;
`
`FURTHER ORDEREDthat, pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given ofthe institution ofa trial
`
`commencingonthe entry date of this decision.
`
`20
`
`
`
`IPR2021-01196
`Patent 10,599,196 B2
`
`For PETITIONER:
`
`James L. Ryerson
`Heath J. Briggs
`GREENBERG TRAURIG, LLP
`ryersonj@gtlaw.com
`briggsh@gtlaw.com
`
`For PATENT OWNER:
`
`Eric Raciti
`Arpita Bhattacharyya
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER LLP
`Eric.raciti@finnegan.com
`Arpita.bhattacharyya@finnegan.com
`
`21
`
`
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