Aavid Thermalloy LLC

Patent Trials and Appeals Board

Sep 16, 2020

IPR2019-00337 (P.T.A.B. Sep. 16, 2020)

Trials@uspto.gov Paper 51
571-272-7822 Entered: September 16, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

COOLER MASTER 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.

DECISION
Denying Petitioner’s Request on Rehearing of Final Written Decision
37 C.F.R. § 42.71(d)(2)

IPR2019-00337
Patent 7,066,240 B2
2
I. INTRODUCTION
Cooler Master Co., Ltd., (“Petitioner”) 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 challenged 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 asserted four grounds of
unpatentability. Id. at 5. Aavid Thermalloy LLC (“Patent Owner”) filed a
Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). On June
12, 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 22, “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 entered a Final Written Decision pursuant to 35 U.S.C. § 318(a).
Paper 49 (“Final Dec.”). We determined that Petitioner had not shown by a
preponderance of the evidence that claims 11 and 12 of the ’240 patent are
unpatentable, but Petitioner had shown by a preponderance of the evidence
that claims 9, 10, and 13 of the ’240 patent are unpatentable. Final Dec. 83.
On July 6, 2020, Petitioner filed a Request for Rehearing (Paper 50,
“Request” or “Req. Reh’g”) of our Final Written Decision. Petitioner seeks
reconsideration of the finding that Petitioner had not shown that claim 11 of
the ’240 patent is unpatentable. For the reasons provided below, Petitioner’s
Request for Rehearing is denied.
IPR2019-00337
Patent 7,066,240 B2
3
II. STANDARD OF REVIEW
A party requesting rehearing bears the burden of showing that the
decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
specifically all matters we misapprehended or overlooked, and the place
where each matter was previously addressed in a motion, an opposition, or a
reply. Id. When reconsidering a decision on institution, we review the
decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
discretion may be determined if a decision is based on an erroneous
interpretation of law, if a factual finding is not supported by substantial
evidence, or if the decision represents an unreasonable judgment in weighing
relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir.
2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).
III. ANALYSIS
Petitioner asserts that the Board failed to apply KSR’s1 flexible
approach to obviousness as it relates to the combination of Morikawa and
Nakamura and the determination of patentability of claim 11. Request 1. In
the Final Decision, the Board determined that Petitioner failed to provide
adequate explanation for the proposed modification of Morikawa with the
teaching of Nakamura in the manner recited in claim 11:
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

1 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
IPR2019-00337
Patent 7,066,240 B2
4
between and contacting said first and second plates” of claim
11).
Final Dec. 68.
Petitioner argues the Board’s finding that Petitioner’s showing of a
reason to combine Morikawa and Nakamura in the manner claimed was
insufficient is “contrary to the law.” Request 6. Specifically, Petitioner
asserts that it “need only provide ‘a reason’ as to why a [person having
ordinary skill in the art] would substitute Nakamura’s depressions for some,
but not all, of Morikawa’s columns in Morikawa’s device.” Id. (citing
Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 991‒992 (Fed. Cir.
2017)). Petitioner asserts that the Petition satisfied this burden. Id. at 3.
Thus, the Request asserts that the Board misapplied the applicable law
on obviousness and Petitioner’s burden to the facts of this case. We discuss
below the applicable law and then examine the Petition with respect to
Petitioner’s burden under the law.
A. Applicable law
1. Obviousness
As explained in our Final Decision, “A patent claim is unpatentable
under 35 U.S.C. § 103(a) if the differences between the claimed subject
matter and the prior art are such that the subject matter, as a whole, would
have been obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 406 (2007).” Final Dec. 9‒10. “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
IPR2019-00337
Patent 7,066,240 B2
5
the art; and (4) any objective evidence of non-obviousness. Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966).” Final Dec. 10 (footnote omitted).2
2. Petitioner’s Burden
As also explained in the Final Decision, “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).”
Final Dec. 9.
B. Petitioner’s Arguments
As discussed above, Petitioner argues that rehearing should be granted
“because the Board failed to apply KSR’s flexible approach to obviousness
as it relates to the combination of Morikawa and Nakamura.” Request 1.
Petitioner contends that it “adequately explain[ed] why a [person having
ordinary skill in the art] would find it obvious to replace some of
Morikawa’s columns (the claimed spacer) with Nakamura’s depressions.”
Id. at 2. Specifically, Petitioner argues that “the Petition identifies two
reasons” for the proposed modification: “structural support and wick
support.” Id. at 4. Petitioner explains, with citation to page 46 of the
Petition, that “Nakamura is a follow-on filing to the Morikawa heat pipe
patent application.” Id.

2 Petitioner does not contest our finding as to the level of skill in the art.
Final Dec. 11 (adopting Petitioner’s proffered level of ordinary skill).
Further, as noted in the Final Decision, the record did not contain objective
evidence of non-obviousness. Id. at 10, n.7.
IPR2019-00337
Patent 7,066,240 B2
6
We acknowledged in the Final Decision that Nakamura discloses an
improvement to Morikawa’s heat pipe, and, in fact, found that Nakamura’s
teaching of an improvement and criticism of Morikawa’s configuration
would have led one having ordinary skill in the art to replace all of
Morikawa’s spacers with Nakamura’s concavities. Final Dec. 68 (agreeing
with Patent Owner’s arguments as to the manner in which Morikawa would
have been modified in light of Nakamura’s disclosure). Petitioner’s citation
to page 46 is misplaced to the extent Petitioner relies on this portion of the
Petition for a reason to modify Morikawa to replace only some of
Morikawa’s spacers with Nakamura’s concavities. Page 46 of the Petition
addresses Petitioner’s proposed modification of Morikawa to substitute
Nakamura’s concavities for Morikawa’s pipes to meet the “hollow column”
limitation of claim 9. See Pet. 49–50 (Petitioner explaining that the
proposed combination is the modification of Morikawa’s pipes “to solve
these problems.”). Claim 9, unlike claim 11, does not recite both “at least
one spacer extending between and contacting” both plates and “at least one
depression.” Thus, the Petition’s discussion of the challenge to claim 9 does
not include a reason to replace only some of Morikawa’s spacers with
Nakamura’s concavities.
Petitioner argues that a person having ordinary skill in the art at the
time of the ’240 patent was clearly aware of both Morikawa and Nakamura.
Request 4‒5 (citing Pet. 14‒15 (discussing an overview of Morikawa), 41‒
42 (discussing an overview of Nakamura), and 45‒46 (discussing
combination of Morikawa and Nakamura for purposes of the “hollow
column” limitation of claim 9)). We agree with Petitioner that a person
having ordinary skill in the art would have been aware of both of these
references at the time of the invention. This fact alone, however, is not
IPR2019-00337
Patent 7,066,240 B2
7
sufficient to provide a reason to modify Morikawa with the teaching of
Nakamura in the manner claimed in challenged claim 11.
Petitioner also contends it explained that it is “obvious to replace only
some of Morikawa’s spacers, viz. the metal pipes having through-holes
(shown above, right), while retaining Morikawa’s conventional spacers,
which do not have through-holes (shown below, left).” Request 5 (citing
Pet. 46‒47, 88‒89; Reply 32‒33). According to Petitioner, the modification
would have been obvious “because, as explained by Petitioner, Nakamura’s
‘criticism’ of Morikawa relates only to the metal pipes that have
through-holes, but not to the conventional spacers that do not.” Id. (citing
Reply 32‒33; Pet. 88‒89). Petitioner’s argument is flawed for two reasons.
The first flaw in Petitioner’s argument is that it is premised on a
misreading of Nakamura. Specifically, we disagree with Petitioner’s reading
of Nakamura as criticizing only the metal pipes that have through-holes.
Nakamura describes “work of joining the metal pipe 6 and an outer wall of
the heat pipe 4 by brazing or the like is difficult, and there are manufacturing
disadvantages such as the refrigerant leaking from a junction.” Ex. 1004, 4;
see also Ex. 2012, 4 (describing that Morikawa “has shortcomings in
manufacturing, such as the difficulty in joining the metal tubes 6 and the
exterior walls of the heat pipe 4 by brazing or the like, the occurrence of a
coolant leakage from the joints, and the like.”). Nakamura here is referring
to metal tubes 6 of “a conventional heat pipe” as depicted in Figures 2(A)
and 2(B). Ex. 1004, 4, 8. Figures 2(A) and 2(B) of Nakamura appear to be
based on Figures 2(A) and 2(B) of Morikawa, where Nakamura’s Figures
use element numbering that differs from Morikawa’s. Comparing the
Figures, it appears that metal tubes 6 of Nakamura correspond to metal pipes
11a of Morikawa.
IPR2019-00337
Patent 7,066,240 B2
8
Morikawa describes that with demand for the walls of the heat pipe to
be thin, “a spacer as a reinforcing material is generally disposed inside the
enclosure.” Ex. 1003, 4:1‒8. With respect to metal pipes 11a, Morikawa
describes that “the large number of metal pipes 11a that define the holes 11
are very useful as spacers in place of or together with this conventional type
of spacer.” Ex. 1003 4:9‒12. Morikawa further describes that the through
holes 11 in metal pipes 11a can be formed in one of two ways: (1) “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,” and (2) “by welding and fixing a metal column to upper and
lower inner surfaces of the panel like a conventional spacer to form the
enclosure and afterward opening a hole in the panel walls and this metal
column by a drill” where “the holes may be formed in advance in the upper
and lower surfaces of the panel” and may be “closed from the inside by
welding a metal column of a cross-sectional area sufficient to block these
holes, and the metal column may afterward be drilled from the panel hole to
bore the through path.” Id. at 4:25‒41.
Thus, Nakamura’s criticism of Morikawa is not limited to the coolant
leakage that would be an issue with the metal pipes that have through-holes.
Rather, Nakamura’s criticism includes the disadvantage that it is difficult to
join the metal pipes and the outer wall of the heat pipe. This criticism
extends equally to all the metal pipes in Morikawa and would suggest using
Nakamura’s concavities to form all the spacers between the plates. See
Ex. 2002 ¶¶ 159‒161 (Patent Owner’s expert supporting a contrary reading
of Nakamura than that argued by Petitioner).
The second flaw in Petitioner’s argument is that the Petitioner did not
present arguments in the Petition that Nakamura’s criticism of Morikawa
IPR2019-00337
Patent 7,066,240 B2
9
relates only to the metal pipes that have through-holes in the cited portions.
Specifically, Petitioner cites pages 46‒47 and 88‒89 of the Petition in its
Rehearing Request. Pages 46‒47 of the Petition do not address the
challenge to claim 11. As discussed above, pages 46‒47 of the Petition are
directed to modification of Morikawa with Nakamura for the “hollow
column” limitation of claim 9, and do not address the proposed modification
of only some of Morikawa’s spacers with Nakamura’s concavities.
Although pages 88‒89 of the Petition are directed to the challenge to
claim 11, this portion of the Petition fails to provide adequate support for the
proposed modification. The Petition relies on paragraph 93 of
Dr. Pokharna’s Declaration as support as follows:
A POSITA would have understood and found it obvious
that Morikawa teaches a “conventional spacer” by “welding and
fixing a metal column to upper and lower inner surfaces of the
panel … to form the enclosure.” (Morikawa 4:31-33.) In
particular, a POSITA would have understood that, when
combined with Nakamura, Morikawa no longer needs to create
the “through path” inside such “metal column” by “afterward
opening a hole in the panel walls and this metal column by a
drill.” (Morikawa, 4:30-35.) (Pokharna, ¶93.) This is because,
as a POSITA would have understood and found obvious, the
“through path” isolated from the vapor chamber is now formed
on the “concavity joining surfaces 9a” after modifying Morikawa
in accordance with Nakamura, as discussed above in Sections
XII.A.6 and XII.A.8.
Pet. 88 (emphasis added). No further support for Petitioner’s assertions as to
the understanding of a person having ordinary skill in the art can be found in
paragraph 93. Paragraph 93 of Dr. Pokharna’s Declaration falls within
Section XI.A.1 of the declaration, addressing an “Overview of Morikawa”,
and the sole content of this paragraph is a cross reference to itself. Ex. 1002
¶ 93 (“See Section XI.A.1 above”). Thus, paragraph 93 does not provide
IPR2019-00337
Patent 7,066,240 B2
10
any reasoning for the proposed modification of Morikawa with Nakamura in
the manner called for in claim 11, i.e., replacing only some of Morikawa’s
spacers with Nakamura’s concavities.
Furthermore, as noted in our Institution Decision, paragraph 93 does
not address the spacer limitation of claim 11 or the asserted ground of
unpatentability of claim 11 over Morikawa, Takahashi, and Nakamura.
Institution Dec. 39, n.10. Paragraph 93 appears in the portion of the
Pokharna Declaration addressing the challenge to claim 12 under the third
asserted ground. Paragraph 124 of the Pokharna Declaration addresses the
spacer limitation of claim 11, but the testimony in this paragraph does not
match the assertion set forth in the Petition. See Ex. 1002 ¶ 124.
Likewise, pages 32‒33 of Petitioner’s Reply repeat the same error by
simply referring back to the explanation on pages 88‒89 of the Petition for
the reasoning for the proposed modification:
As explained in the Petition, 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. (Petition at 88-89.)
Accordingly, it is obvious to use Nakamura’s known depressions
with Morikawa’s known columns under KSR.
Pet. Reply 32.
Further, although Petitioner presented its argument about Nakamura’s
criticism of Morikawa’s heat pipe in its Reply, Petitioner failed to provide
any expert testimony to support its argument as to how a person of ordinary
skill in the art would understand Nakamura. Instead, Petitioner argued that
“Nakamura describes some of its advantages over Morikawa’s ‘metal pipe
6’ only” and that “Nakamura is not describing any disadvantages at all
associated with Morikawa’s ‘conventional spacer’ by ‘welding and fixing a
IPR2019-00337
Patent 7,066,240 B2
11
metal column to upper and lower inner surfaces of the panel.” Pet. Reply 33
(citing Nakamura at 4; Morikawa, 4:31‒33). Patent Owner, however,
provided expert testimony as to how a person having ordinary skill in the art
would have understood Nakamura’s criticism of Morikawa’s spacers.
PO Resp. 58 (citing Ex. 2002 ¶ 160). We credited this testimony in our
Final Decision. Final Dec. 67 (citing PO Resp. 58); id. at 68 (agreeing with
Patent Owner’s argument).
Petitioner attacks Patent Owner’s expert’s testimony, arguing for the
first time in the Request for Rehearing that “Patentee’s own expert testified
that ‘too many depressions will begin to negatively affect the structural
integrity of the plates and adversely restrict the vapor flow.’” Request 5‒6
(citing PO Resp. 9; Ex. 2002 ¶ 58). Petitioner did not, however, raise this
Patent Owner “admission” in its Petitioner Reply and did not independently
present this argument about too many depressions in either its Petition or its
Reply. See Pet. Reply 32‒34 (responding to Patent Owner’s arguments
regarding the claim 11 challenge). We cannot have misapprehended or
overlooked an argument that Petitioner did not present.
Petitioner further contends that “the Board’s obviousness findings are
not in accordance with the law.” Request 2; see also id. at 6 (arguing that
“Petitioner need only provide ‘a reason’ as to why a [person having ordinary
skill in the art] would substitute Nakamura’s depressions for some, but not
all, of Morikawa’s columns in Morikawa’s device.”). Petitioner discusses
the proposed replacement of Morikawa’s “through path” spacers with
Nakamura’s concavities, but Petitioner does not discuss why Morikawa’s
remaining spacers would also not be similarly replaced. In other words, as
explained above, Petitioner provided no reason in its Petition to explain why
one would have modified Morikawa by substituting only some spacers with
IPR2019-00337
Patent 7,066,240 B2
12
Nakamura’s concavities, when Nakamura teaches making all of its spacers
using abutting concavities. Pet. 88‒89 (citing Pokharna ¶ 93, which cross-
references itself); Final Dec. 57 (describing Nakamura).
As explained in the Final Decision, upon review and consideration of
the arguments and evidence submitted by the parties, Petitioner failed to
show that the combined teachings of Morikawa and Nakamura would have
led one having ordinary skill in the art to the combination of conventional
spacers, as discussed in Morikawa, and depressions formed by Nakamura’s
concavities, as recited in claim 11. Petitioner’s arguments in the Request for
Rehearing do not persuade us that we erred in our application of the facts as
presented by Petitioner to the standard for determining obviousness, as set
forth in KSR, in finding that Petitioner failed to show unpatentability of
claim 11.
C. Conclusion
For the foregoing reasons, Petitioner has not shown that we
misapprehended or overlooked Petitioner’s arguments or evidence in
determining that Petitioner did not show by a preponderance of evidence that
challenged claim 11 of the ’240 patent is unpatentable.
IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that Petitioner’s Request for Rehearing is denied.
IPR2019-00337
Patent 7,066,240 B2
13
FOR PETITIONER:
Erik B. Milch
Andrew C. Mace
Reuben Chen
COOLEY LLP
emilch@cooley.com
amace@cooley.com
rchen@cooley.com

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