Aavid Thermalloy LLC

Patent Trials and Appeals Board

Jun 4, 2020

IPR2019-00144 (P.T.A.B. Jun. 4, 2020)

Trials@uspto.gov Paper 55
571-272-7822 Date: June 4, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

COOLER MASTERS CO., LTD.,
Petitioner,
v.
AAVID THERMALLOY LLC,
Patent Owner.

IPR2019-00144
Patent 7,066,240 B2

Before LINDA E. HORNER, KEN B. BARRETT, and
ROBERT A. POLLOCK, Administrative Patent Judges.
HORNER, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)
Denying-in-Part, Dismissing-in-Part Patent Owner’s Motion to Exclude
37 C.F.R. § 42.64(c)

IPR2019-00144
Patent 7,066,240 B2
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I. INTRODUCTION
A. Background and Summary
Cooler Masters Co., Ltd., (“Petitioner”)1 filed a Petition requesting
inter partes review of U.S. Patent No. 7,066,240 B2 (“the ’240 patent,”
Ex. 1001). Paper 2 (“Pet.”). The Petition challenges the patentability of
claims 9‒13 of the ’240 patent (“the challenged claims”) on the grounds of
obviousness under 35 U.S.C. § 103. Petitioner asserts two grounds of
unpatentability. Id. at 5. Aavid Thermalloy LLC (“Patent Owner”)2 filed a
Preliminary Response to the Petition. Paper 8 (“Prelim. Resp.”). On June 6,
2019, the Board instituted inter partes review of all the challenged claims on
all of the asserted grounds. Paper 9 (“Inst. Dec.”), 40.
Subsequently, Patent Owner filed a Response (Paper 29, “PO Resp.”)
to the Petition, Petitioner filed a Reply (Paper 35, “Pet. Reply”) to the Patent
Owner Response, and Patent Owner filed a Sur-Reply (Paper 41, “PO Sur-
Reply”). An oral hearing was held on March 5, 2020, and a transcript of the
hearing is included in the record. Paper 54 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a). After consideration of
the parties’ arguments and evidence, and for the reasons discussed below,
we determine that Petitioner has not shown by a preponderance of the
evidence that claims 9–12 of the ’240 patent are unpatentable, but Petitioner
has shown by a preponderance of the evidence that claim 13 of the ’240

1 Petitioner identifies itself and CMI USA, Inc. as the real parties in interest.
Pet. 1.
2 Patent Owner identifies itself as the real party in interest and states that it is
“wholly owned by LTI Holdings Inc. (d/b/a Boyd Corporation), which is
wholly owned by Basilisk Holdings Inc.” Paper 4, 2.
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patent is unpatentable. We also deny, in part, Patent Owner’s Motion to
Exclude, and dismiss as moot the remainder of the motion.
B. Related Matters
One or both parties identify, as matters involving or related to the
’240 patent, Aavid Thermalloy LLC v. Cooler Master Co., Case No. 4:17-cv-
05363 (N.D. Cal.), and Patent Trial and Appeal Board cases IPR2019-
00145, IPR2019-00146, IPR2019-00147, IPR2019-00333, IPR2019-00334,
IPR2019-00337, and IPR2019-00338. Pet. 1‒2; Paper 4, 2. IPR2019-00337
was filed by Petitioner and involves a challenge to claims 9‒13 of the ’240
patent. The remaining inter partes reviews were filed by Petitioner and
involve challenges to patents related to the ’240 patent. The Board instituted
each of these inter partes reviews, except for IPR2019-00145, IPR2019-
00147, and IPR2019-00333.
C. The ’240 Patent
The ’240 patent is titled “Integrated Circuit Heat Pipe Heat Spreader
with Through Mounting Holes.” Ex. 1001, code (54). According to the
Specification, “[t]his invention relates generally to active solid state devices,
and more specifically to a heat pipe for cooling an integrated circuit chip,
with the heat pipe designed to be held in direct contact with the integrated
circuit.” Id. at 1:10–13.
The disclosed heat pipe “is constructed to assure precise flatness and
to maximize heat transfer from the heat source and to the heat sink, and has
holes through its body to facilitate mounting.” Id. at 1:57‒60. The heat pipe
“requires no significant modification of the circuit board or socket because it
is held in intimate contact with the integrated circuit chip by conventional
screws attached to the integrated circuit mounting board.” Id. at 1:61–65.
“[T]he same screws which hold the heat spreader against the chip can also
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be used to clamp a finned heat sink to the opposite surface of the heat
spreader.” Id. at 1:67–2:2. The heat pipe further includes spacers:
The internal structure of the heat pipe is an evacuated
vapor chamber with a limited amount of liquid and includes a
pattern of spacers extending between and contacting the two
plates or any other boundary structure forming the vapor
chamber. The spacers prevent the plates from bowing inward,
and therefore maintain the vital flat surface for contact with the
integrated circuit chip. These spacers can be solid columns,
embossed depressions formed in one of the plates, or a mixture
of the two.
Id. at 2:3–11. The spacers “support the flat plates and prevent them from
deflecting inward and distorting the plates to deform the flat surfaces which
are required for good heat transfer.” Id. at 2:18–21. Through holes are
provided through the heat pipe via the spacers:
The spacers also make it possible to provide holes into
and through the vapor chamber, an apparent inconsistency since
the heat pipe vacuum chamber is supposed to be vacuum tight.
This is accomplished by bonding the spacers, if they are solid,
to both plates of the heat pipe, or, if they are embossed in one
plate, bonding the portions of the depressions which contact the
opposite plate to that opposite plate. With the spacer bonded to
one or both plates, a through hole can be formed within the
spacer and it has no effect on the vacuum integrity of the heat
pipe vapor chamber, from which the hole is completely
isolated.
Id. at 2:29–40.
Figure 1 is reproduced below.
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Figure 1 shows “a cross section view of the preferred embodiment of a flat
plate heat pipe 10 of the invention with through holes 12 through its vapor
chamber 14 and in contact with finned heat sink 16.” Id. at 3:21–24. “When
heat pipe 10 is used to cool an integrated circuit chip (not shown) which is
held against contact plate 18, cover plate 20 is held in intimate contact with
fin plate 38, to which fins 16 are connected.” Id. at 4:9–12. “Heat pipe 10 is
constructed by forming a boundary structure by sealing together two formed
plates, contact plate 18 and cover plate 20.” Id. at 3:25–27. “Contact plate
18 and cover plate 20 are sealed together at their peripheral lips 22 and 24 by
conventional means, such as soldering or brazing, to form heat pipe 10.” Id.
at 3:27–30. The components are assembled as follows:
The entire assembly of heat pipe 10, frame 34, and fin plate 38
is held together and contact plate 18 is held against an
integrated circuit chip by conventional screws 40, shown in
dashed lines, which are placed in holes 42 in fin plate 38 and
through holes 12 in heat pipe 10, and are threaded into the
mounting plate (not shown) for the integrated circuit chip.
Id. at 4:12–18. The holes lie within sealed structures of the heat pipe:
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Holes 12 penetrate heat pipe 10 without destroying its
vacuum integrity because of their unique location. Holes 12 are
located within sealed structures such as solid columns 44, and
since columns 44 are bonded to cover plate 20 at locations 46,
holes 12 passing through the interior of columns 44 have no
[e]ffect on the interior of heat pipe 10.
Id. at 4:19–24.
In addition to the preferred embodiment described above, the
Specification describes an alternate embodiment. Id. at 2:41–53.
This [alternate] embodiment forms the through holes in the
solid boundary structure around the outside edges of the two
plates. This region of the heat pipe is by its basic function
already sealed off from the vapor chamber by the bond between
the two plates, and the only additional requirement for forming
a through hole within it is that the width of the bonded region
be larger than the diameter of the hole.
Id. at 2:44–51. The Specification explains that “with the holes located in the
peripheral lips, the heat pipe boundary structure can be any shape.” Id. at
2:51–53. Figure 2 is reproduced below.

Figure 2 “is a cross section view of an alternate embodiment of the flat plate
heat pipe 11 of the invention with through holes 48 located within peripheral
lips 22 and 24 of the heat pipe and hole 50 shown in another sealed
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Patent 7,066,240 B2
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structure, one of the depressions 26.” Id. at 4:36–40. “Of course, the region
of the peripheral edges is also a sealed structure since bonding between lips
22 and 24 is inherent because heat pipe 11 must be sealed at its edges to
isolate the interior from the outside atmosphere.” Id. at 4:43–47.
D. Illustrative Claims
Of the challenged claims, claims 9, 11, 12, and 13 are independent.
Claims 9 and 13 are illustrative and are reproduced below.
9. A heat pipe for spreading heat comprising:
a boundary structure including spaced-apart first and
second plates that define an enclosed vapor chamber;
at least one hollow column having an exterior surface
positioned within said vapor chamber with a first portion of
said exterior surface sealingly bonded to at least one of said
first and second plates, and having an open first end that opens
through said first plate and an open second end that opens
through said second plate so as to form at least one mounting
hole that is isolated from said vapor chamber.
13. A heat pipe for spreading heat comprising:
a first plate having a circumferential edge lip bounding
an inner surface and at least one depression which projects
outwardly relative to said inner surface;
a second plate arranged in spaced apart confronting
relation to said first plate and including a circumferential edge
lip bounding an inner surface and at least one opening through
said second plate, said edge lips of said first and second plates
being sealingly bonded together so as to define a vapor
chamber; wherein
said at least one depression has an open ended tubular
cross-section and an outer surface, a portion of which outer
surface is sealingly bonded to said second plate so as to
coaxially align said at least one depression with said at least one
opening in said second plate thereby to form a mounting hole
that extends through said first plate depression and said second
plate and is isolated from said vapor chamber.
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Ex. 1001, 6:12‒22, 7:7‒24.
E. Evidence
Petitioner relies on the following references in the asserted grounds of
unpatentability.
Reference Date Exhibit
No.
Japanese Unexamined Utility Model
Application S50-55262; Year of
Publication: 1975; Inventor: Kazuo Nakamura
(as translated) (“Nakamura”)3
1975 1004
Japanese Examined Utility Model Application
Publication No. H8-10205; Published March 27,
1996; Inventors: Tadahito Takahashi, Kaoru
Hasegawa, Muneaki Sokawa (as translated)
(“Takahashi”)4
Mar. 27, 1996 1005
Petitioner also relies on the Declaration of Dr. Himanshu Pokharna
(Ex. 1002), the Supplemental Declaration of Dr. Himanshu Pokharna
(Ex. 1032), the Declaration of Sylvia D. Hall-Ellis, Ph.D. (Ex. 1039), and
the Declaration of Takao Miyano (Ex. 1044) in support of its arguments.
Patent Owner relies on the Declaration of Amir Faghri, Ph.D.,
(Ex. 2002) in support of its arguments. Patent Owner also provides an
independent certified translation of Nakamura, a translation of Nakamura
relied on by Petitioner in the related district court litigation, and two
machine translations of Nakamura. Exs. 2012‒2015.
The parties rely on other exhibits as discussed below.

3 Exhibit 1004 includes both the original Japanese-language publication and
the English-language translation of Nakamura.
4 Exhibit 1005 includes both the original Japanese-language publication and
the English-language translation of Takahashi.
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F. Prior Art and Asserted Grounds
Petitioner asserts the following grounds of unpatentability in the
Petition:
Claim(s) Challenged 35 U.S.C. § Reference(s)
9‒13 103(a)5 Nakamura
9‒13 103(a) Nakamura, Takahashi

II. ANALYSIS
A. Legal Standards
Petitioner bears the burden of proving unpatentability of the claims
challenged in the Petition, and that burden never shifts to Patent Owner.
Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
(Fed. Cir. 2015). To prevail, Petitioner must establish by a preponderance of
the evidence that the challenged claims are unpatentable. 35 U.S.C. § 316(e)
(2018); 37 C.F.R. § 42.1(d) (2018).
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;

5 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Because the application from which the ’240 patent issued was filed
before this date, the pre-AIA version of § 103 applies.
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(3) the level of skill in the art; and (4) any objective evidence of
non-obviousness.6 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
B. Level of Ordinary Skill in the Art
In determining the level of ordinary skill in the art, various factors
may be considered, including the “type of problems encountered in the art;
prior art solutions to those problems; rapidity with which innovations are
made; sophistication of the technology; and educational level of active
workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(internal quotation marks and citation omitted).
Petitioner, relying on Dr. Pokharna’s testimony, asserts that the person
of ordinary skill in the art at the time of the invention would:
have earned at least a graduate degree, such as an M.S., Ph.D.,
or equivalent thereof, in mechanical engineering or a closely-
related field and possessed at least three years of specialized
experience in designing and developing heat pipes or other heat
transfer devices for thermal management in electronics and
computer systems.
Pet. 12 (citing Ex. 1002 ¶¶ 8‒10).
Relying on Dr. Faghri’s testimony, Patent Owner argues for a lower
level of skill in the art than that proposed by Petitioner. PO Resp. 11‒12. In
particular, Patent Owner disagrees with Petitioner’s requirement for an
advanced degree in mechanical engineering or a closely-related field as it
would, for example, exclude both the named inventors of the ’240 patent as
well as “a large majority of active workers in the field at the time of the
invention.” Id. (citing Ex. 2002 ¶ 80). Rather, Patent Owner contends that
the person of ordinary skill in the art at the time of the invention would have

6 The parties have not directed our attention to any objective evidence of
non-obviousness.
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“a Bachelor of Science degree in engineering and at least 3 years of
experience working or studying in the field of heat pipes; or an equivalent
level of education, training, and work experience.” Id. at 11 (citing Ex. 2002
¶¶ 77‒79).
We determine that the definition offered by Petitioner and Dr.
Pokharna comports with the qualifications a person would have needed to
understand and implement the teachings of the ’240 patent and the prior art
of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
(recognizing that the prior art itself may reflect an appropriate level of skill
in the art). Moreover, Petitioner concedes that this dispute as to the
appropriate level of skill in the art “is immaterial because the challenged
claims are invalid under both sides’ definitions.” Pet. Reply 1 n.2. We
agree with Petitioner that the outcome of this proceeding is not dependent on
our application of one party’s definition as compared to the other.
Nonetheless, because Petitioner’s and Dr. Pokharna’s definition better
reflects the level of ordinary skill in the art, we adopt and apply it here.
C. Claim Construction
“A party may request [in the form of a motion] a district court-type
claim construction approach to be applied if a party certifies that the
involved patent will expire within 18 months from the entry of the Notice of
Filing Date Accorded to Petition.” 37 C.F.R. § 42.100(b) (2019). In this
proceeding, Patent Owner filed such a motion certifying that the ’240 patent
will expire within 18 months from the entry of the Notice of Filing Date
Accorded to Petition, and specifically no later than May 12, 2019, and
requested a district court-type claim construction. Paper 5. Petitioner did
not oppose Patent Owner’s motion, and we granted the unopposed motion.
Paper 7.
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In applying a district court-type construction, we construe a claim in
accordance with the ordinary and customary meaning of such claim as
understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
2005) (en banc). Only those claim terms that are in controversy need to be
construed, and only to the extent necessary to resolve the controversy. Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999);
see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter
partes review).
Petitioner proposes claim constructions for “vapor chamber,” “lip,”
“spacer,” and “hollow column.” Pet. 13‒26. The Board decided that it did
not need to construe “vapor chamber” and “spacer” for purposes of
institution. Inst. Dec. 11. As to the claim term “lip,” the Board did not need
to determine the full scope of the term, but determined, for purposes of
institution, that Petitioner’s proposed construction is too broad because it
reads out a structural limitation of the claim. Id. at 14‒15. The Board also
provided a claim construction that distinguished between a “hollow column”
and a “depression” as those terms are used in the claims. Id. at 15‒16.
Patent Owner, in response, proposes claim constructions for “vapor
chamber,” “lip,” and “spacer extending between and contacting said first and
second plates.” PO Resp. 13‒25. Patent Owner argues that “[t]he term
‘hollow column’ needs no construction” but proposes that Petitioner’s
construction is appropriate if the Board determines that a construction is
necessary. Id. at 26.
In light of the issues presented, we construe below the following claim
terms.
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1. “lip”
The claims of the ’240 patent recite structure in the form of a “lip” on
each of the two plates. Specifically, the claims recite two presumptively
different lips using different phrases: “a peripheral lip located at an edge of
said boundary structure” (dependent claim 6 and independent claim 11 (the
former claim not challenged in the Petition)) and “a circumferential edge lip
bounding an inner surface” (independent claims 12, 13, and 14 (the latter
claim not challenged in the Petition)). Ex. 1001, 5:64–65, 6:33–35, 6:56–57,
6:61–62, 7:8–9, 7:12–13, 8:2–3, 8:6–7; see Karlin Tech., Inc. v. Surgical
Dynamics, Inc., 177 F.3d 968, 971–72 (Fed. Cir. 1999) (Under the doctrine
of claim differentiation, “different words or phrases used in separate claims
are presumed to indicate that the claims have different meanings and
scope.”). Each of the above-listed claims further explicitly requires that
those lip structures are bonded together. For example, independent claim 11
requires each plate to have a peripheral lip located at an edge of the
boundary structure and also recites “at which said peripheral lip of said first
plate is sealingly bonded to said peripheral lip of said second plate so as to
define an enclosed vapor chamber.” Id. at 6:33–37. Independent claims 12
and 13 require each plate to have a circumferential edge lip and also recite
“said edge lips of said first and second plates being sealingly bonded
together so as to define a vapor chamber.” Id. at 6:56‒67, 7:8‒16.
Petitioner argues that the meaning of “lip” is the “portion of the plate
comprising a region bonded to another plate.” Pet. 21. In the context of
applying claim 11 to the prior art, Petitioner further argues that “a
‘peripheral lip’ is nothing more than a lip that forms a periphery of the
structure under the term’s broadest reasonable interpretation.” Id. at 51.
Similarly, in the context of claims 12 and 13, Petitioner argues that “a
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‘circumferential edge lip’ is nothing more than a ‘lip’ that forms an ‘edge’
that forms the circumference of the ‘first plate’ by the term’s broadest
reasonable interpretation.” Id. at 70, 87. In support of its proposed
construction of “lip” as the region where one plate is bonded to another
plate, Petitioner points to language in the Specification that “[c]ontact plate
18 and cover plate 20 are sealed together at their peripheral lips,” and that
“the region of the peripheral edges is also a sealed structure since bonding
between lips 22 and 24 is inherent because heat pipe 11 must be sealed at its
edges to isolate the interior from the outside atmosphere.” Id. at 22 (quoting
with emphasis added Ex. 1001, 3:27–30, 4:44–48).
We noted in our Institution Decision that the cited passages, however,
occur in the context of specific embodiments illustrated in Figures 1 and 2,
respectively. Inst. Dec. 13. We noted that the lips in those figures are
identified by the use of element numbers with associated lead lines, and are
not referenced conceptually as simply the place where bonding has occurred.
Id. Thus, for purposes of the Institution Decision and on the record before
us at the time, we determined that Petitioner’s proposed construction is too
broad because it reads out a structural limitation of the claim.
Patent Owner agrees with the reasoning in the Institution Decision
that Petitioner’s proposed construction of “lip” renders the term
meaningless. PO Resp. 22‒23. Patent Owner argues that “[t]he term ‘lip’ is
used consistently throughout the specification to identify the location at the
periphery of the plates where their faces are bonded together.” PO Resp. 21
(arguing that “lip 24 is identified [in the Figures of the’240 patent] as the
peripheral flange-like structure of contact plate 18, whereas lip 22 is simply
identified as the peripheral portion of the essentially flat cover plate 20.”).
Id. Patent Owner argues that “the term ‘lip’ means ‘portion of the plate
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defined by the bonded region of the plate’s inner or interior surface.’” Id. at
24 (citing Ex. 2002 ¶¶ 105‒112).
Petitioner responds that the “parties’ dispute on the meaning of ‘lip’
needs no resolution because Takahashi discloses a ‘lip’ under either party’s
construction, and Patentee has not contended otherwise.” Pet. Reply 12.7
We agree with Petitioner that we do not need to construe “lip” for purposes
of assessing patentability under the ground based on Nakamura as modified
by Takahashi. To the extent that we address below Petitioner’s ground
based on Nakamura alone, we adopt the same claim construction employed
in our Institution Decision.
As we explained in the Institution Decision, the mention in the ’240
patent of an inherent bonding between identified plate lips in a specific
embodiment cannot be extrapolated, as Petitioner implies, such that the
claimed relationship is necessarily present in any sealed container. Inst.
Dec. 13. Even if it were true that all sealed containers must have bonding to
form the seal, it does not follow that all such containers necessarily have two
spaced-apart plates with the claimed lips and with the plates being bonded
together at the specifically recited location of those lips.
Petitioner’s proposed construction—in terms of where the plates of
the claimed invention eventually will be bonded—places too much emphasis
on the completed assembly of the heat pipe rather than on the claims’
recitation of lips on the individual plates. Under Petitioner’s construction, a
plate in the assembly will have a lip wherever two plates are bonded but the
same plate, prior to assembly, will not have a lip as there is no region where

7 This argument turns on the fact that Petitioner “no longer relies on
Ground 1 for this IPR.” Pet. Reply 22. We address Petitioner’s retraction of
Ground 1 below.
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the plate is bonded to another plate. Petitioner does not explain why that is
an acceptable result of its proposed construction.
Additionally, Petitioner’s proposed construction converts the term
“lip” from a structural component to merely a label referring to the bonded
area. As such, Petitioner’s proposed construction effectively reads out or
renders as surplusage the recitation of structure in the form of a “lip.” This
becomes evident in Petitioner’s application of the prior art to the claims.
Petitioner asserts that because Nakamura discloses an airtight heat pipe, a
person having ordinary skill in the art would have “understood and found it
obvious” that the plates would each have a peripheral portion of the plate
comprising a region bonded to another plate located at the edge of the
boundary structure and therefore, under Petitioner’s proposed construction,
Nakamura’s sealed heat pipe must have bonding at the claimed lips
regardless as to the type of lip recited in the claim.8 E.g., Pet. 51–52. Such
a proposed construction would absolve a challenger of the responsibility to
explain how each of the two plates has the specifically recited type of lip and
then how those lips are bonded together so as to define a vapor chamber.
Thus, we determine that Petitioner’s proposed construction is too
broad because it reads out a structural limitation of the claim. See Unique
Concepts, Inc. v. Brown, 939 F.2d 1558, 1562 (Fed. Cir. 1991) (“All the
limitations of a claim must be considered meaningful.”). We further
determine that we do not need construe “lip” independently of the

8 To the extent that Petitioner’s proposed construction implies that there is
no difference between the recited peripheral lip and circumferential edge lip,
we note that, under the doctrine of claim differentiation, “different words or
phrases used in separate claims are presumed to indicate that the claims have
different meanings and scope.” Karlin Tech., 177 F.3d at 971–72.
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specifically recited lips and the “bonded together” recitations in each of
claims 11‒13 to resolve Petitioner’s application of the prior art to each
respective claim.
2. “hollow column”
Petitioner proposes to adopt an interpretation of “hollow column”
advocated by Patent Owner in the district court litigation to mean “a
columnar structure defining an unfilled or empty space.” Pet. 26 (citing
Ex. 1019, 6). Petitioner does not advocate for this definition based on the
intrinsic evidence in the ’240 patent. Id. Patent Owner’s litigation position
appears to be based on the plain and ordinary meaning of the terms “hollow”
and “column” or “columnar.” Ex. 1019, 6. Petitioner instructed its
declarant, Dr. Pokharna, to accept Patent Owner’s proposed construction for
purposes of this proceeding (Ex. 1003 ¶ 55), in spite of Dr. Pokharna’s
testimony in the district court that “at the time of the alleged invention for
the patents-in-suit, the term ‘hollow column’ lacked a plain and ordinary
meaning to one of ordinary skill in the art” and the term “should be
accordingly construed as ‘cylindrical structure surrounding a void or
cavity.’” Ex. 1019, 7.
Patent Owner argues that the term “[h]ollow column” needs no
construction because it “is not a technical term and is used in the
specification simply to refer to a column that is hollow.” PO Resp. 26
(citing Ex. 1001, 1:57‒60, 2:9‒11, 2:29‒32; 2:36‒39, 3:21‒24, 4:19‒24;
Ex. 2002 ¶ 119). Patent Owner urges that if the Board determines that a
construction is necessary, we should adopt the construction presented by
Petitioner in the Petition. Id. (citing Ex. 2002 ¶¶ 119‒124).
In the Institution Decision, we determined that the ’240 patent
describes two distinct types of spacers, those formed by a solid column
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bonded to one or both plates and hollowed via the formation of a through
hole, and those formed by a depression embossed in a plate, with the bottom
of the depression bonded to the inner surface of the opposite plate, and
having a hole formed at that bonded contact surface. Inst. Dec. 16. We
interpreted “hollow column,” in light of the description provided in the ’240
patent, to refer to the former and not to encompass the latter. Id. And we
found that Petitioner had failed to “reconcile adequately its reliance on a
type of prior art depression-like spacer that the ’240 patent appears to
distinguish from the recited hollow column.” Id. at 32.
Petitioner did not address our interpretation of “hollow column” in its
Petitioner Reply. Instead, Petitioner argues that we should adopt Patent
Owner’s litigation position, because “Patentee’s litigation construction . . .
should be applied against the Patentee” and because the ’240 patent “does
not expressly define ‘hollow column.’” Pet. Reply 19. Petitioner also points
to depictions of solid columns 44 in Figure 2 of the ’240 patent as support
for this interpretation. Id. at 19‒20.
We have reviewed the description provided in the ’240 patent,
including the portions cited by Patent Owner in support of its broad
construction of “hollow column.” For the reasons discussed below, we are
not persuaded that our interpretation of “hollow column” adopted in the
Institution Decision is incorrect or that we should adopt the broader
construction proffered by the parties.
The cited portions of the ’240 patent do not use the term “hollow
column.” In fact, the term is not used anywhere in the ’240 patent except for
the claims. The ‘240 patent uses “columns,” however, to discuss one type of
spacer, e.g., a spacer formed by a solid column with a hole passing through
it. Ex. 1001, 2:9‒11, 4:19‒24.
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Specifically, as discussed in our Institution Decision, the Specification
of the ’240 patent discusses and distinguishes two types of spacers that
extend between the plates and through which a fastener hole may be drilled
without breaking the air-tight seal of the vapor chamber. See Ex. 1001, 2:9–
39.
These spacers [between plates] can be solid columns, embossed
depressions formed in one of the plates, or a mixture of the
two.[9]. . .
The spacers also make it possible to provide holes into
and through the vapor chamber, an apparent inconsistency since
a heat pipe vacuum chamber is supposed to be vacuum tight.
This is accomplished by bonding the spacers, if they are solid,
to both plates of the heat pipe, or, if they are embossed in one
plate, bonding the portions of the depressions which contact the
opposite plate to that opposite plate. With the spacer bonded to
one or both plates, a through hole can be formed within the
spacer and it has no effect on the vacuum integrity of the heat
pipe vapor chamber, from which the hole is completely
isolated.
Id. at 2:9–11, 29–39. Thus, the ’240 patent describes one embodiment of a
spacer as a depression embossed in a plate, with the bottom of the
depression bonded to the inner surface of the opposite plate, and having a
hole formed at that bonded contact surface. See id. at 4:40–43, Fig. 2 (hole
50 in bottom of depression 26, which is bonded to inner surface 28 of
contact plate 18). A second embodiment of a spacer is a solid column
bonded to one or both plates and that is hollowed via the formation of a
through hole. See id. at 2:36–46, 4:21–24, Fig. 1 (solid column 44 bonded
to cover plate 20 at location 46 with hole 12 through the interior of column

9 We understand that the phrase “a mixture of the two” means that a given
vapor chamber may utilize the different types of spacers, not that a single
spacer may be a mixture of the two types.
IPR2019-00144
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20
44). The Figures of the ’240 patent also distinguish between columns 44,
which extend from contact plate 18 to the outer surface of cover plate 20,
and depressions 26, which extend from cover plate 20 to the inner surface of
contact plate 18. Ex. 1001, Figs. 1, 2. In other words, “the bottom of
depression 26 must be bonded to inner surface 28 of contact plate 18.” Ex.
1001, 4:41‒42.
The claim language of the ’240 patent matches this distinction made
in the written description. For instance, claims 9 and 12 recite a heat pipe
comprising “at least one hollow column” and claims 11 and 13 recite a heat
pipe comprising “at least one depression.” Ex. 1001, 6:1‒7:25. Based on
the claim language and the description of spacers provided in the ’240
patent, we interpret “hollow column” in the claims to mean a spacer formed
by a column that extends from one plate to the outer surface of the opposite
plate. We do not construe “hollow column” to encompass depressions,
described in the ’240 patent, that extend from one plate to the inner surface
of the opposite plate.
3. “at least one spacer extending between and contacting said first and
second plates”
Petitioner proposes a construction of “spacer” to refer to the “structure
used to maintain a space or clearance between the plates.” Pet. 23.
Petitioner asserts that a POSITA would have understood the claimed
“depression” could have functioned as a “spacer.” Id. at 24‒25 (citing
Ex. 1002 ¶ 51). Petitioner argues that support for this interpretation is found
in the ’240 patent’s description of “a pattern of spacers extending between
and contacting the two plates or any other boundary structure forming the
vapor chamber.” Id. at 24 (citing Ex. 1001, 2:3‒9). Petitioner also relies on
a dictionary definition of “spacer” that defines the term as “a device or piece
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21
for holding two members at a given distance from each other. . . .” Id.
(citing Ex. 1020).
Patent Owner proposes construction of the phrase “spacer extending
between and contacting said first and second plates” to mean “structure
separate from and in contact with the first and second plates and configured
to maintain a space or clearance between the plates.” PO Resp. 24 (citing
Ex. 2002 ¶ 113). Patent Owner argues that because claim 11 separately
recites a “spacer extending between and contacting” both plates and a
“depression formed” in one of the plates, those elements should be
interpreted as distinct components. Id. (citing Becton, Dickinson & Co. v.
Tyco Healthcare Grp., 616 F.3d 1249, 1254 (Fed. Cir. 2010)(internal
quotations and brackets omitted) (“Where a claim lists elements separately,
the clear implication of the claim language is that those elements are distinct
components of the patented invention.”)). Patent Owner argues that the ’240
patent “distinguishes spacers in the form of ‘solid columns’ from ‘embossed
depressions’ by the surfaces they contact,” where separate spacers are
bonded “to both plates” and embossed spacers are embossed in one plate and
bonded “to that opposite plate.” PO Resp. 25 (citing Ex. 1001, 2:9‒11,
2:33‒40; Ex. 2002 ¶ 117). Patent Owner argues that only spacers that are
bonded to both plates would be understood by a POSITA as “extending
between and contacting” both plates. Id. (citing Ex. 2002 ¶ 117).
Both parties rely on some of the same disclosures in the ’240 patent to
support their different interpretations of the claim language. In this case,
Patent Owner has the better interpretation of “spacer” when read in the
context of the remainder of the language in claim 11 and the description in
the specification of the ’240 patent.
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First, as noted by Patent Owner, the term “spacer” is recited in claim
11, when read in the context of the surrounding claim language, to refer to a
specific type of spacer that extends from and contacts both plates. This
recitation is juxtaposed with the additional recitation in claim 11 of a
“depression” that is “formed in said first plate” and “is sealingly bonded to
said second plate.” Thus, the claim language itself distinguishes between a
separate spacer bonded to both plates and a depression that is formed in one
plate and bonded to one plate. We infer from the claim language alone that
the “at least one spacer” and the “depression” are distinct components of
claim 11. Whereas the recited “spacer . . . extending between and
contacting said first and second plates,” is a distinct element between and in
contact with two plates, the recited “depression” is a part of one plate and
contacts, or is bonded to, the opposing plate.
The description in the ’240 patent is consistent with this reading of the
claim language. The ’240 patent describes that “[t]he internal structure of
the heat pipe is an evacuated vapor chamber with a limited amount of liquid
and includes a pattern of spacers extending between and contacting the two
plates or any other boundary structure forming the vapor chamber.”
Ex. 1001, 2:3‒7. The ’240 patent describes that “[t]hese spacers can be solid
columns, embossed depressions formed in one of the plates, or a mixture of
the two.” Id. at 2:9‒11. The ’240 patent describes specifically that if the
spacers are solid, they are bonded to both plates of the heat pipe, or if they
are embossed in one plate, the portion of the depression which contacts the
opposite plate is bonded to that opposite plate. Id. at 2:32‒36. Thus, the
’240 patent describes a first type of spacer that is independent of the plates
and bonded to both plates, and a second type of spacer that is formed in one
plate and bonded to the opposite plate.
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Considering the evidence of record, we agree with Patent Owner that
“the ‘spacer’ limitation of claim 11 cannot be construed to encompass an
“embossed depression formed in one of the plates” because “a depression
would not be understood to contact the plate in which it is formed;
otherwise, the word ‘contacting’ becomes meaningless.” PO Resp. 25
(citing Ex. 2002 ¶ 116). As an example, although a spacer formed from an
embossed depression in a first plate may contact a second plate, it cannot
reasonably “contact said first . . . plate” from which it is formed. Nor do we
discern how such an embossed depression could “extend[] between . . . said
first and second plates” when it is itself formed from—and contiguous
with—one of the plates.
In view of the above, we adopt Patent Owner’s construction of
“spacer . . . extending between and contacting said first and second plates”
as referring to a “structure separate from and in contact with the first and
second plates and configured to maintain a space or clearance between the
plates.”10
4. “vapor chamber”
Petitioner proposes that a POSITA would have understood “vapor
chamber” to mean an “enclosed and sealed space or cavity in which a heat
transfer fluid is present to be evaporated (or vaporized) and condensed to
transport or spread heat.” Pet. 13 (broadest reasonable interpretation); see
also id. n.3 (slightly different district court definition of “[e]nclosed and
sealed void or cavity in which a suitable quantity of liquid is present to be

10 Petitioner addresses arguments regarding the alternative construction
Patent Owner proposed before the district court. See Pet. 23–25 (referencing
Ex. 1019, 5–6); id. at 68. Patent Owner does not pursue that construction
here, and it is not germane to our analysis.
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Patent 7,066,240 B2
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evaporated (or vaporized) and condensed to transport or spread heat”) (citing
Ex. 1019, 3). Patent Owner proposes a construction of “vapor chamber” to
mean “a vacuum sealed chamber, wherein a heat transfer fluid is evaporated
and condensed and capillary forces are utilized to spread heat.” PO Resp.
13‒14.
Petitioner argues that Patent Owner’s reference to a “vacuum sealed”
chamber is confusing because the vapor chamber contains the heat transfer
fluid, and is not empty of matter. Pet. 15‒16. Petitioner argues that the
Patent Owner’s inclusion of “vacuum sealed” into the construction of “vapor
chamber” injects ambiguity into the construction due to the many possible
meanings of “vacuum.” Id. at 14‒15 (citing Exs. 1006, 1007 (dictionary
entries for “vacuum” providing six different meanings for the term)).
Petitioner urges that the description in the ’240 patent of a “vacuum
chamber” refers to a chamber that is simply sealed off from external or
environmental influences. Id. at 16.
Patent Owner argues that the requirement that the vapor chamber is
vacuum sealed is proper in light of the ’240 patent. PO Resp. 16 (citing
Ex. 1001, 2:3‒4, 2:11‒40, 3:30‒34, 4:40‒43; Ex. 2005, 104:19‒24).
The ’240 patent describes that “[t]he internal structure of the heat pipe
is an evacuated vapor chamber with a limited amount of liquid.” Ex. 1001,
2:3‒4; see also id. at 3:30‒33 (“Heat pipe 10 is then evacuated to remove all
non-condensible gases and a suitable quantity of heat transfer fluid is placed
within it.”). The ’240 patent also refers to the heat pipe as a “heat pipe
vacuum chamber” that is “vacuum tight.” Id. at 2:29‒32; see also id. at
4:40‒44 (describing that bonding of the bottom of the depression to the inner
surface of the contact plate prevents “loss of vacuum” with the heat pipe
with the through hole is formed). The ’240 patent describes that the through
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holes formed within the spacers have “no effect on the vacuum integrity of
the heat pipe vapor chamber.” Id. at 2:36‒40.
Thus, Petitioner is correct that the vapor chamber is not completely
evacuated because it contains the heat transfer fluid. But the ’240 patent
describes a chamber that is evacuated and sealed. For instance, we
understand references to “vacuum” in the ’240 patent to refer to the fact that
the vapor chamber is “evacuated” to remove non-condensible gases and is
then sealed after the heat transfer fluid has been added. Thus, Petitioner’s
construction of “vapor chamber” as referring to an “enclosed and sealed void
or cavity” is consistent with the description in the ’240 patent. We do not
adopt Patent Owner’s construction of “vapor chamber” to require a “vacuum
sealed chamber” because the term “vacuum” injects ambiguity into the
term’s meaning and would require us to further construe “vacuum” to clarify
the scope of this term in light of the ‘240 patent.
Petitioner also argues that Patent Owner’s interpretation that requires
capillary forces to be utilized is too narrow. Pet. 19‒20. Petitioner argues
that a wick required to generate and utilize capillary forces is an optional
structure. Id. at 20‒21.
Patent Owner argues that the use of capillary forces to spread heat is
consistent with the manner in which heat pipes operated at the time of the
invention and is acknowledged in the ’240 patent as important to spreading
heat. PO Resp. 17 (citing Ex. 1001, 1:57‒60, 2:11‒40, 3:47‒66). Patent
Owner argues that Dr. Pokharna acknowledges that “[a]s a general matter,
[heat pipes] utilize capillary forces which may be produced by wick or by
grooves.” Id. at 17‒18 (citing Ex. 2005, 126:8‒128:4).
Patent Owner’s evidence may pertain to an understanding of the term
“heat pipe heat spreader” in the art, but it does not provide adequate
IPR2019-00144
Patent 7,066,240 B2
26
evidence that “vapor chamber” is understood in the art to require the use of
capillary forces to spread heat. We do not find that the portions of the ’240
patent cited in Dr. Faghri’s testimony require construction of “vapor
chamber” to include the use of capillary forces. For instance, one portion of
the ’240 patent relied on by Patent Owner describes that “the heat pipe heat
spreader is constructed to assure precise flatness and to maximize heat
transfer from the heat source and to the heat sink, and has holes through its
body to facilitate mounting.” Ex. 1001, 1:57‒60. This description makes no
mention of capillary forces. Another cited portion of the ’240 patent
describes the function of the spacers as providing support for portions of a
capillary wick. Id. at 2:11‒40. This description pertains to an embodiment
of the heat pipe that includes a wick. The description does not support an
interpretation of “vapor chamber” as requiring the use of a wick. Likewise,
another portion of the ’240 patent cited by Patent Owner describes an
embodiment of the heat pipe that uses a capillary wick. Id. at 3:47‒66. The
’240 patent describes the heat transfer as follows:
As is well understood in the art of heat pipes, a capillary wick
provides the mechanism by which liquid condensed at the cooler
condenser of a heat pipe is transported back to the hotter
evaporator where it is evaporated. The vapor produced at the
evaporator then moves to the condenser where it again
condenses. The two changes of state, evaporation at the hotter
locale and condensation at the cooler site, are what transport heat
from the evaporator to the condenser.
Id. at 3:50‒58. Thus, these portions of the ’240 patent are describing one
embodiment of a heat pipe that uses a wick. These descriptions do not
define or limit “vapor chamber” to use of such a wick. Patent Owner’s
proposed construction requiring the use of “capillary forces” to spread heat
imparts an additional structural requirement of a wick or grooves within the
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vapor chamber. We see no reason to read these additional structural
requirements into the claim term “vapor chamber,” particularly when the
claims separately recite a wick positioned within the vapor chamber. See,
e.g., Ex. 1001, 6:23‒29 (claim 10), 6:51‒54 (claim 11).
Both parties provide constructions of “vapor chamber” to include
some aspect of heat transfer. Patent Owner argues that Petitioner’s
construction is too broad because it refers to evaporation and condensation
of a heat transfer fluid “to transport or spread heat.” PO Resp. 14. Patent
Owner urges a narrower definition of “vapor chamber” that requires
evaporation and condensation of a heat transfer fluid to “spread heat.” Id.
Patent Owner argues that heat spreading, which refers to two- or three-
dimensional heat flow, is one of the key attributes of a vapor chamber heat
pipe that distinguishes it from conventional heat pipes, which mainly
transport heat in one dimension. Id. at 15 (citing Ex. 2002 ¶ 88). Patent
Owner argues that Petitioner’s construction “disregards the significant
difference between vapor chamber heat pipes and conventional heat pipes
that would have been understood by a POSITA at the time of the invention
and does not account for the text of the specification that repeatedly refers to
spreading heat.” Id. at 16 (citing Ex. 2002 ¶ 89).
As reproduced above, the ’240 patent describes operation of the heat
pipe to “transport heat from the evaporator to the condenser.” Ex. 1001,
3:50‒58. Thus, Petitioner’s proposed construction of “vapor chamber” to
encompass evaporation and condensation of a heat transfer fluid “to
transport or spread heat” is consistent with the description provided in the
’240 patent. Thus, we adopt and employ Petitioner’s interpretation of
“vapor chamber” to mean an enclosed and hermetically sealed void or cavity
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in which working fluid is present to be evaporated (or vaporized) and
condensed to transport or spread heat.11
With these claim interpretations in mind, we now examine the
grounds asserted in the Petition.
D. Status of Nakamura as Prior Art
Petitioner contends that Nakamura is prior art under 35 U.S.C.
§ 102(b), asserting that “Nakamura is a ‘Japanese Unexamined Utility
Model Application Publication in the Year 1975’ that was filed on
September 18, 1973 and published in 1975.” Pet. 26; see also id. at vii
(Exhibit list stating “Year of Publication: 1975”).
Patent Owner, in the Preliminary Response, argued that Petitioner had
failed to establish that Nakamura qualifies as prior art because Petitioner’s
English translation of Nakamura adds a parenthetical “(1975)” after the
number “S50-55262” where no such parenthetical is included in the original
document. Prelim. Resp. 13. Patent Owner also argued that Nakamura did
not contain indicia, such as INID12 codes, that often qualify a foreign patent
application as a “printed publication” and that “[i]f Nakamura had been
published, the publication data (among other data) would be provided on the

11 Petitioner proposed construing “vapor chamber” under the Phillips
standard in the related IPR2019-00337 to mean an “enclosed and
hermetically sealed void or cavity in which a working fluid is present to be
evaporated (or vaporized) and condensed to transport or spread heat.”
IPR2019-00337, Paper 2 at 12‒13. Petitioner noted in the related petition
that “[t]here is no dispute between Petitioner and [Patent Owner] that the
‘vapor chamber’ must be ‘hermetically sealed,’ which Patent Owner agrees
means airtightly sealed.” Id. at 13 n.4. We find that the requirement that the
chamber is hermetically sealed is consistent with the description in the ’240
patent, and we adopt that clarification in this case as well.
12 “‘INID’ is an acronym for ‘Internationally agreed Numbers for the
Identification of (bibliographic) Data.’” Ex. 2001, 1.
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first page of the document, and identified with the appropriate INID
code(s).” Id. at 4‒6, 10‒11. Patent Owner further argued that “Nakamura
includes no indication that it was indexed in a meaningful way” and “does
not identify any date prior to May 12, 1999 on which Nakamura was
available to and locatable by the public.” Id. at 11, 14.
In the Institution Decision, the Board determined that Petitioner
provided enough evidence, including at least the translated version of
Nakamura, to make the requisite threshold showing of a reasonable
likelihood of prevailing on the issue of whether Nakamura is a printed
publication. Inst. Dec. 20. The Board noted that the USPTO Manual of
Patent Examining Procedure (MPEP) explains that “Japanese patent
application publications show the date in Arabic numerals by indicating . . .
the year of the reign of the Emperor,” and observed that “[a]dding the year
of the Emperor, 1925, to the numeral ‘50’ shown on the original document
yields the year 1975, which corresponds to [Petitioner’s] assertion of a
publication date.” Id. at 18–19 (quoting MPEP § 901.05(a) (9th ed. rev.
07.2015 Jan. 2018)). The Board further noted that Patent Owner did not
provide citation to any authority for the proposition that a Japanese
unexamined utility model application like Nakamura, if published, would be
formatted with INID codes. Id. at 20. The Board also encouraged the
parties to meet and confer regarding Japan Patent Office practice in the
1970s as applied to unexamined utility model applications to try to resolve
this issue. Id.
After institution, Patent Owner filed objections to evidence that
included various objections to Nakamura. Paper 16, 1‒2 (objecting to
Exhibit 1004 under Federal Rule of Evidence (FRE) 104, FRE 401, FRE
901, and FRE 1002). Petitioner responded by serving Patent Owner with
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supplemental evidence, including the Chen Declaration.13 See 37 C.F.R.
§ 42.64(b)(2) (authorizing a party relying on evidence to which an objection
is timely served to respond to the objection by serving supplemental
evidence within ten business days of service of the objection). Patent Owner
argued in its Response that “these documents should not be considered
unless and until [this supplemental evidence is] properly filed as
supplemental information.” PO Resp. 33‒34. We understand Petitioner to
have relied on the Chen Declaration as a means to resolve Patent Owner’s
objections to the relevance and authentication of Exhibit 1004. Petitioner
never filed the Chen Declaration with the Board. Thus, we do not consider
the content of the Chen Declaration for purposes of resolving this issue. We
note, however, that attached as Exhibit B to the Chen Declaration was a
copy of the condensed version of Nakamura, as published in the Japanese
Gazette in 1975, and an English language translation thereof. Ex. 2011, 14‒
20 (Ex. B). Thus, Patent Owner apparently received a copy of the
condensed version of Nakamura prior to filing its Patent Owner Response.
Patent Owner, in its Response, argues that Petitioner “fails to present
evidence that Nakamura was a ‘patent or printed publication’ prior to the
‘240 Patent’s May 12, 1999 priority date,” and that, “based on the evidence
presented, Nakamura is neither a patent nor a printed publication.” PO
Resp. 27. Specifically, Patent Owner argues that “Petitioner has failed to
file any evidence that Nakamura was actually disseminated or publicly
accessible or findable before the May 12, 1999 priority date.” Id. at 30.

13 This supplemental evidence consisted of a Declaration of Kyle Chen
Responsive to Patent Owner’s Objections to Evidence with attached Exhibits
A‒E. Patent Owner submitted a copy of Petitioner’s Supplemental Evidence
as an exhibit in order to address it in Patent Owner’s Response. Ex. 2011.
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Patent Owner asserts that Nakamura does not have an abstract and nothing
in the record suggests that Nakamura was classified before May 12, 1999.
Id. Patent Owner further asserts that “Nakamura has no INID codes to
identify any relevant biographic data.” Id. at 31. Patent Owner argues that
Petitioner has filed no evidence of any actual dissemination of Nakamura, or
any means by which Nakamura might have been accessed by interested
members of the public. Id. at 32. In sum, Patent Owner asserts that
Petitioner’s evidence is not sufficient to support a finding that one skilled in
the art, employing reasonable diligence, would have been able to locate and
retrieve Nakamura prior to May 12, 1999. Id.
Petitioner, in reply to Patent Owner’s arguments regarding
dissemination and public accessibility, relied on a declaration from Takao
Miyano (“the Miyano Declaration”), a Japanese patent attorney, to show
that, at the time of Nakamura, the Japan Patent Office provided public
access to utility model applications by publishing a condensed version of the
full application in the Japan Utility Model Gazette and by allowing public
inspection of the full application at the Japan Patent Office. Reply 21 (citing
Ex. 1044).14 Petitioner, thus, asserts that “the full version of Nakamura
(Ex-1004) was publicly accessible as of May 26, 1975 when its condensed
version was published.” Id. (citing Ex. 1044 ¶¶ 11‒17).
Patent Owner argues that this new evidence and new arguments filed
with Petitioner’s Reply are improper as untimely. PO Sur-Reply 9‒10.
Patent Owner argues that to rely on this new evidence, Petitioner should
have sought to submit the evidence as supplemental information in

14 The Miyano Declaration includes six attachments, labeled Exhibits A
through F, which correspond, respectively, to Exhibits 1045 through 1050.
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accordance with 37 C.F.R. § 42.123. Id. Because we rely, in part, on the
Miyano Declaration, we address Patent Owner’s arguments as to the
timeliness of Petitioner’s presentation of this evidence.
As recently discussed in Hulu, LLC v. Sound View Innovations, LLC,
IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential), “at the
institution stage, the petition must identify, with particularity, evidence
sufficient to establish a reasonable likelihood that the reference was publicly
accessible before the critical date of the challenged patent and therefore that
there is a reasonable likelihood that it qualifies as a printed publication.” Id.
at 13. The decision in Hulu further describes “limited opportunities” for the
petitioner to present new evidence after the filing of the petition to support a
showing that a reference is a printed publication, including “in a reply to the
patent owner response” and “in a motion to file supplemental information.”
Id. at 14. The Hulu decision explains that new evidence submitted in a reply
must be responsive to arguments raised in the patent owner response. Id.
The decision explains that “if the patent owner challenges a reference’s
status as a printed publication, a petitioner may submit a supporting
declaration with its reply to further support its argument that a reference
qualifies as a printed publication.” Id. at 15.
In this case, the evidence submitted with the Petition includes
Nakamura itself in the original Japanese and a certified translation.
Ex. 1004. On its first page, Nakamura contains evidence in the form of
certain indicia including its identification as a Japan Patent Office document
(stamp at lower right), a title containing the word “Publication” followed by
the number S50 55262, and the translated date of 1975 in the publication
number (50 plus 1925, the year of the Emperor).
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As discussed above, Patent Owner presented arguments challenging
the dissemination and public accessibility of Nakamura in its Patent Owner
Response. Petitioner submitted the Miyano Declaration and supporting
exhibits (Exs. 1044‒1050) specifically in response to Patent Owner’s
challenges to dissemination and public accessibility of Nakamura, raised in
Patent Owner’s Response. We find that this new evidence is permissible
here because it was filed in response to arguments raised in Patent Owner’s
Response. Also, the new evidence did not amount to, or result in, a change
to Petitioner’s theory in the case, and is relied on to further support
Petitioner’s initial position raised in the Petition that Nakamura qualifies as a
printed publication. Thus, we do not agree with Patent Owner that
Petitioner’s new evidence, submitted in the Reply, was improper as
untimely.
Patent Owner also argues that Petitioner’s Reply “includes scant
argument or explanation as to why it believes Nakamura is a printed
publication” and instead improperly incorporates by reference the arguments
and explanations from the Miyano Declaration. PO Sur-Reply 11 (citing
Ex. 1044). We disagree with Patent Owner that the arguments presented in
Petitioner’s Reply are inadequate. The Reply explains how the Japan Patent
Office provided public access to utility model applications at the time of
Nakamura, including by publication of a condensed version of the
application in the Japanese Utility Model Gazette and by allowing public
inspection of the full application at the Japan Patent Office upon request.
Pet. Reply 21. Petitioner properly refers in its Reply to the Miyano
Declaration as support for these assertions. Id. The Reply also explains how
an interested member of the public would have obtained access to the full
version of the publication. Id. Again, Petitioner properly refers in its Reply
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to the Miyano Declaration for support. Id. Thus, we consider the arguments
properly raised in Petitioner’s Reply, along with the supporting evidence
cited in the Reply, to ascertain whether Nakamura qualifies as prior art.
Having clarified the universe of evidence to which we will look to
decide the prior art status of Nakamura, we now examine the evidence to
assess whether it is sufficient to establish Petitioner’s position as to
Nakamura as a prior art printed publication.
In an inter partes review, a petitioner “may request to cancel as
unpatentable 1 or more claims of a patent . . . only on the basis of prior art
consisting of patents or printed publications.” 35 U.S.C. § 311(b). In this
case, Petitioner contends Nakamura is a “printed publication” within the
meaning of § 311 and does not assert that Nakamura is a “patent.” See
Pet. 26; Pet. Reply 21.
We look to the underlying facts to make a legal determination as to
whether a reference is a printed publication. Suffolk Techs., LLC v. AOL
Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a
given reference qualifies as a prior art “printed publication” involves a case-
by-case inquiry into the facts and circumstances surrounding its disclosure to
members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed.
Cir. 2004). The key inquiry is whether the reference was made “sufficiently
accessible to the public interested in the art” before the critical date. In re
Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); see In re Wyer, 655 F.2d
221, 226 (CCPA 1981). “A given reference is ‘publicly accessible’ upon a
satisfactory showing that such document has been disseminated or otherwise
made available to the extent that persons interested and ordinarily skilled in
the subject matter or art exercising reasonable diligence, can locate it.”
Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)
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35
(citation omitted). Bruckelmyer and Wyer specifically addressed the public
accessibility of laid-open patent applications.
In Bruckelmyer, the issue was whether two figures of a Canadian
application that were withdrawn, and thus, absent in the issued patent but
still of record in the prosecution history, are part of the subsequently
published patent. Bruckelmyer, 445 F.3d at 1377. Bruckelmyer argued that
a patent application located in a foreign patent office that has been laid open
for inspection is not a printed publication, especially considering absence of
evidence indicating that the contents of the file wrapper were disseminated
or copied. Id. at 1377‒78.
The court disagreed explaining:
[t]he “printed publication” provision of § 102(b) “was designed
to prevent withdrawal by an inventor . . . of that which was
already in the possession of the public.” . . . Whether a given
reference is a “printed publication” depends on whether it was
“publicly accessible” during the prior period. A given reference
is “publicly accessible” upon a satisfactory showing that such
document has been disseminated or otherwise made available to
the extent that persons interested and ordinarily skilled in the
subject matter or art exercising reasonable diligence, can locate
it and recognize and comprehend therefrom the essentials of the
claimed invention without need of further research or
experimentation.
Id. at 1378 (internal citations omitted); see also Wyer, 655 F.2d at 226.
With respect to Wyer, the issue was whether an Australian patent
application laid open for public inspection was a printed publication if only
an abstract of the application was published by the Australian Patent Office.
Wyer, 655 F.2d at 223, 226. The court found that, although there is no
evidence of actual viewing or dissemination of any copy of the application:
there is no dispute that the records were maintained for this
purpose. Given that there is also no genuine issue as to whether
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the application was properly classified, indexed, or abstracted,
we are convinced that the contents of the application were
sufficiently accessible to the public and to persons skilled in the
pertinent art to qualify as a “printed publication.”
Id. at 226. In considering Wyer, the court in Bruckelmyer also explained:
The existence of a published abstract that would have allowed
one skilled in the art exercising reasonable diligence to locate the
foreign patent application and the fact that the application was
classified and indexed in the patent office, were central to the
Wyer court’s conclusion that the application was “publicly
accessible.”
Bruckelmyer, 445 F.3d 1379.
In this case, Petitioner provided a certified translation of Nakamura
with its Petition. See Ex. 1004, 12.15 The top of the first page is translated
as “Japanese Unexamined Utility Model Application Publication S50–55262
(1975).” Id. at 1; see also Ex. 2012, 1 (same). The as-translated first page
contains a seal of the Japan Patent Office (bottom right) and certain
numbered items, including “1 Title of the Invention” and “2 Inventor.” Id.
The first page also twice recites the date of September 18, 1973 (near the top
and in the seal of the Japan Patent Office.) Id. This 1973 date coincides
with that which Petitioner contends is the application filing date. Pet. 26.
Patent Owner asserts that Nakamura does not qualify as prior art
because, unlike the published applications in Wyer and Bruckelmyer,
Nakamura does not include an abstract, and because nothing in the record
suggests that Nakamura was classified before the effective filing date of the
’240 patent, i.e., May 12, 1999. PO Resp. 30; id. at 31 (“Nakamura includes

15 In citing to Nakamura in this section, we refer to the page numbers of the
exhibit rather than the numbers in parentheses at the bottom center of the
translation.
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no indication that it was abstracted, classified, or indexed in a meaningful
way.”). Patent Owner also compares Nakamura to Takahashi (Ex. 1005)
and Morikawa (Ex. 1023) and notes that, unlike these published Japanese
applications, Nakamura does not include INID codes. Id. at 31. Patent
Owner argues that “[i]f Nakamura had been published, the publication date
(among other data) would be provided on the first page of the document, and
identified with the appropriate INID code(s).” Id. Patent Owner also argues
that Petitioner has not filed any evidence of actual dissemination of
Nakamura or any means by which Nakamura might have been accessed by
interested members of the public. Id. at 32.
In reply, Petitioner provides evidence of Japan Patent Office
procedures at the time of Nakamura that shows that under Japanese utility
model law in the period of 1973‒1975, the Japan Patent Office would
publish a condensed version of the utility model application in the Utility
Model Gazette and the complete version of the utility model application was
made available for public inspection at the Japan Patent Office on the same
day that the condensed version was published. Pet. Reply 21; Ex. 1044
¶¶ 13‒14 (explaining that the public could gain access to the full version by
presenting identifying information such as the publication number).
Petitioner provides a copy of the condensed version of Nakamura
published in the Japanese Utility Model Gazette in 1975. Ex. 1044
(Attachment C); Ex. 1047. According to Petitioner’s declarant, this
condensed version of Nakamura was published on May 26, 1975. Ex. 1044
¶¶ 11‒13. We also observe that this condensed version of Nakamura
includes INID codes similar to those that appear on the faces of Morikawa
and Takahashi. Ex. 1047, 1 (showing circled numbers on the face of the
publication that correspond to INID codes on the faces of Morikawa
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(Ex. 1023) and Takahashi (Ex. 1005)). We also observe that although the
condensed version of the published application does not appear to include an
abstract, it does include a title, drawings with a brief explanation of the
drawings, a detailed explanation of the device, and claims. Ex. 1044 ¶ 12;
Ex. 1047. Thus, we find that the condensed version of Nakamura, which
was published in the Japanese Utility Model Gazette, was classified and
sufficient detail of the contents of the application were provided such that
one skilled in the art exercising reasonable diligence would have been able
to locate Nakamura.
According to Petitioner’s declarant, under Japanese law in effect in
1973‒1975, the complete version of Nakamura (Ex. 1004) was “made
available to the public on May 26, 1975, i.e., the same day [the condensed
version of Nakamura] published.” Ex. 1044 ¶ 14. Thus, according to
Petitioner’s declarant, to gain access to the full version of Nakamura, a
member of the public need only present identifying details of the
application, available from the published condensed version, to be given
access to the full version. Pet. Reply 21; Ex. 1044 ¶¶ 15‒17. Based on this
evidence, we find that the condensed version of Nakamura, as published in
the Japanese Utility Model Gazette, would have been a roadmap to the full
version of the Nakamura application, so that the contents of the full
Nakamura application were sufficiently accessible to the public and to
persons skilled in the pertinent art to qualify as a “printed publication.” This
is sufficient to make Nakamura (Ex. 1004) publicly accessible as of May 26,
1975.
We determine that Petitioner has provided enough evidence to show
that Nakamura qualified as a printed publication more than a year before
May 12, 1999, the earliest possible effective filing date of the challenged
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claims of the ’240 patent, including: a copy of the condensed version of
Nakamura, which included classification codes and was published in the
Japanese Utility Model Gazette; a copy of the complete application,
available upon request from the Japan Patent Office using the information
provided in the published condensed version; and Mr. Miyano’s evidence of
Japan Patent Office practice at the time of Nakamura’s publication.
Accordingly, Petitioner has established that Nakamura qualifies as prior art
under § 102(b). See Pet. 26.
E. Unpatentability over Nakamura and Takahashi
1. Nakamura
Nakamura discloses:
a heat pipe that transfers heat by a sealed container made of
thermally conductive metal plates and a refrigerant enclosed in
the sealed container, wherein a portion of one or both of
opposing upper and lower surfaces of the sealed container has a
molded concavity and a hole for component installation is
provided in a concavity joining surface where the concavity and
a flat surface opposing the concavity or an opposing concavity
are joined together.
Ex. 1004, 4;16 see also Ex. 2012, 5 (describing a sealed container made of
“sheet metal,” a coolant in the sealed container, recessed portions in the
upper and lower faces of the sealed container, and holes in the recess joint
surfaces). Figures 3 and 4 are reproduced below:

16 In citing to Nakamura in this and following sections, we follow
Petitioner’s convention of citing to the numbers in parentheses at the bottom
center of the translation rather than those used in numbering the pages of the
exhibit overall. We also omit the translator’s marginalia, parentheticals, and
italics.
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Figures 3 and 4 illustrate examples of a heat pipe of Nakamura’s invention,
with Figure 3 being a perspective view and Figure 4 being a partial
cross-sectional view of Figure 3 at cutting plane line IV–IV. Ex. 1004, 4, 7;
Ex. 2012, 5‒6, 8. “In Figures 3 and 4, 7 is a sealed container where thin
plates of a material with favorable thermal conductivity such as copper or
aluminum are formed into a sealed configuration by soldering, brazing, or
the like and 8 is a wick that . . . is affixed to an inner-wall surface of the
sealed container 7.” Ex. 1004, 5; see also Ex. 2012, 6 (describing that
reference numeral 7 denotes a sealed container “made of a thin sheet of a
high thermal conductivity material” that is formed to be “airtight by
soldering, brazing or the like” and has wick 8 attached to the interior wall
surfaces of sealed container 7). Nakamura describes concavities in the
sealed container:
On both surfaces of the sealed container 7, a concavity 9
of a depth one-half of a thickness of the sealed container 7 is
provided via pressing or the like in a state of the thin plate prior
to being assembled into the sealed configuration. A concavity
joining surface 9a of the concavity 9 is finished flat after
pressing is completed and is applied in advance to preliminary
soldering. The concavity joining surfaces 9a can then be
readily and [reliably] adhered by being pressurized and heated
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before and after work of forming the sealed container 7 by
soldering or the like. Then, after air inside the sealed container
7 is extracted, a refrigerant is enclosed in an interior hollow
portion.
Ex. 1004, 5; see also Ex. 2012, 6 (similar translation).
To install the heat pipe to component 10 to be cooled, holes 11 “can
be drilled into the concavity joining surfaces 9a and installation can be
performed via a bolt or the like via a washer 12.” Ex. 1004, 5–6; see also
Ex. 2012, 6‒7 (similar translation). “By mounting the component to be
cooled in this manner, the component to be cooled can be made to directly
contact the heat panel [and, t]herefore, an efficiency of heat transfer is very
favorable.” Ex. 1004, 6; see also Ex. 2012, 7 (similar translation).
2. Takahashi
Takahashi discloses a heat pipe “fixed with screws for mounting
heating elements, such as transistors, or the like.” Ex. 1005, 3:14–15, 26–
29. By way of illustration, Takahashi Figures 3 and 4 are reproduced below.

Figures 3 (left) and 4 (right) show cross-sectional views of one embodiment
of the disclosed heat pipe “wherein the inside of a square tube container (2)
with both ends sealed [and] made of aluminum . . . is divided into a gas-
phase hydraulic fluid passage (5) on the upper side and a liquid-phase
hydraulic fluid passage (6) on the lower side by an intermediate partition
wall (3).” Id. at 4:48–57; see id. at 8:9–11. The container is formed as
follows:
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[T]he container (2) is provided with a first plate member (11) that
has a concave part for hydraulic fluid passage (13) over almost
the total length on one side, a peripheral wall (4) surrounding it,
and an intermediate partition wall (3); and a second plate
member (12) in a strip shape for covering the opening of the
concave part for hydraulic fluid passage (13).
Id. at 4:65–5:4.
The container (2) is formed by mutually superimposing
the first and second plate members (11) and (12) that constitute
a container (2) and bonding by a vacuum brazing method the tip
of the peripheral wall (4) of the first plate member (11), the
peripheral edge part of the second plate member (12) in a strip
shape, the tip of the intermediate partition wall (3) of the first
plate member (11), and the facing surface of the junction for
mounting heating elements (16) and the second plate
member (12).
Id. at 5:12–20.
The screws (9) for mounting heating elements (10), such
as transistors, or the like, are directly fastened into the
container (2) in the junction portion for mounting heating
elements (16) in an intermediate partition wall (3), allowing the
heating elements (10) to be in direct contact with the wall
surfaces of the container (2). Therefore, thermal resistance of a
heat pipe (1) is small, and even when the pipe is installed
horizontally, for example, it can be operated normally, and has
excellent heat radiation performance. The plate fins (15)
[(shown in Figure 2)] are mounted in parallel at the end of the
evaporator side of the container (2).
Id. at 5:27–38.
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Takahashi Figures 5 and 6 are reproduced below.

Figures 5 (left) and 6 (right) show cross-sectional views of a second
embodiment with plate members (11) and (12) “constitut[ing] a square tube
container (2) with both ends sealed [and] both built by press-molded
aluminum plates.” Id. at 6:4–9; see id. at 8:12–16. This square tube
container includes flanges:
The tips of the peripheral walls (4) and (4) of both plate
members (11) and (12) are provided with flanges (17) and (17),
respectively, where these plate members (11) and (12) are
superimposed with the concave parts (13) and (14) facing
inwards, for example, the flanges (17) and (17) at the tips of the
peripheral walls (4) and (4) of both plate members (11) and (12),
and the tips of intermediate partition walls (3) and (3) are joined
to each other by a vacuum brazing method to form a
container (2).
Id. at 6:14–22.
3. Analysis of Claims 9, 10, and 12
Independent claim 9 recites “at least one hollow column having an
exterior surface positioned within said vapor chamber with a first portion of
said exterior surface sealingly bonded to at least one of said first and second
plates, and having an open first end that opens through said first plate and an
open second end that opens through said second plate so as to form at least
one mounting hole that is isolated from said vapor chamber.” Ex. 1001,
6:15‒22. By virtue of its dependency from claim 9, claim 10 also includes
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the “hollow column” limitation. Id. at 6:23. Independent claim 12 similarly
recites “at least one hollow column that is integral with said first plate and
which projects outwardly relative to said inner surface.” Id. at 6:57‒59.
Petitioner’s articulated ground is premised on its assertion that the
term “hollow column” means “a columnar structure defining an unfilled or
empty space.” Pet. 26 (quoting Ex. 1019, 6 (Patent Owner’s proposed
construction in the district court)); see id. at 34 (quoting this same language
in comparing Nakamura to the claim recitation). We understand Petitioner
to contend that concavity 9 in Nakamura’s top plate constitutes the hollow
column. Pet. 33–36 (claim 9), id. at 72‒73 (claim 12). Some of Petitioner’s
contentions are explained via the annotated figures reproduced below.
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Pet. 34; see also id. at 73 (showing similar annotated figures). The figures
above are an enlarged and annotated portion of Nakamura’s Figures 3 and 4,
annotated by Petitioner, and depict concavity 9 formed in the top plate with
a depth of one-half the thickness of the overall container 7. Ex. 1004, 5;
Ex. 2012, 6. Nakamura’s concavity joining surface 9a of the concavity
formed in the top plate is sealed together by soldering or the like to an
opposite concavity joining surface 9a of a concavity formed in the bottom
plate, and bolt hole 11 is drilled through the concavity joining surfaces.
Ex. 1004, 5‒6; Ex. 2012, 6‒7. Petitioner contends, as indicated in the
annotated figure, that the “(red) cylindrical-bowl shaped structure
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encompassing the concave area ‘9’ meets the ‘columnar structure’
requirement in the proposed construction for ‘hollow column,’ while the
(grey) cavity ‘9’ inside, which the ‘columnar structure’ is ‘defining,’ meets
the ‘unfilled or empty space’ requirement.” Id. at 35; see also id. at 72
(identifying the concavity indicated in red is the claimed hollow column).
As discussed above in our claim interpretation analysis, the
Specification of the ’240 patent distinguishes between spacers formed by
“depressions” and spacers formed by “hollow columns.” See Ex. 1001,
2:12–46. Specifically, we interpret “hollow column” in the claims to mean a
spacer formed by a column that extends from one plate to the outer surface
of the opposite plate. See supra § II.B.2. We do not construe “hollow
column” to encompass depressions, described in the ’240 patent, that extend
from one plate to the inner surface of the opposite plate. Id.
In keeping with our understanding of “hollow column,” Petitioner
asserts that the second spacer embodiment in the ’240 patent, that of a
column 44 with a through-hole 12, is the ’240 patent’s disclosure of the
recited “hollow column.” Pet. 37 (quoting Ex. 1001, 4:21–25). Despite this
admission, however, Petitioner bases its grounds on the assertion that the
“hollow column” in Nakamura is a concavity, which is a depression-like
structure similar to the ’240 patent’s first spacer embodiment (depression
26). See id. at 36. Specifically, as shown in Figure 4 relied on by
Petitioner,17 Nakamura’s concavity 9 extends from one plate to the inner

17 Petitioner points to Nakamura’s disclosure of another heat pipe utilizing a
pipe as a fastener hole rather than concavities. Pet. 39–40 (discussing
Nakamura, Fig. 2). Petitioner makes clear that it is not relying on that
disclosure to meet the “hollow column” limitation and does not argue, with
any accompanying reasoning, that the disclosure renders the claimed subject
matter obvious. See id.
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surface of the opposite concavity 9 formed in the opposite plate. Ex. 1004,
Fig. 4; Ex. 2012, Fig. 4. As noted above, this depression-like spacer is not a
disclosure of a “hollow column” as claimed.
For these reasons, Petitioner has failed to show by a preponderance of
the evidence that the combination of Nakamura and Takahashi renders
claims 9, 10, and 12 unpatentable under 35 U.S.C. § 103(a).
4. Analysis of Claim 11
Independent claim 11 recites “at least one spacer extending between
and contacting said first and second plates.” Ex. 1001, 6:49‒50. Petitioner
contends that a set of opposing concavities 9 formed in the upper and lower
plates of Nakamura’s heat pipe form a spacer having an H-shaped cross-
section. Pet. 65‒66. Thus, the “spacer” identified by Petitioner includes the
concavity joining surfaces 9a on the ends of each opposed concavity 9.
Petitioner further contends, however, that “the upper half of this
structure . . . is formed by the upper plate in Nakamura and is ‘contacting’
the lower plate at the ‘concavity joining surface’ labeled as ‘9a’” and that
“the lower half of this structure . . . is formed by the lower plate in
Nakamura and is ‘contacting’ the upper plate at the . . . ‘concavity joining
surface’ labeled ‘9a’ as well.” Id. at 65. In this assertion, Petitioner appears
to rely on the same structure to satisfy both the spacer and the plate.
Petitioner argues that the claim language “extending between and
contacting” “allows for integral or non-integral spacers” and “does not
exclude a situation where a depression extends from one plate and contacts
another.” Pet. Reply 30‒31.
Patent Owner argues that Nakamura does not disclose a spacer
extending between and contacting first and second plates. PO Resp. 47.
Specifically, Patent Owner argues that Nakamura’s concavities are “integral
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with the portions of the container in which they are formed, and a concavity
cannot be said to contact the same plate in which it is formed without
rendering the term ‘contacting’ in claim 11 meaningless.” Id. at 48 (citing
Ex. 2002 ¶¶ 116, 145). Patent Owner argues that “Petitioner’s argument
ignores the actual language of claim 11 reciting ‘at least one spacer
extending between and contacting’ both plates, which is not disclosed or
taught in either Nakamura or Takahashi.” PO Sur-Reply 16.
For the reasons discussed above in our construction of “spacer
extending between and contacting said first and second plates,” we agree
with Patent Owner’s reading of this claim language to exclude depressions,
i.e., Nakamura’s concavities 9. See supra § II.B.3. We agree with Patent
Owner that Petitioner’s position reads the “contacting” language out of the
claim. For these reasons, Petitioner has failed to show by a preponderance
of the evidence that the combination of Nakamura and Takahashi renders
claim 11 unpatentable under 35 U.S.C. § 103(a).
5. Analysis of Claim 13
For the reasons discussed below, Petitioner has shown by a
preponderance of the evidence that the combination of Nakamura and
Takahashi renders claim 13 unpatentable under 35 U.S.C. § 103(a). We
address each claim limitation below.
a) “A heat pipe for spreading heat”
In its discussion of the unpatentability of claim 13 over Nakamura and
Takahashi, Petitioner contends that Nakamura discloses a heat pipe for
spreading heat comprising a first plate and a second plate arranged in spaced
apart confronting relation to the first plate. Pet. 87, 89 (incorporating the
analysis in Section IX.E.4 on Pet. 74). According to Petitioner, Nakamura
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discloses a heat pipe that spreads heat by “a sealed container made of
thermally conductive metal plates.” Pet. 49 (citing Ex. 1004, 1).
Patent Owner argues, with reference to Dr. Faghri’s testimony, that
“nothing in Nakamura discloses or teaches heat spreading, and a POSITA
would not have understood Nakamura to describe heat spreading.” PO
Resp. 42 (Ex. 2002 ¶¶ 73, 130). Patent Owner raises this argument in the
context of arguing that Nakamura does not disclose a “vapor chamber” as
recited in the body of the claim. Id. Patent Owner does not assert in its
Response18 that the language “for spreading heat” in the preamble of claim
13 is itself limiting, and instead seeks to insert the requirement of spreading
heat into the construction of “vapor chamber.”
As discussed above, both parties propose a construction of “vapor
chamber” that includes an aspect of heat transfer. We adopt Petitioner’s
construction of “vapor chamber” that includes the requirement that the vapor
chamber transport or spread heat. We address this aspect of the claim
language below in our analysis of the prior art’s disclosure of a “vapor
chamber.”
Although Patent Owner does not expressly argue in its Response that
the language “for spreading heat” in the preamble of claim 13 is limiting, to
the extent Patent Owner’s argument that Nakamura does not disclose heat
spreading incorporates this language of the preamble, we address the effect

18 In its Reply, Petitioner argues that the preamble of claim 13 is not
limiting. Pet. Reply 3‒4. In response to this argument, Patent Owner
argues, for the first time in the Sur-Reply, that because the patent title refers
to heat spreading and the patent repeatedly refers to the invention as a “heat
pipe heat spreader” or “heat spreader,” the preamble should be limiting.
Sur-Reply 2‒3 (citing Poly-America LP v. FSE Lining Tech. Inc., 383 F.3d
1303 (Fed. Cir. 2004)).
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of this preamble language on the claim scope. We find that the preamble
language “for spreading heat” is merely a statement of intended use and is
not limiting.
“[A]s a general rule preamble language is not treated as limiting.”
Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1347 (Fed.
Cir. 2012) (citing Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336,
1346 (Fed. Cir. 2002)). “In general, a preamble limits the invention if it
recites essential structure or steps, or if it is ‘necessary to give life, meaning,
and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). “Whether to
treat a preamble as a limitation is ‘determined on the facts of each case in
light of the overall form of the claim, and the invention as described in the
specification and illuminated in the prosecution history.’” Deere & Co. v.
Bush Hog, LLC, 703 F.3d 1349, 1357 (Fed. Cir. 2012) (quoting Applied
Materials, Inc. v. Advanced Semiconductor Materials America, Inc., 98 F.3d
1563, 1572–73 (Fed. Cir. 1996)); see also Poly-America, 383 F.3d at 1309‒
1310 (discussing same). “[A] preamble is not limiting ‘where a patentee
defines a structurally complete invention in the claim body and uses the
preamble only to state a purpose or intended use for the invention.’”
Catalina, 289 F.3d at 808 (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed.
Cir. 1997)).
Here, the body of claim 13 recites a first plate having a
circumferential edge lip and a depression, a second plate including a
circumferential edge lip and an opening, the edge lips of the plates sealingly
bonded together to define a vapor chamber, where the depression is
sealingly bonded to the second plate to align with the opening to form a
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mounting hole. The body of this claim does not recite a “heat pipe for
spreading heat.” The preamble’s reference to “for spreading heat” merely
identifies an intended use for the claimed structure. Patent Owner has not
demonstrated that this use itself imposes any structural requirement on the
claimed structure beyond what is required by the body of the claim. Nor has
it shown any “reliance on the preamble during prosecution to distinguish the
claimed invention from the prior art.” Catalina, 289 F.3d at 808. As in
Catalina, “deletion of the disputed phrase from the preamble. . . [would] not
affect the structural definition or operation of the [invention] itself.” Id. at
810.
To the extent the claim term “vapor chamber” includes, among other
things, the function of spreading heat, we address Patent Owner’s arguments
below. For the reasons discussed below, even were the preamble treated as
limiting, we find that Nakamura’s device meets this limitation.
b) “a first plate having a circumferential edge lip bounding an inner
surface and at least one depression which projects outwardly relative to
said inner surface”
In its discussion of the unpatentability of claim 13 over Nakamura and
Takahashi, Petitioner contends that Nakamura, as modified by Takahashi,
discloses a first plate having a circumferential edge lip bounding an inner
surface. Pet. 87 (incorporating the analysis in Section IX.E.2 on Pet. 70‒
72). Petitioner identifies, in annotated Figure 4 of Nakamura, plate material
from which concavities 9, 9 extend downwardly, as the first plate. Pet. 70
(citing annotated Figure 4 of Nakamura). We agree with Petitioner that
Nakamura discloses, as shown in Figure 4, a heat pipe having a top, first
plate. Ex. 1004, Fig. 4; Ex. 2012, Fig. 4.
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Petitioner asserts that Takahashi discloses a heat pipe formed with a
first plate having a circumferential edge lip because each of Takahashi’s
plates contain flanges 17 at the tips, which are brazed together to form a
sealed container. Id. at 71. Petitioner asserts that it “would have been
obvious to combine Nakamura with Takahashi in a manner resulting in the
first plate “having a circumferential edge lip bounding an inner surface.” Id.
at 71.
We agree with Petitioner that Takahashi discloses a heat pipe (2)
having a first plate (11). Ex. 1005, 6:7‒9, Figs. 5, 6. Takahashi’s plate (2)
includes a flange (17) at the tip of the peripheral wall (4) of the plate. Id. at
6:14‒16; Figs. 5, 6. Takahashi teaches that “[t]he tips of the peripheral walls
(4) and (4) of both plate members (11) and (12) are provided with flanges
(17) and (17), respectively, where . . . the flanges (17) and (17) . . . are
joined to each other by a vacuum brazing method to form a [sealed]
container (2).” Ex. 1005, 6:14‒22.
Patent Owner contests Petitioner’s assertion that Takahashi’s flanges
extend about the entire circumference of each plate. PO Resp. 62 (citing
Ex. 2002 ¶ 156). We disagree with Patent Owner. For the reasons that
follow, we understand Takahashi’s second embodiment, shown in Figures 5
and 6, to include flanges extending around the entire circumference of the
container. Takahashi describes, in detail, a first embodiment of heat pipe,
shown in Figures 1 through 4. Ex. 1005, 4:48‒6:3; 8:7‒11. Figure 1 shows
container (2) provided with first plate member (11) with concave fluid
passage (13) and “peripheral wall (4) surrounding [concave fluid passage
(13)].” Id. at 4:65‒5:1, Fig. 1. Thus, as shown in Figure 1, peripheral wall
(4) extends around the entire circumference of first plate member (11). Id.
Takahashi describes that container (2) also includes second plate member
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(12). Id. at 5:1‒4; Fig. 1. Takahashi discloses sealing its heat pipe around
its entire circumference by vacuum brazing the tip of “peripheral wall (4) of
first plate member (11), the peripheral edge part of the second plate member
(12) in a strip shape.” Id. at 5:12‒20 (discussing the first embodiment).
Takahashi then describes that the second embodiment, shown in cross-
section in Figures 5 and 6, is “equivalent” to the first embodiment. Id. at
8:12‒16 (describing the Figures). Takahashi describes that this second
embodiment is different from the first embodiment in that first and second
plate members (11) and (12) are built by press-molded aluminum plates with
concave parts for hydraulic fluid passages (13) and (14) facing each other
and “peripheral walls (4) (4) surrounding these [concaves].” Id. at 6:4‒13.
Thus, we find that Takahashi discloses that peripheral walls (4) on each of
first and second plate members (11) and (12) of this second embodiment
extend around the entire circumference of each plate, similar to peripheral
wall (4) of the first embodiment.
Takahashi describes that the tips of peripheral walls (4) and (4) of
both plate members (11) and (12) are provided with flanges (17) and (17)
and these flanges are joined to each other by vacuum brazing to form
container (2). Id. at 6:14‒22. We agree with Dr. Pokharna that a person
having ordinary skill in the art would have read Takahashi’s second
embodiments as likewise having a seal about the entire periphery, despite
the fact that the Figures of these additional embodiments depict only a
cross-section. Pet. Reply 32 (citing Ex. 1032 ¶ 65). As explained by Dr.
Pokharna, “implementing a flange about the entire perimeter of those
devices would help to ensure to that those devices are vacuum sealed and
operate correctly.” Ex. 1032 ¶ 65. Thus, we find that Petitioner has shown
that Nakamura discloses a first plate and Takahashi discloses a first plate
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with a circumferential edge lip. We now turn to Petitioner’s reason to
combine these teachings.
As to motivation to combine, Petitioner asserts that “both Nakamura
and Takahashi disclose heat pipes that include through holes located at the
interior regions of the heat pipes for securing them onto the heat generating
elements.” Pet. 53. Based on this assertion, Petitioner argues, “[t]hus, in
general, a skilled artisan would have been motivated to combine the features
in the two references already because the devices in Nakamura and
Takahashi are similar and analogous.” Id. (citing Ex. 1002 ¶ 83).
Simply noting that Nakamura and Takahashi disclose similar devices
made using related processes, however, says nothing about why one of
ordinary skill in the art would combine them in a manner that renders the
claimed subject matter obvious. See Kinetic Concepts, Inc. v. Smith &
Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting Innogenetics,
N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008) (“We must
still be careful not to allow hindsight reconstruction of references to reach
the claimed invention without any explanation as to how or why the
references would be combined to produce the claimed invention.”)).
Petitioner’s argument that the references are “similar and analogous” is not
adequate reasoning, by itself, to support a conclusion of obviousness.
Petitioner further reasons that because the references disclose heat
pipes created using “related manufacturing processes of ‘pressing’ and
‘brazing,’” a skilled artisan would have been motivated to combine them.”
Pet. 53. Specifically, Petitioner argues:
[A] skilled artisan would have been motivated to combine
Takahashi’s “flanges (17) and (17)” with Nakamura’s sealed
container because it would have made sealing the edge,
periphery, or circumference of the “sealed container” in
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Nakamura easier by simply “pressing,” “brazing,” and or
“soldering” the two “flanges (17) and (17)” together. That is,
because these “flanges (17) and (17)” are protruding outwardly
and exposed on the outside, it is easier to press and clamp
together while heating them to make them bond and seal together
during the manufacturing processes.

Moreover, because these were well-known manufacturing
processes, a skilled artisan would have reasonably expected the
combination of Nakamura and Takahashi to yield predictably
successful results with easier and better bonded and sealed edge,
periphery, or circumference of the sealed container in Nakamura.
The combination would have been straight forward for a skilled
artisan without having to change the functionalities of either
Nakamura or Takahashi. Thus, a POSITA would have been
motivated to combine these related features in Nakamura and
Takahashi when reading both references together.
Pet. 54–55 (citing Ex. 1002 ¶ 84); Pet. Reply 31 (citing Ex. 1032 ¶¶ 57‒65).
Patent Owner attacks Petitioner’s evidence of a reason to combine
Nakamura and Takahashi and Petitioner’s assertion that, as combined, the
modified heat pipe of Nakamura would have circumferential edge lips.
Specifically, as to a reason to combine, Patent Owner argues that
“incorporating the flanges of Takahashi in the heat pipe of Nakamura would
have introduced additional junction points and gaps in the capillary wick,
which a POSITA would have been motivated to avoid.” PO Resp. 61
(referring to argument in Section VII.E). See also Ex. 2002 ¶ 135
(“adopting a two-plate construction in Nakamura would run counter to
Nakamura’s discussions of ‘manufacturing disadvantages such as the
refrigerant leaking from a junction’ by creating additional junction points.”
(citing Ex. 1004, 4)).
We do not give much weight to Dr. Faghri’s testimony because it is
based on an incorrect premise that Nakamura is not constructed of two
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plates. See Ex. 2002 ¶¶ 135, 154‒55. As discussed further below in our
analysis of the second plate limitation of claim 13, Nakamura discloses a
heat pipe formed of two plates. Ex. 1004, Fig. 4; Ex. 2012, Fig. 4. We are
convinced by Dr. Pokharna’s testimony that Takahashi’s flanges would have
been seen by a person having ordinary skill in the art as an improvement to
the method of brazing and sealing Nakamura’s container because it would be
easier to press or clamp together the flanges protruding from the edges of the
plates to braze the plate edges together. Ex. 1002 ¶ 84; Ex. 1032 ¶ 59.
We further find that Petitioner has shown that a person having
ordinary skill in the art would have had a reasonable expectation of success
in modifying Nakamura to improve sealing by employing Takahashi’s
flanges. Pet. 54‒55 (citing Ex. 1002 ¶ 84), 87 (citing Ex. 1002 ¶ 111). For
instance, we credit Dr. Pokharna’s testimony that the manufacturing
processes disclosed in Takahashi of pressing together the flanges and
brazing or soldering them to form a sealed container “were well-known
manufacturing processes” and that “a skilled artisan would have reasonably
expected the combination of Nakamura and Takahashi to yield predictably
successful results.” Ex. 1002 ¶ 84; Ex. 1032 ¶ 59.
Dr. Faghri testifies that adopting Takahashi’s flanges would have
complicated Nakamura’s construction because it would have created gaps in
Nakamura’s capillary structure. Ex. 2002 ¶ 155. Nakamura, however,
already describes using brazing or soldering to form the assembly, so it is
unclear how Dr. Faghri proposes that use of Takahashi’s flanges, joined by
brazing or soldering, would disrupt the capillary action in Nakamura’s heat
pipe. Ex. 1004, 3, 6; Ex. 2012, 3, 6. Dr. Faghri’s position is also belied by
the ’240 patent itself, which describes the joining of plates by soldering or
brazing as “conventional means” of joining plates. Ex. 1001, 3:26‒35.
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Patent Owner argues that because Takahashi fails to teach that the
“flanges” extend around the circumference of Takahashi’s container, the
proposed modification of Nakamura with Takahashi’s flanges would not
result in “circumferential edge lips.” PO Resp. 62 (arguing that Nakamura’s
heat pipe uses end caps, and Takahashi’s embodiment with end caps omits
its flanges) (citing Ex. 2002 ¶¶ 156‒158). We disagree with Patent Owner’s
reading of Takahashi. As discussed above, we find that Takahashi discloses
flanges (17) that extend around the entire circumference of each of plates
(11) and (12).
Dr. Faghri also opines that Takahashi discloses a container with
flange-like structures “at the tips of the peripheral walls” in embodiment (b)
(i.e., the second embodiment of Figures 5 and 6) and a container with end
caps and no flanges in embodiment (c) (i.e., the third embodiment of Figures
7 and 8), and Takahashi does not teach any reason for replacing end caps,
such as in Nakamura, with flanges. Ex. 2002 ¶¶ 156, 157. As discussed
above, we agree with Dr. Pokharna’s reasoning as to why a person having
ordinary skill in the art would have found it beneficial to use Takahashi’s
flanges, in place of Nakamura’s end caps, to seal the heat pipe. Ex. 1002
¶ 84; Ex. 1032 ¶ 59.
Turning back to the remainder of this claim limitation, Petitioner
contends that Nakamura discloses at least one depression that projects
outwardly relative to the inner surface of the first plate. Pet. 87‒88
(asserting that Nakamura’s concavity 9 extends downwardly from the top
plate such that it projects outwardly relative to the inner surface of the top
plate) (citing Ex. 1002 (Pokharna Decl.) ¶ 112). We find adequate evidence
in Nakamura to support this finding. Nakamura’s concavity 9 extends from
its top plate in a manner similar to the way depressions 26 project outwardly
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relative to inner surface 34 of cover 20 in Figures 1 and 2 of the ’240 patent.
Compare Pet. 88 (showing annotated Figure 4 of Nakamura) with Ex. 1001,
Figs. 1, 2 (showing depressions 26).
Patent Owner does not contest that Nakamura’s concavity 9 is a
depression. Rather, Patent Owner contests Petitioner’s assertion that
Nakamura’s concavity 9 is sealingly bonded to a second plate. PO
Resp. 51‒52. This contention is addressed below.
Thus, Petitioner has demonstrated by a preponderance of the evidence
that Nakamura, as modified by Takahashi, would have led one having
ordinary skill in the art to “a first plate having a circumferential edge lip
bounding an inner surface and at least one depression which projects
outwardly relative to said inner surface,” as recited in claim 13.
c) “a second plate arranged in spaced apart confronting relation to said
first plate and including a circumferential edge lip bounding an inner
surface and at least one opening through said second plate”
In its discussion of the unpatentability of claim 13 over Nakamura and
Takahashi, Petitioner contends that Nakamura’s heat pipe includes a first
plate and a second plate arranged in spaced apart confronting relation to the
first plate. Pet. 87, 89 (incorporating the analysis in Section IX.E.4 on Pet.
74). Petitioner shows, in annotated Figure 4 of Nakamura, how these plates
are arranged with confronting relation to each other. Pet. 74 (citing
annotated Figure 4 of Nakamura).
Patent Owner argues that Nakamura does not disclose two plates and
that Petitioner’s translation is “flawed” because the translator fails to
establish his credentials and experience.19 PO Resp. 45‒46. Patent Owner

19 Because we do not rely on Petitioner’s translation of Nakamura for this
disputed finding, we do not need to address Patent Owner’s argument
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argues that Petitioner’s translation, which uses the plural “plates,” should be
given little weight. Id. at 46. Patent Owner provides its own translation of
Nakamura, along with translations from other sources, which Patent Owner
asserts all support a finding that Nakamura discloses a container made from
a single plate. PO Resp. 45‒45 (citing Exs. 2012‒2015).
We find the translations of Nakamura on the issue of a single plate
versus two plates to be inconclusive. For example, Petitioner’s translation
describes “[a] heat pipe that transfers heat by a sealed container made of
thermally conductive metal plates and a refrigerant enclosed in the sealed
container.” Ex. 1004, 1. Patent Owner’s translation of the same phrase is
“[a] heat pipe comprising a sealed container made of a thermally conductive
sheet metal and a coolant sealed in the sealed container for performing heat
transfer.” Ex. 2012, 2. The latter translation of “sheet metal” describes the
type of material used, but is unclear as to the number of sheets.
Petitioner’s translation also describes that “[i]n Figures 3 and 4, 7 is a
sealed container where thin plates of a material with favorable thermal
conductivity such as copper or aluminum are formed into a sealed
configuration by soldering, brazing, or the like.” Ex. 1004, 6. Patent
Owner’s translation of the same phrase is “[i]n FIG. 3 and FIG. 4, reference
numeral 7 denotes a sealed container made of a thin sheet of a high thermal
conductivity material, such as copper, aluminum or the like.” Ex. 2012, 6.
Again, this sentence of Nakamura focuses on the type of material used and is
not clear as to the number of sheets. The other translations submitted by

regarding whether Petitioner’s translator adequately established his
credentials and experience. For all other findings in this Decision for which
we rely on a translation of Nakamura, we cite to and find support in both
Petitioner’s and Patent Owner’s translations.
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Patent Owner do not further clarify this issue. Thus, we do not rely on the
written disclosure of Nakamura to determine the number of plates used to
form the sealed container.
We look instead to the Figures of Nakamura and the expert testimony
about how a person having ordinary skill in the art would have understood
Nakamura’s sealed container to be constructed.
Patent Owner argues, with reference to Dr. Faghri’s testimony, that a
person having ordinary skill in the art would have understood Nakamura’s
heat pipe container to be made from a single plate. Id. at 45‒47 (citing
Ex. 2002 ¶¶ 71‒72, 135).
Petitioner argues that Nakamura’s Figure 4 clearly shows two
different plates. Id. (citing Ex. 1032 ¶¶ 39‒40). In the cited paragraphs of
Dr. Pokharna’s declaration, he attests that Nakamura’s top and bottom
plates, as shown in Figure 4, have different cross-hatching, which indicates
that the plates are different. Ex. 1032 ¶ 40. Dr. Pokharna criticizes Dr.
Faghri’s testimony for failing to address Figure 4, which Dr. Pokharna
pointed to in his original Declaration as support for first and second plates.
Id.; Ex. 1002 ¶ 62.
Patent Owner responds that Petitioner’s reliance on Figure 4, which
shows only a partial cross-section, is “misguided.” PO Sur-Reply 17. Patent
Owner further argues that Petitioner’s discussion of “different
cross-hatching” improperly raises a new theory because it was raised for the
first time in Petitioner’s reply. Id. at 17‒18. Patent Owner also argues that
to the extent the cross-hatching in Figure 4 is discernible, there appears to be
no difference between the cross hatching on the asserted top and bottom
plates, with similar cross-hatch lines extending at the same angle in both
portions. Id. at 18 (citing Ex. 2002 ¶¶ 68, 71‒72, 133‒135).
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First, we disagree with Patent Owner’s characterization of Petitioner’s
reply arguments regarding cross-hatching to improperly raise a new theory.
In the Petition, Petitioner and Dr. Pokharna pointed to Figure 4 of Nakamura
as support for the assertion that Nakamura discloses two plates. Pet. 30‒31,
49, 74; Ex. 1002 ¶ 62. Petitioner’s further arguments about what is shown in
this Figure were raised properly in response to Patent Owner’s arguments
contesting Petitioner’s reading of Nakamura’s disclosure.
Second, we do not credit Dr. Faghri’s testimony as to how a person of
ordinary skill would have understood Nakamura to be constructed because
this testimony lacks sufficient evidentiary support. Dr. Faghri testified that a
person of ordinary skill, looking at Nakamura’s figures alone, “would have
expected [it] to have been constructed from either a unitary tube member
that is formed with a generally rectangular profile (for example, by
compressing and shaping a cylindrical pipe or by an extrusion process) or a
single sheet of metal bent and sealed along one seam, and then fitted with
appropriate end caps.” Ex. 2002 ¶ 133. This testimony is premised on Dr.
Faghri’s statement that “[t]his was the conventional way that heat pipes were
being constructed at the time of . . . Nakamura’s asserted disclosure[] (ca.
1973).” Id. Dr. Faghri fails, however, to cite any evidence to support this
statement as to the conventional way of constructing heat pipes in 1973.
Third, we find contrary evidence in the record. Specifically, we agree
with Petitioner that Nakamura’s Figure 4 appears to show two plates with
different cross-hatching. Pet. Reply 27. Further, Dr. Pokharna provides
sound reasoning as to why, based on Nakamura’s construction, one having
ordinary skill in the art would have understood Nakamura’s heat pipe to be
made using two plates. Ex. 1032 ¶¶ 41‒55. Further, Petitioner submitted
evidence, circa 1973, showing that it was known in the art at the time to
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make heat pipes from two plates. Ex. 1032 ¶¶ 44‒45 (citing Exs. 1036,
1037). This evidence calls into question the accuracy of Dr. Faghri’s
unsupported testimony as to the conventional way heat pipes were
manufactured at the relevant time. We find that this evidence supports the
view that Nakamura discloses a container formed from two plates.
Turning to the remainder of the claim limitation, Petitioner contends
that it would have been obvious to modify Nakamura’s second plate with
Takahashi’s flanges to result in “a circumferential edge lip bounding an
inner surface” of the second plate. Pet. 89 (referring back to Section IX.E.5
on page 76‒77 of Petition); Ex. 1002 ¶ 102. For the same reasons discussed
above with reference to the first plate limitation, we find that Petitioner has
met its burden to show that this proposed modification would have been
obvious to a person having ordinary skill in the art and that the combination
would have led to the circumferential edge lip as claimed. See supra
§ II.E.5.b.
Petitioner also contends that Nakamura’s second plate contains “at
least one opening” therethrough. Pet. 90‒91 (asserting that Nakamura’s
bottom plate corresponds to the second plate, and that the bottom plate has
an opening through which the bolt passes) (citing Ex. 1002 ¶ 115).
Nakamura shows in Figure 4 a bottom plate having an upwardly formed
concavity 9 with a hole formed in the concavity for accommodating a bolt.
Ex. 1004, Fig. 4; Ex. 2012, Fig. 4.
Patent Owner argues that Nakamura’s hole is formed in the concavity
so that it is not formed in the second plate. PO Resp. 52. We fail to find
that this fact distinguishes the claim from Nakamura. Because Nakamura’s
concavity is formed in the plate (i.e., the concavity is an embossed part of
the second plate), the fact that the hole is formed in the concavity does not
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mean that the hole is not also formed in the plate. The concavity is part of
the second plate so that the hole is formed in the second plate.
For these reasons, Petitioner has provided adequate evidence to
demonstrate that Nakamura, as modified by Takahashi, would have led one
having ordinary skill in the art to “a second plate arranged in spaced apart
confronting relation to said first plate and including a circumferential edge
lip bounding an inner surface and at least one opening through said second
plate,” as recited in claim 13.
d) “said edge lips of said first and second plates being sealingly bonded
together so as to define a vapor chamber”
Petitioner contends that Nakamura, as modified to add the flanges of
Takahashi, results in a heat pipe in which the edge lips of the first and
second plates are sealingly bonded together so as to define a vapor chamber.
Pet. 91 (incorporating the analysis in Section IX.E.7 on Pet. 80‒81 (citing
Ex. 1002 ¶ 105) and Section IX.E.8 on Pet. 81‒82 (citing Ex. 1002 ¶ 106)).
As discussed above, we find that Petitioner has provided adequate evidence
and reasoning of a motivation to employ Takahashi’s flanges in Nakamura’s
heat pipe. Further, we agree that the modification to add Takahashi’s
flanges to Nakamura’s container results in the circumferential edges lips on
each plate being sealingly bonded together. Patent Owner disputes,
however, Petitioner’s contention that the resulting container defines a “vapor
chamber.” PO Resp. 41‒43.
Patent Owner’s argument is based on its proposed construction of
“vapor chamber” to require two- or three-dimensional heat spreading. Id.
13‒21; 41‒43. As discussed above, we adopt Petitioner’s construction of
“vapor chamber” to mean “an enclosed and sealed space or cavity in which a
heat transfer fluid is present to be evaporated (or vaporized) and condensed
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to transport or spread heat.” See supra § II.C.4. We do not construe “vapor
chamber” to require two- or three-dimensional transport of heat within the
chamber. As discussed below, we find that the evaporation and
condensation of Nakamura’s heat transfer fluid within the sealed container
will result in heat being transported or spread.
We find that Petitioner has shown that Takahashi discloses that its
flanges are joined to each other by vacuum brazing to form a sealed
container, and Nakamura discloses that its sealed container provides a sealed
space in which a heat transfer fluid is evaporated. Pet. 80 (citing Ex. 1005,
6:14‒22); id. at 81 (citing Ex. 1004, 2). Specifically, Nakamura discloses a
heat pipe formed as a sealed container. Ex. 1004, 2; Ex. 2012, 2. Nakamura
discloses that the container is airtight and hermetically sealed. Ex. 1004, 3;
Ex. 2012, 3. Nakamura further discloses that the container has a refrigerant
that is added to the container after air is extracted or evacuated therefrom,
and that the refrigerant can be evaporated and condensed to transport or
spread heat. Ex. 1004, 3; Ex. 2012, 3; Ex. 2002 ¶ 63.
Patent Owner argues that Nakamura teaches “one-dimensional heat
flow.” Id. (citing Ex. 2002 ¶¶ 73, 128, 130). Patent Owner provides an
illustration, reproduced below, for purposes of explanation.

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The illustration above appears to be based on Figure 3 of Nakamura, which
depicts a perspective view of a heat pipe, in which Patent Owner has added
heat sources and coloring to indicate hot areas in red and cooling portions in
blue. Patent Owner argues, with reference to this illustration and Dr.
Fahgri’s testimony, that “a POSITA would have understood that heat
sources would be replicated across the top of the heating portion (red), and
that the heat generated by these sources would flow in one dimension toward
the cooling portion (blue) where fins would be located.” Id. (citing Ex. 2002
¶ 130).
Petitioner rebuts Patent Owner’s evidence with reference to Dr.
Pokharna’s testimony and its own illustrations of the heat flow in the ’240
patent and Nakamura, as shown below. Pet. Reply 5 (citing Ex. 1032 ¶¶ 26‒
29).

The illustration on the left is based on Figure 3 of the ’240 patent and shows
a heat source in purple and the heat flow traveling away from the heat source
as red arrows. The illustrations on the right are based on Figure 2(A) and
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Figure 3 of Nakamura and depict a heat source with the heat flow traveling
away from the heat source as red arrows.
Dr. Pokharna testifies that, in the device of the ’240 patent, heat is
transported from a heat source, which is attached to contact plate 18, to heat
sink 16, which is in contact with cover plate 20. Ex. 1032 ¶ 27.
Dr. Pokharna illustrates, in the annotated illustration on the left above, an
external surface of contact plate with a heat source, i.e., an integrated circuit
assembly (shown in purple), attached thereon. Id. ¶ 28. Dr. Pokharna
testifies that “[i]n operation, heat from this integrated circuit would spread
radially outward, as per normal physics” as depicted with the red arrows in
the annotated illustration on the left above. Id. ¶ 29. Dr. Pokharna also
testifies that heat flows toward heat sink 16 (not shown in the annotated
figure) into the page from this point of view. Id.
Petitioner criticizes Dr. Faghri’s testimony as “faulty” because Dr.
Faghri (1) “never explains how heat spreads in the [’240 patent’s] heat
pipe,” (2) does not provide adequate foundation for his opinion that heat
moves in Nakamura’s in one direction, (3) never analyzes Nakamura’s heat
flow when it has just one heat source. Pet. Reply 6.
To the extent we need to resolve this issue of one-dimensional versus
two-dimensional heat transfer, we credit Dr. Pokharna’s testimony that the
heat flow in Nakamura’s heat pipe includes transport of heat in more than
one dimension because his testimony is based on the device shown in
Nakamura having one heat source. Further, we accord Dr. Faghri’s
testimony little weight because it is based on a hypothetical arrangement of
heat sources not shown in the prior art.
For these reasons, Petitioner has provided adequate evidence to show
that Nakamura, as modified by Takahashi, would have led one having
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ordinary skill in the art to “said edge lips of said first and second plates
being sealingly bonded together so as to define a vapor chamber,” as recited
in claim 13.
e) “said at least one depression has an open ended tubular cross-section
and an outer surface, a portion of which outer surface is sealingly
bonded to said second plate so as to coaxially align said at least one
depression with said at least one opening in said second plate thereby to
form a mounting hole that extends through said first plate depression
and said second plate and is isolated from said vapor chamber”
Petitioner contends that Nakamura discloses its depression has an
open ended tubular cross-section and an outer surface, a portion of which
outer surface is sealingly bonded to the second plate, so as to coaxially align
the depression with the opening in the second plate to form a mounting hole
that extends through the first plate depression and the second plate and is
isolated from the vapor chamber. Pet. 91‒97 (by reference to annotations on
Figure 4 of Nakamura) (citing Ex. 1002 ¶¶ 118‒121; Ex. 1004, 5). We agree
with Petitioner’s assertions as explained in the annotated Figure 4 of
Nakamura in the Petition. Specifically, this annotated Figure 4 shows that
Nakamura’s concavity in the top plate has an open ended tubular cross-
section (i.e., it is open at the top of the tubular cross-section), and that this
concavity is coaxially aligned with an opening through a concavity in
Nakamura’s bottom plate to form a mounting hole for a bolt. Further,
Nakamura teaches that concavity joining surfaces 9a can be adhered by
being pressurized and sealed by soldering or the like. Ex. 1004, 5; Ex. 2012,
6. Thus, the portion of the outer surfaces of the concavities surrounding
each hole are sealingly bonded together. Nakamura also discloses that hole
11 formed through the bonded concavities is isolated from the interior of the
sealed container. Ex. 1004, Fig. 4; Ex. 2012, Fig. 4; Ex. 1002 ¶ 121.
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Patent Owner argues that Nakamura does not disclose a depression
having a portion of its outer surface “sealingly bonded to [a] second plate.”
PO Resp. 51. Patent Owner argues that Nakamura describes “one concavity
bonded to another concavity formed in the container walls.” PO Resp. 52
(arguing “neither concavity is bonded to an opposite plate; the concavities
are instead bonded to each other.”). Likewise, Patent Owner asserts that
“because the openings identified by Petitioner are formed in the concavities
(not the alleged plates) of Nakamura’s Figure 4, neither concavity aligns
with an opening in an opposite plate.” Id.
As discussed above, we do not find Patent Owner’s argument
availing. Nakamura’s concavity formed in its lower plate is part of the
lower plate. Thus, the upper concavity, which corresponds to the claimed
depression, is sealingly bonded to the lower plate, by virtue of being bonded
to the lower concavity, and the upper concavity (depression) aligns with a
hole in the lower plate, by virtue of aligning with the hole in the lower
concavity.
For these reasons, Petitioner has provided adequate evidence to show
that Nakamura, as modified by Takahashi, would have led one having
ordinary skill in the art to “said at least one depression has an open ended
tubular cross-section and an outer surface, a portion of which outer surface is
sealingly bonded to said second plate so as to coaxially align said at least
one depression with said at least one opening in said second plate thereby to
form a mounting hole that extends through said first plate depression and
said second plate and is isolated from said vapor chamber,” as recited in
claim 13.
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f) Conclusion
Based on the foregoing, Petitioner has established that claim 13 is
unpatentable over the combination of Nakamura and Takahashi.
F. Unpatentability over Nakamura
Petitioner, in the Petition, argued that claims 9‒13 of the ’240 patent
would have been obvious over Nakamura alone. Pet. 26–96. In the
Decision instituting an inter partes review, we determined that Petitioner
had not demonstrated a reasonable likelihood of prevailing on this challenge.
Inst. Dec. 33–40. Specifically, we determined that Petitioner had not made
an adequate threshold showing that Nakamura alone discloses or renders
obvious the claimed “hollow column” for claims 9, 10, and 12, and the
claimed “lips” for claims 11‒13. Id. After institution, Patent Owner
opposed Petitioner’s challenge. See, e.g., PO Resp. 43‒45 (addressing the
“hollow column” limitation of claims 9, 10, and 12); id. at 49–51
(addressing the “peripheral lip” limitation of claim 11); id. at 52‒54
(addressing the “circumferential edge lips” limitations of claims 12 and 13).
In its Reply Brief, under the heading “GROUND 1 – RETRACTED,”
Petitioner states: “While Petitioner maintains that both Morikawa and
Nakamura disclose the claimed ‘lips,’ Petitioner no longer relies on Ground
1 for this IPR.” Pet. Reply 22. Petitioner does not explain what it means by
the term “retracted,” and we have not been presented with, for example, a
motion for partial adverse judgment or a joint motion to withdraw Ground 1
from this proceeding or otherwise limit the Petition. We proceed to
reanalyze Ground 1 on the full record developed during trial.
Petitioner asserts, in Ground 1, unpatentability of claims 9‒13 based
on Nakamura alone. For claims 9, 10, and 12, as discussed above, Petitioner
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fails to present an adequate showing that Nakamura discloses a “hollow
column.”
For claims 11‒13, neither Petitioner nor Dr. Pokharna has provided
adequate evidence or reasoning to support a finding that Nakamura alone
discloses or renders obvious the claimed “lips.” Claim 11 recites a
“peripheral lip” on each plate “sealingly bonded” together, and claims 12
and 13 recite each plate having a “circumferential edge lip bounding an
inner surface,” of each plate and the edge lips of the plates “sealingly
bonded together.” Ex. 1001, 6:33‒37, 6:56‒65, 7:8‒16.
Petitioner asserts that Nakamura’s top and bottom thin plates
correspond to the claimed “first plate” and “second plate.” Pet. 49 (claim
11), 74 (claim 12), 87, 89 (claim 13). Petitioner then addresses the lip
limitations, asserting that such a lip would have been obvious. Id. at 51, 71,
75. Petitioner uses annotated versions of Nakamura’s Figure 3, shown
below, to depict its contentions.

The above versions of Nakamura’s Figure 3 each show a perspective view of
a heat pipe with Petitioner’s annotations in the form of a labeled arrow
pointing to the features identified as the claimed lips of the first plate, as
recited in claims 11, 12, and 13. Ex. 1004, 7; Pet. 51, 70, 75. We
understand Petitioner to identify, as the claimed lips, that which appears to
be a vertical surface spanning the thickness at the edge of each of
Nakamura’s upper and lower metal plates. Pet. 51 (referring, in text next to
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the above-depicted figure, to “a peripheral lip located at an edge of said
boundary structure” and annotated Figure 4 identifying two spaced apart
plates); id. at 70 (arrow pointing to the outer edge face of the top plate); id.
at 75 (arrow point to the outer edge face of the bottom plate). Thus, at this
point in its analysis, Petitioner has identified only one alleged peripheral lip
and edges of the top and bottom plates.
As to the requirement in each of claims 11‒13 that the recited lips are
“sealingly bonded” together, Petitioner then introduces the concept of two
plates, quoting from the ’240 patent and asserting that, because some kind of
bonding is inherent in all sealed heat pipes, a POSITA would have
understood and found it obvious that each plate of Nakamura would have a
peripheral portion of the plate comprising a region bonded to another plate
located at the edge of the boundary structure to form Nakamura’s sealed
container. Id. at 51–52, 70‒71. Petitioner then concludes that Nakamura
satisfies the lip and bonding limitations of each claim. Id. at 52, 71, 76
(citing Ex. 1002 ¶¶ 81, 97, 101).
It is not clear from the Petition whether Petitioner is asserting that
Nakamura discloses the lip and bonding limitations or that Nakamura
renders the limitations obvious to a person having ordinary skill in the art.
The cited paragraphs of the Pokharna Declaration appear to be the same or
substantively the same as the arguments in the Petition without further
elaboration by Dr. Pokharna. Compare Pet. 51–52 with Ex. 1002 ¶ 81.
Notwithstanding the use of the word “obvious,” we understand
Petitioner to contend that the recited features are inherently disclosed in
Nakamura and that this inherency proposition flows, in part, from
Petitioner’s proposed construction of “lip.” As discussed above in the claim
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construction section, we do not adopt Petitioner’s proposed construction
involving inherency of the specifically recited lips in a sealed vessel.
Petitioner does not direct our attention to any description in Nakamura
of the relationship between the spaced apart upper and lower plates other
than by providing the annotated Figure 3 discussed above. See Pet. 51–52,
70‒71. Figure 3 does not help Petitioner’s case as that figure depicts a six-
sided heat pipe having what could be a separate vertical wall between the
spaced apart top plates, which would seemingly thereby prelude those two
plates from being bonded directly to each other. Cf. Ex. 1005, 3, Fig. 8
(Takahashi disclosing a heat pipe utilizing end caps 18 and 19 to seal the gap
between two plate members 11 and 12 rather than bonding together the two
plates at those ends). Thus, any inherency or obviousness-by-inherency
argument as to the bonding of the lips of the plates to each other is not
persuasive.
If our understanding is incorrect and Petitioner’s theory is not one of
inherency, then the assertion of obviousness is a mere conclusory statement.
We are unable to recognize any proffered reasoning underlying the assertion
of obviousness. “[Challenges] on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
As yet another possible alternative, Petitioner may be basing its case
on improper hindsight by relying on and quoting the Specification of
the ’240 patent in its obviousness analysis. See Pet. 51‒52, 70‒71. That,
too, is unpersuasive.
Regardless as to its theory of the case, we determine that Petitioner
has failed to explain sufficiently why the claimed heat pipe having a
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configuration of two plates having bonded together peripheral lips or
circumferential edge lips would have been obvious. Accordingly, Petitioner
has not shown by a preponderance of the evidence that claims 11‒13 are
unpatentable over Nakamura alone.
III. MOTION TO EXCLUDE
Patent Owner moves to exclude Exhibits 1004, 1040, and 1041, as
well as exhibits 3 and 4 and attachment 3a to Exhibit 1039, pursuant to
37 C.F.R. § 42.64(c). Paper 46; Paper 51. Petitioner opposes the motion.
Paper 48.
Patent Owner first requests that we exclude Exhibit 1004 (Nakamura)
as not relevant under FRE 104 on the grounds that Petitioner failed “to
introduce sufficient proof that Exhibit 1004 was publicly accessible such
that it qualifies as a prior art printed publication under United States law.”
Paper 46, 3; see also id. at 4 (citing Fed. R. Evid. 104, 401). As set forth in
section II.D, above, the evidence of record leads us to an entirely different
conclusion regarding Nakamura’s prior art status. Because Petitioner
persuades us that Nakamura qualifies as a prior art printed publication as of
the earliest possible effective filing date of the challenged claims of the ’240
patent, we deny Patent Owner’s request on its merits.
Moreover, the test for relevance is found in Federal Rule of Evidence
401, which provides:
Evidence is relevant if:
(a) it has any tendency to make a fact more or less probable than
it would be without the evidence; and
(b) the fact is of consequence in determining the action.
Fed. R. Evid. 401. The pertinent purported fact is that Nakamura is a printed
publication. That fact is of consequence in our determination as to whether
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Petitioner has satisfied its burden on the patentability challenges involving
Nakamura. As discussed above, the parties’ dispute involves certain indicia
contained in or missing from (as Patent Owner argues) the Nakamura
reference itself. Those indicia or the lack thereof in the document have a
tendency to make the fact that Nakamura is a printed publication more or
less probable. Thus, the Nakamura reference, Exhibit 1004, is relevant as to
whether Nakamura is a printed publication. Accordingly, we deny Patent
Owner’s motion to exclude Nakamura (Ex. 1004).
We dismiss Patent Owner’s remaining requests as moot, because we
do not address the substance of any version of Exhibits 1040 or 1041, or
exhibits 3 and 4 and attachment 3a to Exhibit 1039, in this Decision.
IV. CONCLUSION20
For the reasons discussed above, Petitioner has not shown by a
preponderance of the evidence that the challenged claims 9‒12 of the ’240
patent are unpatentable. But Petitioner has shown by a preponderance of the
evidence that challenged claim 13 is unpatentable.
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, claims 9‒12 of the ’240 patent have not been proven
to be unpatentable;

20 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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FURTHER ORDERED that claim 13 of the ’240 patent has been
proven to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude
Exhibit 1004 is denied and the remainder of Patent Owner’s Motion to
Exclude is dismissed as moot; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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In summary:

FOR PETITIONER:
Erik B. Milch
Andrew C. Mace
Reuben Chen
COOLEY LLP
emilch@cooley.com
amace@cooley.com
rchen@cooley.com

FOR PATENT OWNER:
Kenneth M. Albridge, III
Kevin P. Moran
Brian J. N. Marstall
MICHAEL BEST & FRIEDRICH LLP
kmalbridge@michaelbest.com
kpmoran@michaelbest.com
bjmarstall@michaelbest.com

Claims

35
U.S.C.
§
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
9‒13 103(a) Nakamura 9‒13
9‒13 103(a) Nakamura/Takahashi 13 9‒12
Overall
Outcome
13 9‒12