Aavid Thermalloy LLC

Patent Trials and Appeals Board

Jun 4, 2020

IPR2019-00337 (P.T.A.B. Jun. 4, 2020)

Trials@uspto.gov Paper 49
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.

IPR2019-00337
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)

IPR2019-00337
Patent 7,066,240 B2
2
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 four grounds of
unpatentability. Id. at 5. Aavid Thermalloy LLC (“Patent Owner”)2 filed a
Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). On June
23, 2019, the Board instituted inter partes review of all the challenged
claims on all of the asserted grounds. Paper 7 (“Inst. Dec.”), 45.
Subsequently, Patent Owner filed a Response (Paper 23, “PO Resp.”)
to the Petition, Petitioner filed a Reply (Paper 28, “Pet. Reply”) to the Patent
Owner Response, and Patent Owner filed a Sur-Reply (Paper 34, “PO Sur-
Reply”). An oral hearing was held on March 5, 2020, and a transcript of the
hearing is included in the record. Paper 48 (“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 11 and 12 of the ’240 patent are unpatentable, but
Petitioner has shown by a preponderance of the evidence that claims 9, 10

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 7,066,240 B2
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and 13 of the ’240 patent are 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-
00144, IPR2019-00145, IPR2019-00146, IPR2019-00147, IPR2019-00333,
IPR2019-00334, IPR2019-00337, and IPR2019-00338. Pet. 1‒2; Paper 4, 2.
IPR2019-00144 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.
IPR2019-00337
Patent 7,066,240 B2
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“[T]he same screws which hold the heat spreader against the chip can also
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.
IPR2019-00337
Patent 7,066,240 B2
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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:
IPR2019-00337
Patent 7,066,240 B2
6
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
IPR2019-00337
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 4:43–48.
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.
IPR2019-00337
Patent 7,066,240 B2
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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 Examined Utility Model Application
Publication No. S53-32387 Y; Published
August 11, 1978; Inventors: Takao Morikawa,
Mitsuhiko Nakata (as translated) (“Morikawa”)3
Aug. 11, 1978 1003
Japanese Unexamined Utility Model
Application S50-55262; Year of
Publication: 1975; Inventor: Kazuo Nakamura
(as translated) (“Nakamura”)4
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”)5
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

3 Exhibit 1003 includes both the original Japanese-language publication and
the English-language translation of Morikawa.
4 Exhibit 1004 includes both the original Japanese-language publication and
the English-language translation of Nakamura.
5 Exhibit 1005 includes both the original Japanese-language publication and
the English-language translation of Takahashi.
IPR2019-00337
Patent 7,066,240 B2
9
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.
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, 10, 12 103(a)6 Morikawa
9, 10 103(a) Morikawa, Nakamura
12 103(a) Morikawa, Takahashi
11, 13 103(a) Morikawa, Takahashi, Nakamura

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

6 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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Patent 7,066,240 B2
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(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;
(3) the level of skill in the art; and (4) any objective evidence of
non-obviousness.7 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. 10 (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

7 The parties have not directed our attention to any objective evidence of
non-obviousness.
IPR2019-00337
Patent 7,066,240 B2
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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
“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
For inter partes reviews filed on or after November 13, 2018, we
apply the same claim construction standard used by Article III federal courts
and the ITC, both of which follow Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc), and its progeny. 37 C.F.R. § 42.100(b) (2019).
Because the instant Petition was filed on November 14, 2018, we apply that
standard here. Accordingly, we construe each challenged claim of the ’240
patent to generally have “the ordinary and customary meaning of such claim
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Patent 7,066,240 B2
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as understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent.” Id.8 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. 10‒14. 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 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. 13‒26. Patent Owner argues that the term
“hollow column” “needs no construction” but proposes that Petitioner’s

8 In IPR2019-00144, involving the same patent at issue here, as well as in
IPR2019-00146 (involving the related ’679 patent), Petitioner filed an
unopposed “Motion & Certification under 37 C.F.R. § 42.100(b) Requesting
District Court-Type Claim Construction.” See, e.g., IPR2019-00144, Paper
5. The Board granted each of Petitioner’s unopposed requests. See, e.g.,
IPR2019-00144, Paper 7. Accordingly, we apply the same claim
construction standard in each of the related proceedings.
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Patent 7,066,240 B2
13
construction is appropriate if the Board determines that a construction is
necessary. Id. at 26‒27.
In light of the issues presented, we construe below the following claim
terms.
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 6:33–38. 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. 13. In the context of
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Patent 7,066,240 B2
14
applying claim 11 to the prior art, Petitioner further argues that the
peripheral lip in the ’240 patent is met by “a portion [on the upper plate]
comprising a region bonded to the lower plate at the edge, periphery, or
circumference of [the prior art enclosure].” Id. at 73. Similarly, in the
context of claim 12, Petitioner argues that “a ‘circumferential edge lip’ is
met by “a portion [on the upper plate] comprising a region bonded to the
lower plate at the edge, periphery, or circumference . . . of [the prior art
enclosure].” Id. at 27.
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 74 (quoting Ex. 1001, 3:27‒30); id. at 27
(quoting with emphasis added Ex. 1001, 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 Figures identify the lips using
element numbers with associated lead lines, and do not reference the lips
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. 23. Patent Owner argues that “[t]he term ‘lip’ is
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Patent 7,066,240 B2
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used consistently throughout the specification to identify the location at the
periphery of the plates where their faces are bonded together.” PO Resp. 22
(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.”).
Patent Owner argues that “the term ‘lip’ means ‘portion of the plate defined
by the bonded region of the plate’s inner or interior surface.’” Id. at 24
(citing Ex. 2002 ¶¶ 106‒112).
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.
We agree with Petitioner that we do not need to construe “lip” for purposes
of assessing patentability under the grounds based on Morikawa as modified
by Takahashi. To the extent that we address below Petitioner’s ground
based on Morikawa 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’
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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
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 Morikawa 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,
Morikawa’s sealed heat pipe must have bonding at the claimed lips
regardless as to the type of lip recited in the claim.9 E.g., Pet. 26–27; see
also id. at 73. 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.

9 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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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 to construe “lip” independently of the
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” to
mean a “cylindrical structure surrounding a void or cavity.” Pet. 12 (citing
Ex. 1002 ¶¶ 33‒37). Patent Owner argues that the term “hollow column”
needs no construction because it “is sufficiently clear on its own.” PO
Resp. 26. Patent Owner urges that if the Board determines that a
construction is necessary, we should construe the term to mean “a columnar
structure defining an unfilled or empty space.” Id. (citing Ex. 2002 ¶¶ 119‒
122).
In the Institution Decision, we determined that the ’240 patent
describes two distinct types of spacers, those formed by a solid column
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, with respect to the challenge based on
Morikawa and Nakamura (Ground 2) to “reconcile adequately its reliance on
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a type of prior art depression-like spacer that the ’240 patent appears to
distinguish from the recited hollow column.” Id. at 31.
Petitioner did not address our interpretation of “hollow column” in its
Petitioner Reply. Instead, Petitioner argues that Patent Owner’s
construction, which is based on its litigation position, “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 for
spacers, and, in particular, spacers made from columns. 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 term “hollow column” 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.
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.
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Patent 7,066,240 B2
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These spacers [between plates] can be solid columns, embossed
depressions formed in one of the plates, or a mixture of the
two. . . .[10]
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
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

10 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.
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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. 11‒12.
Petitioner elaborates in its Reply, arguing that “the ‘extending between and
contacting’ language when read in light of the specification expressly allows
for both integral and non-integral spacers.” Pet. Reply 14‒15 (citing
Ex. 1032 ¶¶ 35‒37). 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 14 (citing Ex. 1001, 2:3‒12).
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
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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. at 25 (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 component[s]’ 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 person having
ordinary skill in the art 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.
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
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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.
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) (emphasis omitted). As an example, although a
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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.”
4. “vapor chamber”
Petitioner proposes that a POSITA would have understood “vapor
chamber” in the context of the ’240 patent 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.” Pet.
12‒13. Petitioner asserts that Patent Owner does not dispute that the “vapor
chamber” must be “hermetically sealed,” which Patent Owner agrees means
airtightly sealed. Id. at 13 n.4. 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. 14.
Petitioner argues that the parties’ dispute as to whether the “vapor
chamber” is “vacuum sealed” or “hermetically sealed” need not be resolved
because both Nakamura and Morikawa disclose a vacuum sealed chamber.
Pet. Reply 6‒7 (citing Ex. 1005, 1; Ex. 1004, 2‒3). In the related IPR2019-
00144, we agreed with Petitioner’s argument that reference to a “vacuum
sealed” chamber unnecessarily injects ambiguity into the construction.
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Thus, we adopted Petitioner’s construction of a “hermetically sealed”
chamber in that related case. Because both cases involve the same
challenged patent, we adopt Petitioner’s proposed construction of “vapor
chamber” to include a “hermetically sealed” chamber here for consistency.
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
holes formed within the spacers have “no effect on the vacuum integrity of
the heat pipe vapor chamber.” Id. at 2:36‒40.
Thus, the vapor chamber is not completely evacuated because it
contains the heat transfer fluid. 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 space 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.
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Petitioner also argues that Patent Owner’s interpretation that requires
capillary forces to be utilized is too narrow and would render superfluous the
separate claim recitation of a “wick.” Pet. Reply 8‒11.
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. 17‒18 (citing Ex. 1001, 1:57‒60, 2:11‒39, 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 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
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
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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
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. 15. 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. (citing Ex. 2002 ¶ 88). Patent Owner
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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. (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.”
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’ published in 1975.”
Pet. 41; see also id. at viii (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. 14. Patent Owner also argued that Nakamura did
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not contain indicia, such as INID11 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
first page of the document, and identified with the appropriate INID
code(s).” Id. at 3‒7, 11‒12. 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 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

11 “‘INID’ is an acronym for ‘Internationally agreed Numbers for the
Identification of (bibliographic) Data.’” Ex. 2001, 1.
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and confer regarding Japan Patent Office practice in the 1970s as applied to
unexamined utility model applications to try to resolve this issue. Id. at 21.
After institution, Patent Owner filed objections to evidence that
included various objections to Nakamura. Paper 9, 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
supplemental evidence, including the Chen Declaration.12 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. 34‒35. 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.

12 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, 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. 28. 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 31.
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. at 31‒32. Patent Owner further asserts that “Nakamura has no INID
codes to identify any relevant biographic data.” Id. at 32. 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 33. 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. Pet. Reply 21
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(citing Ex. 1044).13 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
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

13 The Miyano Declaration includes six attachments, labeled Exhibits A
through F, which correspond, respectively, to Exhibits 1045 through 1050.
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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). Id. at 1.
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
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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
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
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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)
(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
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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
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, 12.14 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

14 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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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.
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
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).
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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
(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
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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
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. 41.
E. Unpatentability over Morikawa
1. Morikawa
According to Morikawa, a metal installation plate 30 for the
attachment of a heat pipe is conventionally added to the distal edge of a
component to be cooled. Ex. 1003, 2:15–30, 5:1–6 (referencing Fig 1).
“Such a structure is conventionally adopted because opening a hole in the
heat-pipe main body to fix the component to be mounted is impermissible
due to a gas-sealing structure of the heat pipe.” Id. at 2:30–33.
Accordingly, Morikawa discloses an alternative means of attaching a heat
pipe to a component via a fastener passing through the heat pipe. In
particular, Morikawa discloses “a through path blocked from an interior of
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the heat pipe by a metal pipe is disposed in a heat-pipe heating portion, and a
portion to be cooled is directly mounted and fixed to the heat-pipe heating
portion by a nut and bolt through the through path.” Id. at 1:21–26; see id.
at 3:10–14.
Morikawa Figures 2A, 2B, and 3 are reproduced below.

The above figures show perspective and cross-sectional perspective
views of the disclosed heat pipe. Id. at 4:49–56. In these figures, “through
paths 11 [are] disposed at appropriate dimensional intervals in a main-body
heating portion 10.” Id. at 3:23–25. “[E]ach through path 11 is
communicated to both surfaces of a panel by a metal pipe 11a provided
inside the panel.” Id. at 3:26–28. The interior of the heat pipe “and the
through path 11 are completely blocked by [] metal pipe 11a, and there is no
fear of interior liquid and vapor escaping therethrough.” Id. at 3:28–32. “A
component 40 to be cooled such as a transistor element is fixed to a surface
of the main-body heating portion by nuts and bolts using the through paths
11.” Id. at 3:32–35. Figure 3, for example, shows bolts 41 inserted through
such paths (unlabeled in Figure 3). Id. at 3:37–42. “In this manner . . . the
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component can be directly mounted and fixed to the heat-pipe heating
portion.” Id. at 3:43–45. “Furthermore, because the structure is one where
the large number of through paths 11 is communicated by the metal
pipes 11a, these metal pipes 11a also function as spacers of the enclosure
panel and provide an effect of a reinforcing material.” Id. at 3:51–55.
According to Morikawa, the through path formed by metal pipes 11a may be
“formed by welding and fixing the metal pipe to the panel surfaces so the
metal pipe is communicated to holes provided in advance in upper and lower
surfaces of the panel,” or by “by welding and fixing a metal column to upper
and lower inner surfaces of the panel like a conventional spacer . . . and
afterward opening a hole in the panel walls and this metal column by a
drill.” Id. at 4:25–35.
2. Analysis of Claim 9
For the reasons discussed below, Petitioner has shown by a
preponderance of the evidence that Morikawa renders claim 9 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 9 over Morikawa,
Petitioner contends that Morikawa discloses a heat pipe for spreading heat
comprising a boundary structure including spaced-apart first and second
plates that define an enclosed vapor chamber. Pet. 15‒18. Petitioner
contends that Morikawa discloses a heat pipe that transfers and releases heat.
Id. at 15‒16 (citing Ex. 1003, 1:32‒36 and Ex. 1002 ¶ 51).
Patent Owner argues, with reference to Dr. Faghri’s testimony, that
“nothing in Morikawa discloses or teaches heat spreading, and a POSITA
would not have understood Morikawa to describe heat spreading.” PO Resp.
43 (Ex. 2002 ¶¶ 67, 126, 127). Patent Owner raises this argument in the
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context of arguing that Morikawa does not disclose a “vapor chamber” as
recited in the body of the claim. Id. Patent Owner does not assert in its
Response15 that the language “for spreading heat” in the preamble of claim 9
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 9 is limiting, to
the extent Patent Owner’s argument that Morikawa does not disclose heat
spreading incorporates this language of the preamble, we address the effect
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,

15 In its Reply, Petitioner argues that the preambles of the challenged claims
are 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 3 (citing Poly-America LP v. FSE Lining Tech. Inc., 383
F.3d 1303 (Fed. Cir. 2004)).
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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 9 recites spaced-apart first and second plates
forming a boundary structure and defining an enclosed vapor chamber, and a
hollow column sealingly bonded to at least one of the plates and having open
ends to form a 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. . .
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[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 Morikawa’s device meets this limitation.
b) “a boundary structure including spaced-apart first and second plates
that define an enclosed vapor chamber”
Petitioner asserts, with reference to annotated Figures 2A and 2B of
Morikawa, that the heat pipe is an airtight enclosure 10 formed by spaced-
apart first and second plates, having a working fluid present in the enclosed
and sealed void within the enclosure. Pet. 16‒18 (citing Ex. 1003, 1:36‒41,
1:45‒2:7, 5:1‒2 and Ex. 1002 ¶¶ 52‒54).
Patent Owner argues that Morikawa does not disclose constructing a
heat pipe using two plates. PO Resp. 44. Patent Owner argues, with
reference to Dr. Faghri’s testimony, that a person having ordinary skill in the
art would have understood Morikawa’s heat pipe to be made from either a
unitary tube or a single sheet of metal with the metal pipes 11a inserted into
holes in the tube or body and then welded in place. Id. at 44‒45 (citing
Ex. 2002 ¶¶ 133‒134).
Petitioner argues that Patent Owner’s argument is flawed because it
fails to address Figures 2B and 3 of Morikawa, which clearly show two
different plates. Pet. Reply 23‒24 (citing Ex. 1032 ¶¶ 39‒40). In the cited
paragraphs of Dr. Pokharna’s declaration, he attests that Morikawa’s top and
bottom plates, as shown in Figure 3, 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 3, which Dr. Pokharna
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pointed to in his original Declaration as support for first and second plates.
Id.; Ex. 1002 ¶ 62. Petitioner challenges Dr. Faghri’s testimony that only
two conventional methods of making flat heat pipes were known at the time
of Morikawa. Pet. Reply 24. Petitioner provides evidence that it was known
at the time of Morikawa to make heat pipes using “flat-heat-pipe ‘sandwich’
configurations using two plates.” Id. (citing Ex. 1032 ¶¶ 44‒49; Ex. 1036;
Ex. 1037). Petitioner also challenges Dr. Faghri’s testimony that end caps
would be used with the flat heat pipe of Morikawa. Id. (citing Ex. 1033,
8:9‒9:25; Ex. 1034, 763, 765; Ex. 1038. Petitioner also provides testimony
of Dr. Pokharna that a person having ordinary skill in the art would
understand Morikawa’s plates are joined using brazing or soldering, “given
its similarity to Nakamura.” Id. at 25 (citing 1032 ¶ 51).
Patent Owner responds that Petitioner’s reliance on Figures 2B and 3
of Morikawa, which show only a partial cross-section, is “misguided.” PO
Sur-Reply 15. Patent Owner further argues that Petitioner’s discussion of
“different cross-hatching” between the plates in Morikawa’s Figure 3
improperly raises a new theory because it was raised for the first time in
Petitioner’s reply. Id. at 16. Patent Owner also argues that to the extent the
cross-hatching in Figure 3 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
15‒16 (citing Ex. 2002 ¶¶ 65, 55, 133‒135). Patent Owner also argues that
we should not rely on Petitioner’s new evidence of two-plate heat pipe
construction because Petitioner fails to establish that Exhibits 1036 and 1037
were prior art printed publications and fails to explain the significance of
these documents. Id. at 16‒17.
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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 Figures 2B and 3 of
Morikawa as support for the assertion that Morikawa discloses two plates.
Pet. 16, 23; Ex. 1002 ¶ 53, 59. Petitioner’s further arguments about what is
shown in these Figures were raised properly in response to Patent Owner’s
arguments contesting Petitioner’s reading of Morikawa’s disclosure.
Second, we do not credit Dr. Faghri’s testimony as to how a person of
ordinary skill would have understood Morikawa to be constructed because
this testimony lacks sufficient evidentiary support. Dr. Faghri testified that a
person of ordinary skill, looking at Morikawa’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 Morikawa’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 Morikawa’s Figure 3 appears to show two plates with
different cross-hatching. Pet. Reply 23‒24. Further, Dr. Pokharna provides
sound reasoning as to why, based on Morikawa’s construction, one having
ordinary skill in the art would have understood Morikawa’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.
Patent Owner also disputes Petitioner’s contention that Morikawa’s
heat pipe defines a “vapor chamber.” PO Resp. 42‒44. Patent Owner’s
argument is based on its proposed construction of “vapor chamber” to
require two- or three-dimensional heat spreading. Id. 14‒17; 42‒44. As
discussed above, we adopt Petitioner’s construction of “vapor chamber” 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.” 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 Morikawa discloses that the
heat pipe is an airtight enclosure having a working fluid present in the
enclosed and sealed void within the enclosure. Pet. 16‒18 (citing Ex. 1003,
1:36‒41, 1:45‒2:7, 5:1‒2 and Ex. 1002 ¶¶ 52‒54). Specifically, Morikawa
describes a panel-type heat pipe formed as an airtight structure. Ex. 1003,
1:38‒39; Figs. 2A, 2B, 3. Morikawa describes that inside the airtight
structure is a liquid, acting as a refrigerant, that is added after air is extracted
from the heat pipe. Id. at 1:36‒41. Morikawa also describes the structure
includes a wick exhibiting a capillary action. Id. Morikawa describes that
the refrigerant absorbs heat from an external high-temperature body, is
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vaporized, travels to a cooling portion of the heat pipe, is cooled and
condensed, and refluxed back to the heating portion of the heat pipe by the
wick. Ex. 1003, 1:42‒2:7; Ex. 1002 ¶ 52‒54.
Patent Owner argues that Morikawa teaches “one-dimensional heat
flow.” PO Resp. 43 (citing Ex. 2002 ¶¶ 67, 126‒127). Patent Owner
provides an illustration, reproduced below, for purposes of explanation.

The illustration above appears to be based on Figure 2A of Morikawa, 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 40 would be replicated across the heating portion (red), and that the
heat generated by these sources would flow in one dimension toward the
cooling portion (blue) where fins 20 are located.” Id. (citing Ex. 2002 ¶
127).
Petitioner rebuts Patent Owner’s evidence with reference to Dr.
Pokharna’s testimony and its own illustrations of the heat flow in the ’240
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patent and Morikawa, as shown below. Pet. Reply 5 (citing Ex. 1032 ¶¶ 26‒
32).

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 illustration on the right is based on Figure 2(A) of
Morikawa and depicts 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.
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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 Morikawa’s heat pipe in one direction, (3) never analyzes
Morikawa’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 Morikawa’s heat pipe includes transport of heat in more than
one dimension because his testimony is based on the device shown in
Morikawa 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 Morikawa discloses the claimed “boundary structure including spaced
apart first and second plates that define an enclosed vapor chamber,” as
recited in claim 9.
c) “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”
Petitioner contends that Morikawa discloses at least one hollow
column having an exterior surface positioned within the vapor chamber. Id.
at 18‒19. The evidence supports this assertion. Specifically, Morikawa
discloses a metal pipe 11a that forms a hollow spacer, which extends from
the outer surface of a first plate to the outer surface of the second plate, and
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having its exterior surface within the vapor chamber of enclosure 10. Ex.
1003, 3:25‒28, Fig. 2B.
Petitioner also contends that a portion of the exterior surface of
Morikawa’s hollow column is sealingly bonded to at least one of the first
and second plates. Pet. 20 (citing Ex. 1003, 4:26‒27). The evidence
supports this assertion. Morikawa discloses metal pipe 11a can be welded to
the panel surfaces. Ex. 1003, 4:26‒27. As shown in Figure 2B of
Morikawa, this welding would occur at a portion of the exterior surface of
metal pipe 11a. Pet. 20 (annotated Figure).
Petitioner also contends that Morikawa’s hollow column is open on
each end through the first and second plates to form a mounting hole isolated
from the vapor chamber. Id. at 21‒22. Again, Morikawa discloses this
feature. Morikawa’s metal pipe 11a is open on each end to form a through
path 11 that is blocked from the interior of the heat pipe and that can receive
nut and bolt 41. Ex. 1003, 1:21‒22, 3:13‒14, 3:37, 4:28‒32, 5:4, Fig. 3;
Ex. 1002 ¶¶ 56‒57.
Patent Owner does not contest Petitioner’s assertions as to
Morikawa’s disclosure of the hollow column limitation. For the reasons
discussed above, Petitioner has provided adequate evidence to show that
Morikawa discloses the claimed “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,” as recited in
claim 9.
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d) Conclusion
Patent Owner argues that the Petition fails to establish obviousness
because it “fails to perform the requisite factual inquiries for an obviousness
analysis under Graham v. John Deere Co., 383 U.S. 1 (1966).” PO Resp. 41
(arguing that the Petition fails to identify any differences between the
challenged claims and Morikawa and fails to identify any reasons or
motivation why it would have been obvious to a person having ordinary skill
in the art to modify Morikawa to address such differences). Petitioner
explained in reply that due to a claim construction dispute over whether the
claimed “vapor chamber” is “vacuum sealed,” Petitioner argued that it
would have been obvious to vacuum seal Morikawa’s chambers under
Patent Owner’s construction. Pet. Reply 25‒26 (citing Pet. 17‒18).
We find no deficiency in Petitioner’s approach here. Petitioner has set
forth where each claim limitation is disclosed in, or rendered obvious by,
Morikawa. For the reasons discussed above, we agree with the assertions
presented in the Petition that Morikawa discloses each limitation of claim 9.
“[I]t is well settled that a disclosure that anticipates under § 102 also renders
the claim invalid under § 103, for anticipation is the epitome of
obviousness.” Realtime Data, LLC. v. Iancu, 912 F.3d 1368, 1373 (Fed. Cir.
2019) (internal quotation marks and citations omitted) (affirming the
Board’s determination of obviousness because a single reference disclosed
every element of the challenged claims).
3. Analysis of Claim 10
Claim 10 depends from claim 9 and recites, “wherein said
spaced-apart first and second plates include confronting interior surfaces”
and “a wick positioned upon said confronting interior surfaces of said first
and second plates and having a second po[r]tion of said exterior surface of
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said at least one hollow column disposed within said vapor chamber.” Ex.
1001, 6:23‒29.
Petitioner contends that Morikawa discloses a wick positioned upon
confronting interior surfaces of the first and second plates and wherein a
second portion of Morikawa’s hollow column is disposed within the vapor
chamber. Pet. 23‒25. The evidence supports Petitioner’s assertions.
Morikawa’s first and second plates have confronting interior surfaces.
Ex. 1003, Fig. 3 (showing interior surface of top plate opposite interior
surface of bottom plate); see also Pet. 23 (annotated Fig. 3 of Morikawa).
Morikawa includes wick 12 on an outer peripheral surface of metal pipe 11a,
where wick 12 also is positioned upon the confronting interior surfaces of
the first and second plates. Ex. 1003, 3:37‒38, 4:42‒46, Fig. 3; see also Pet.
24 (annotated Fig. 3 of Morikawa). Morikawa also discloses a second
portion of the exterior surface of metal pipe 11a, i.e., the portion between
each end, is disposed in the vapor chamber. Ex. 1003, Fig. 3.
Patent Owner does not contest Petitioner’s assertions as to
Morikawa’s disclosure of the limitations of claim 10. For the reasons
discussed above, Petitioner has provided adequate evidence to show that
Morikawa discloses the subject matter of dependent claim 10.
4. Analysis of Claim 12
Petitioner, in the Petition, argued that claim 12 of the ’240 patent
would have been obvious over Morikawa 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. 25–27. Specifically, we determined that Petitioner had not made
an adequate threshold showing that Morikawa alone discloses or renders
obvious the claimed “circumferential edge lip” on each plate for claim 12.
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Id. After institution, Patent Owner opposed Petitioner’s challenge. PO
Resp. 52. In its Reply Brief, under the heading “GROUND 1 –
MORIKAWA RENDERS OBVIOUS CLAIMS 9‒10,” Petitioner states:
“While standing by its contentions that both Morikawa and Nakamura
disclose ‘lips,’ Petitioner no longer relies on Ground 1 for claim 12.” Pet.
Reply 22. Petitioner does not explain what it means by the phrase “no
longer relies on,” and we have not been presented with, for example, a
motion for partial adverse judgment or a joint motion to withdraw Ground 1
as to claim 12 from this proceeding or otherwise limit the Petition. We
proceed to reanalyze Ground 1 as to claim 12 on the full record developed
during trial.
Claim 12 is directed to a heat pipe and recites “a first plate having a
circumferential edge lip bounding an inner surface,” “a second plate . . .
including a circumferential edge lip bounding an inner surface,” and “said
edge lips of said first and second plates being sealingly bonded together so
as to define a vapor chamber.” Ex. 1001, 6:58‒59, 6:62‒64, 6:65‒67.
Petitioner contends that “[a] POSITA would have understood and found it
obvious that the upper plate . . . has a portion comprising a region bonded to
the lower plate at the edge, periphery, or circumference . . . of enclosure 10
in Morikawa.” Pet. 27 (citing Ex. 1002 ¶ 64); see also id. at 28 (annotated
Figure 2 of Morikawa identifying a circumferential edge lip on the upper
plate of enclosure 10 as a vertical surface spanning the distance between
Morikawa’s upper and lower plates). The cited paragraph of the Pokharna
Declaration appears to be the same or substantively the same as the
arguments in the Petition without further elaboration by Dr. Pokharna.
Compare Pet. 26–27, with Ex. 1002 ¶ 64.
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As to the requirement that the edge lips are “sealingly bonded
together,” the Petition appears to rely on the disclosure in the ’240 patent
that bonding between lips 22 and 24 is inherent as the basis for its assertion
that the upper plate of Morikawa’s enclosure 10 has “an edge, periphery, or
circumference . . . that corresponds to ‘a circumferential edge lip’ in the ’240
patent.” Id. at 27. The Petition relies on this same theory as the basis for
asserting that Morikawa’s lower plate also includes the claimed
circumferential edge lip. Id. at 31‒32 (identifying the same vertical surface
spanning the distance between Morikawa’s upper and lower plates in Figure
2 as the circumferential edge lip on the lower plate of enclosure 10).
Notwithstanding the multiple uses of the word “obvious,” we
understand Petitioner to contend that the recited circumferential edge lips
that are “sealingly bonded together” are inherently disclosed in Morikawa
and that this inherency proposition flows, in part, from Petitioner’s proposed
construction of “lip.” As discussed above in the claim 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 Morikawa
of the relationship between the spaced apart upper and lower plates other
than by providing the annotated Figure 2 discussed above. See Pet. 28, 32.
Figure 2 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
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those ends). Thus, any inherency or obviousness-by-inherency argument as
to the bonding together of the edge lips is not persuasive.
If our understanding is incorrect and Petitioner’s theory is not one of
inherency, then the assertions of obviousness are mere conclusory
statements. We are unable to recognize any proffered reasoning underlying
the assertions 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. 27. 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
configuration of two plates having bonded together circumferential edge lips
would have been obvious. Accordingly, Petitioner has not shown by a
preponderance of the evidence that claim 12 is unpatentable over Morikawa
alone.
F. Unpatentability over Morikawa and Nakamura
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
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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:

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

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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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
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. Analysis of Claims 9 and 10
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
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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
the “hollow column” limitation. Id. at 6:23‒29.
Petitioner’s assertion of unpatentability of claims 9 and 10 over
Morikawa and Nakamura is based on a proposed modification of Morikawa
to replace its metal pipe 11a with Nakamura’s concavities 9 to meet the
claimed “hollow column” limitation. Pet. 43‒57. Thus, this ground is
premised on its assertion that the term “hollow column” means “a columnar
structure defining an unfilled or empty space.” Pet. 12 (quoting Ex. 1019, 6
(Patent Owner’s proposed construction in the district court)); see id. at 44‒
45 (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. 43–45. Some of
Petitioner’s contentions are explained via the annotated figures reproduced
below.
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Pet. 51. 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 that the “concavity ‘9,’
corresponding to the ‘void or cavity’ or the ‘unfilled or empty space’
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(colored in grey above), is ‘surround[ed]’ or ‘defin[ed]’ by the cylindrical-
bowl shaped structure (indicated in red above), which corresponds to the
‘cylindrical’ or ‘columnar structure.’” Pet. at 51‒52.
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. 43‒44 (quoting Ex. 1001, 4:20–24). 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 51. Specifically, as shown in Figure 4 relied on by
Petitioner,17 Nakamura’s concavity 9 extends from one plate to the inner
surface of the opposite concavity 9 formed in the opposite plate. Ex. 1004,

17 Petitioner points to Nakamura’s disclosure of another heat pipe utilizing a
pipe as a fastener hole rather than concavities. Pet. 46–47 (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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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 Morikawa and Nakamura renders
claims 9 and 10 unpatentable under 35 U.S.C. § 103(a).
G. Unpatentability over Morikawa and Takahashi
1. 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:
[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.
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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.
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
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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.
2. Analysis of Claim 12
For the reasons discussed below, Petitioner has not shown by a
preponderance of the evidence that the combination of Morikawa and
Takahashi renders claim 12 unpatentable under 35 U.S.C. § 103(a). Claim
12 calls for a particular relationship between the plates and hollow column.
Specifically, claim 12 recites, in pertinent part:
a first plate having . . . at least one hollow column that is
integral with said first plate . . . ;
a second plate . . . including . . . at least one opening
through said second plate . . . ; wherein
said at least one hollow column being sealingly bonded at
one end to said second plate so as to coaxially align said at least
one hollow column with said at least one opening in said second
plate . . . .
Ex. 1001, 6:57–7:4. Thus, claim 12 calls for a first plate having an integral
hollow column and the hollow column bonded to a second plate.
Petitioner asserts that Morikawa’s metal pipe 11a is the claimed
“hollow column that is integral with said first plate.” Pet. 28. Petitioner
explains that Morikawa’s metal pipe 11a is integral with the upper plate
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“because Morikawa teaches ‘welding and fixing the metal pipe to the panel
surfaces,’ thus integrating the metal pipe with the upper plate.” Id. at 29
(citing Ex. 1003, 4:26‒27). Petitioner further explains that Morikawa’s
“metal pipe” 11a is “bonded” at one end to its lower plate “because
Morikawa teaches ‘welding and fixing the metal pipe to the panel surfaces,’
thus sealing[ly] bonding the metal pipe with the lower plate.” Id. at 36
(citing Ex. 1003, 4:26‒27). Petitioner, thus, contends that a welded pipe
creates both an integral hollow column on one end and a bonded hollow
column on the other end.
The question presented in this ground is the meaning of “integral” to a
person of ordinary skill in the art at the time of invention and with that term
read in the context of the entire disclosure of the ’240 patent. Under the
circumstances of this case, Petitioner has not adequately addressed that
issue. Cf. 37 C.F.R. § 42.104(b) (The petition must identify how the
challenged claim is to be construed and how the construed claim is
unpatentable); Patent Trial and Appeal Board Consolidated Trial Practice
Guide (Nov. 2019), 44–45, available at https://www.uspto.gov/
TrialPracticeGuideConsolidated (“If a petitioner believes that a claim term
requires an express construction, the petitioner must include a statement
identifying a proposed construction of the particular term and where the
intrinsic and/or extrinsic evidence supports that meaning.”).
Petitioner contends that Morikawa’s metal pipe welded to the upper
plate is “like the ‘hollow column that is integral with said first plate’ in the
’240 patent.” Pet. 29 (citing Ex. 1002 ¶ 65). This is an important assertion
as it is an implied argument that the intrinsic evidence supports its position.
However, Petitioner does not provide a citation to the Specification for this
proposition and does not elaborate, in the pertinent section of the Petition, on
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the assertion that a welded component is like the integral hollow column of
the ’240 patent. See id. at 29–30. Additionally, we find that the relied-upon
testimony of Petitioner’s expert, Dr. Pokharna, on this issue lacks credibility.
Dr. Pokharna’s declaration includes a repetition of Petitioner’s argument.
Compare Pet. 29–30 with Ex. 1002 ¶ 65. Dr. Pokharna, like Petitioner, fails
to explain adequately why a welded component is like the integral column of
the ’240 patent. See Ex. 1002 ¶ 65 (making the statement without citing
support).
The specification of the ’240 patent distinguishes between a
component bonded to a plate and something “embossed in one plate,” i.e.,
integral with the plate. See Ex. 1001, 2:32–35. A portion of Figure 2 of
the ’240 patent is shown below.

The depiction above is a portion of Figure 2, which is “a cross section
view of an alternate embodiment of the flat plate heat pipe 11.” Id. at 4:36–
37. The depiction shows the material of the bottom plate bent upward and
with “columns 44 . . . bonded to cover plate 20 at locations 46.” Id., 4:20–
24. One of ordinary skill would understand this to disclose an example of a
column integral with one plate and bonded to another plate.
Lastly, Petitioner effectively concedes, via its own arguments, its
expert’s testimony, and the references relied on, that a person of ordinary
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skill in the art of heat pipes would understand there to be a distinction
between a welded component and an integral one. In the context of
Ground 2, Petitioner argues that Nakamura provides reason to replace
Morikawa’s welded pipes with concavities/depressions formed from one of
the plates. See Pet. 40–57; Ex. 1002 ¶¶ 82–83). According to Petitioner,
Nakamura evidences that the bonded pipes of Morikawa are difficult to
manufacture and can result in refrigerant leaks at the pipe-to-plate junction.
Id. at 46‒49 (quoting Ex. 1004, 3‒4). Petitioner contends that a person of
ordinary skill would recognize these problems and would be motivated to
use depressions in the plates instead. Id. at 49–50. These arguments and
evidence are consistent with the conclusion that the recited “hollow column
that is integral with said first plate” does not encompass a pipe welded to a
plate.
For this reason, Petitioner has not shown by a preponderance of the
evidence that claim 12 is unpatentable over Morikawa and Takahashi under
35 U.S.C. § 103(a).
H. Unpatentability over Morikawa, Takahashi, and Nakamura
1. Analysis of Claim 11
For the reasons discussed below, Petitioner has not shown by a
preponderance of the evidence that the combination of Morikawa,
Takahashi, and Nakamura renders claim 11 unpatentable under 35 U.S.C.
§ 103(a). Claim 11 recites both “at least one depression formed in said first
plate” and “at least one spacer extending between and contacting said first
and second plates.” Ex. 1001, 6:39‒42, 50‒51.
Petitioner asserts that Nakamura’s concavities 9 correspond to the
claimed “at least one depression” and that a person having ordinary skill in
the art would have been led to replace Morikawa’s metal pipes 11a with
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Nakamura’s concavities 9 because Nakamura directly names Morikawa and
describes the shortcomings with joining Morikawa’s metal pipe and an outer
wall of the heat pipe by brazing and the potential for leakage. Pet. 46‒50,
84‒85. Petitioner also asserts that Morikawa teaches a conventional spacer
that is formed by a metal column welded to the upper and lower inner
surfaces of the panel and that person having ordinary skill in the art would
have understood that, “when combined with Nakamura, Morikawa no longer
needs to create the ‘through path’ inside such ‘metal column.’” Pet. 88
(citing Ex. 1003, 4:30‒35; Ex. 1002 ¶ 93). Petitioner argues that
Morikawa’s “conventional spacer” would have been obvious as a “structure
used to maintain a space or clearance between the plates” and to support the
wick. Id. at 88‒89.
Patent Owner points out that Petitioner’s challenge relies on a
combination of Morikawa and Nakamura where Morikawa is modified to
replace some, but not all, of Morikawa’s metal pipes 11a with Nakamura’s
concavities. PO Resp. 57‒58. Patent Owner argues that Petitioner’s expert
fails to provide a rationale for why a person having ordinary skill in the art
would have replaced only some of Morikawa’s metal pipes. Id. at 58.
Patent Owner further asserts that were one to make the proposed
modification, a person having ordinary skill would have been led to replace
all of Morikawa’s metal pipes 11a with Nakamura’s concavities. Id.
Petitioner replies by reiterating the arguments presented in the
Petition, namely that “it would be obvious to use Nakamura’s
concavities/depressions to form the ‘through path’ while also employing
Morikawa’s columns as spacers to help maintain a clearance between the
two plates and/or to act as a supporting structure for the wick.” Pet. Reply
32 (citing Pet. 88‒89).
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We agree with Patent Owner that Petitioner has not explained
adequately and persuasively what would have led one having ordinary skill
in the art to replace only some of Morikawa’s metal pipes 11a with
Nakamura’s depressions so as to have led one to a heat pipe containing both
a depression and a spacer extending between and contacting both plates, as
recited in claim 11. See Ex. 1002 ¶ 124 (analysis of claim 11, in which Dr.
Pokharna opines that Morikawa’s metal pipes 11a correspond to the “at least
one spacer extending between and contacting said first and second plates” of
claim 11). For this reason, Petitioner has not shown by a preponderance of
the evidence that claim 11 is unpatentable under 35 U.S.C. § 103(a).
2. Analysis of Claim 13
For the reasons discussed below, Petitioner has shown by a
preponderance of the evidence that the combination of Morikawa,
Takahashi, and Nakamura 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 Morikawa,
Takahashi, and Nakamura, Petitioner contends that Morikawa discloses a
heat pipe for spreading heat. Pet. 92 (incorporating the analysis in Section
IX.B.1 on Pet. 15‒16). According to Petitioner, Morikawa discloses a heat
pipe that “transfers and releases heat.” Pet. 15‒16 (citing Ex. 1003, 1:32‒
36; Ex. 1002 ¶ 51).
As discussed above (see § II.E.2.a), Patent Owner argues that
Morikawa’s heat pipe does not “spread heat.” PO Resp. 43 (Ex. 2002 ¶¶ 67,
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126, 127). 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.” 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 Morikawa does not disclose heat
spreading incorporates this language of the preamble, we address the effect
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.
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 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

18 In its Reply, Petitioner argues that the preambles of the challenged claims
are 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 3 (citing Poly-America LP v. FSE Lining Tech. Inc., 383
F.3d 1303 (Fed. Cir. 2004)).
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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 Morikawa’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 Morikawa,
Takahashi, and Nakamura, Petitioner contends that Morikawa, as modified
by Takahashi, discloses a first plate having a circumferential edge lip
bounding an inner surface. Pet. 92 (incorporating the analysis in Section
XI.B.1 on Pet. 64‒69). Petitioner asserts, with reference to annotated
Figures 2A and 2B of Morikawa, that the heat pipe is an airtight enclosure
10 formed by spaced-apart first and second plates, having a working fluid
present in the enclosed and sealed void within the enclosure. Pet. 16‒18
(citing Ex. 1003, 1:36‒41, 1:45‒2:7, 5:1‒2 and Ex. 1002 ¶¶ 52‒54). As
discussed above in Section II.E.2.b, we agree with Petitioner that Morikawa
discloses a heat pipe having a top, first plate. Ex. 1003, Figs. 2B, 3.
Petitioner asserts that Takahashi discloses a heat pipe formed with a
first plate having a circumferential edge lip because each of Takahashi’s
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plates contain flanges 17 at the tips, which are brazed together to form a
sealed container. Pet. 64. Petitioner asserts that it “would have been
obvious to combine Morikawa with Takahashi in a manner resulting in the
first plate “having a circumferential edge lip bounding an inner surface.” Id.
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. 53 (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
(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) and the peripheral edge part of second plate member
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(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 Morikawa discloses a first plate and Takahashi discloses a first plate
with a circumferential edge lip. We now turn to Petitioner’s reason to
combine these teachings.
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As to motivation to combine, Petitioner asserts that “both Morikawa
and Takahashi concern heat pipe structures that include through holes
located at the body region of the heat pipes for securing them onto the heat
generating elements.” Pet. 65. 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 Morikawa
and Takahashi are similar and analogous.” Id. (citing Ex. 1002 ¶ 98).
Simply noting that Morikawa 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, relying on the testimony of Dr. Pokharna, further reasons
that a person of ordinary skill in the art would have understood that it would
not be easy to bond and seal the edges of Morikawa’s plates and would have
been motivated to seek a better way to form and bond the plates at their
edges. Pet. 66 (citing Ex. 1002 ¶ 99). Petitioner contends that “Takahashi,
teaches this ‘better way’ (which a POSITA would have been motivated to
seek for improving Morikawa) by describing the manufacturing processes of
‘pressing’ and ‘brazing’ for forming and boding/sealing [sic] a heat pipe’s
container plates.” Id. at 66‒67. Specifically, Petitioner argues:
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A POSITA would have been motivated to combine Takahashi’s
“flanges (17) and (17)” with Morikawa’s sealed enclosure 10
because it would have made bonding and sealing the plates at
their edge, periphery, or circumference in Morikawa easier by
“pressing,” “brazing,” and/or “soldering” the two “flanges (17)
and (17)” in Takahashi together. This is because these “flanges
(17) and (17)” are protruding and exposed outwardly, and thus
are easier to be pressed and clamped together while being heated
to make them bond and seal together during the manufacturing
processes. . . . Because the “flanges (17) and (17)” structures and
the associated manufacturing processes in Takahashi were well-
known at the time of filing for the ’240 patent, a POSITA would
have reasonably expected the combination of Morikawa and
Takahashi to yield predictably successful results with an easier
and better bonded and sealed edge, periphery, or circumference
of the sealed enclosure in Morikawa.
Id. at 67‒68 (citing Ex. 1002 ¶ 99); Pet. Reply 29 (citing Ex. 1032 ¶¶ 57‒
65).
Patent Owner attacks Petitioner’s evidence of a reason to combine
Morikawa and Takahashi and Petitioner’s assertion that, as combined, the
modified heat pipe of Morikawa would have circumferential edge lips.
Specifically, as to a reason to combine, Patent Owner argues that “rather
than make bonding or sealing the periphery, circumference or edge of
Morikawa’s heat pipe container ‘easier,’ Takahashi’s ‘flanges (17) and (17)’
would have created additional junction points where leakage could occur.”
PO Resp. 54 (citing Ex. 2002 ¶ 154).
We do not give much weight to Dr. Faghri’s testimony because it is
based on an incorrect premise that Morikawa is not constructed of two
plates. See Ex. 2002 ¶ 154. As discussed above in our analysis of the
challenge to claim 9, Morikawa discloses a heat pipe formed of two plates.
See supra § II.E.2.b. We are convinced by Dr. Pokharna’s testimony that
Takahashi’s flanges would have been seen by a person having ordinary skill
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in the art as an improvement to the method of joining the edges of
Morikawa’s heat pipe because it would be easier to press or clamp together
the flanges protruding from the edges of the plates to bond the plate edges
together. Pet. 67‒68; Ex. 1002 ¶ 99; Id. at 92 (citing Ex. 1002 ¶ 138).
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 Morikawa to improve sealing by employing Takahashi’s
flanges. Pet. 68‒69 (citing Ex. 1002 ¶ 99); id. at 92 (citing Ex. 1002 ¶ 138).
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 Morikawa and Takahashi to yield predictably
successful results.” Ex. 1002 ¶ 99.
Dr. Faghri testifies that adopting Takahashi’s flanges would have
complicated Nakamura’s and Morikawa’s conventional heat pipe
construction because it would have created gaps in their 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 and Morikawa’s conventional heat pipes.
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.
Patent Owner argues that because Takahashi fails to teach that the
“flanges” extend around the circumference of Takahashi’s container, the
proposed modification of Morikawa with Takahashi’s flanges would not
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result in “circumferential edge lips.” PO Resp. 54‒55 (arguing that
Morikawa’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 Morikawa, 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 Morikawa’s end caps, to seal the heat pipe. Ex. 1002
¶ 99.
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. 92‒93
(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 ¶ 142). 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 relative to inner
surface 34 of cover 20 in Figures 1 and 2 of the ’240 patent. Compare
Pet. 94 (showing annotated Figure 3 of Nakamura) with Ex. 1001, Figs. 1, 2
(showing depressions 26).
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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. 59‒61. This contention is addressed below.
Thus, Petitioner has demonstrated by a preponderance of the evidence
that Morikawa, as modified by Takahashi and Nakamura, 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 Morikawa,
Takahashi, and Nakamura, Petitioner contends that Morikawa’s heat pipe
includes a second plate arranged in spaced apart confronting relation to the
first plate. Pet. 95 (incorporating the analysis in Sections IX.D.4 on Pet. 30).
Patent Owner argues that Morikawa does not disclose constructing a heat
pipe using two plates. PO Resp. 57. For the same reasons discussed above
in our analysis of claim 9 (see supra § II.E.2.b), we agree with Petitioner
that Morikawa discloses a two-plate construction.
Turning to the remainder of the claim limitation, Petitioner contends
that it would have been obvious to modify Morikawa’s second plate with
Takahashi’s flanges to result in “a circumferential edge lip bounding an
inner surface” of the second plate. Pet. 95 (referring back to Section IX.D.5
on Pet. 31‒32). 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
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ordinary skill in the art and that the combination would have led to the
circumferential edge lip as claimed. See supra § II.H.2.b.
Petitioner also contends that Morikawa, as modified by Takahashi and
Nakamura would have rendered obvious a second plate containing “at least
one opening” therethrough. Pet. 95‒96 (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 ¶ 142). 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. 60‒61. 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
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 Morikawa, as modified by Takahashi and Nakamura,
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 Morikawa, as modified to add the flanges of
Takahashi, results in a heat pipe in which the edge lips of the first and
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second plates are sealingly bonded together so as to define a vapor chamber.
Pet. 96‒97 (incorporating the analysis in Section IX.D.719 on Pet. 34‒36 and
Section IX.D.8 on Pet. 36‒37); Ex. 1002 ¶ 143‒144). As discussed above,
we find that Petitioner has provided adequate evidence and reasoning of a
motivation to employ Takahashi’s flanges in Morikawa’s heat pipe. Further,
we agree that the modification to add Takahashi’s flanges to Morikawa’s
heat pipe results in the circumferential edges lips on each plate being
sealingly bonded together.
Patent Owner argues that Petitioner’s typographical error in its cross-
reference to a non-existent section in the Petition renders this ground
inadequate because the Petition fails to address how the structure resulting
from the combination defines a “vapor chamber.” PO Resp. 56. First, we
understand the Petitioner’s improper cross-reference to refer to the analysis
in Sections XI.D.7 and XI.D.8, which address similar claim limitations to
those at issue in claim 13. Second, these sections of the Petition address the
“vapor chamber” limitation, and for the same reasons discussed above in our
analysis of claim 9, we agree with Petitioner that Morikawa’s heat pipe
defines a “vapor chamber,” as recited in claim 13. See supra §II.E.2.b.
For these reasons, Petitioner has provided adequate evidence to show
that Morikawa, as modified by Takahashi and Nakamura, would have led
one having 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.

19 The Petition refers to non-existent sections XI.B.7 and XI.B.8. We
understand Petitioner to have intended to refer to IX.D.7 and IX.D.8, which
address the same limitations as in claim 13.
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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. 97‒104 (by reference to annotations
on Figure 4 of Nakamura) (citing Ex. 1002 ¶¶ 145‒148; 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 ¶ 148.
Patent Owner argues that Nakamura does not disclose a depression
having a portion of its outer surface “sealingly bonded to said second plate.”
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PO Resp. 60. Patent Owner argues that Nakamura describes “one concavity
bonded to another concavity formed in the container walls.” Id. (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. at 60‒61.
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 Morikawa, as modified by Takahashi and Nakamura, 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.
f) Conclusion
Based on the foregoing, Petitioner has established that claim 13 is
unpatentable over the combination of Morikawa, Takahashi, and Nakamura.
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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 40. Petitioner opposes the motion.
Paper 42.
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
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
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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 challenged claims 11 and 12 of the ’240
patent are unpatentable. But Petitioner has shown by a preponderance of the
evidence that challenged claims 9, 10, and 13 are unpatentable.
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, claims 11 and 12 of the ’240 patent have not been
proven to be unpatentable;
FURTHER ORDERED that claims 9, 10, and 13 of the ’240 patent
have 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 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.
In summary:

Claims

35
U.S.C.
§
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
9, 10, 12 103(a) Morikawa 9, 10 12
9, 10 103(a) Morikawa/Nakamura 9, 10
12 103(a) Morikawa/Takahashi 12
11, 13 103(a) Morikawa,
Takahashi,
Nakamura
13 11
Overall
Outcome
9, 10, 13 11, 12
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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
Kevin P. Moran
Brian J. N. Marstall
MICHAEL BEST & FRIEDRICH LLP
kmalbridge@michaelbest.com
kpmoran@michaelbest.com
bjmarstall@michaelbest.com