Aavid Thermalloy LLC

Patent Trials and Appeals Board

Sep 16, 2020

IPR2019-00334 (P.T.A.B. Sep. 16, 2020)

Trials@uspto.gov Paper 57
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.

IPR2019-00334
Patent 7,100,680 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)

IPR2019-00334
Patent 7,100,680 B2
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I. INTRODUCTION
Cooler Master Co., Ltd. (“Petitioner”) filed a Request for Rehearing,
Paper 56 (“Request” or “Req. Reh’g”), of the Final Written Decision
determining one challenged claim of U.S. Patent No. 7,100,680 B2 (“the
’680 patent,” Ex. 1001) to be unpatentable, Paper 55 (“Final Decision” or
“Final Dec.”). Pertinent to this Request, we determined that Petitioner had
not demonstrated that claim 1 of the ’680 patent would have been obvious
over Morikawa, Takahashi, and Nakamura. Dec. 46–48. Petitioner requests
rehearing of that determination. Req. Reh’g 1.1
For the reasons provided below, Petitioner’s Request for Rehearing is
denied.
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 request must
specifically identify all matters the party believes the Board misapprehended
or overlooked, and the place where each matter was previously addressed in
a motion, an opposition, or a reply.” Id.
III. ANALYSIS
Petitioner asserts that the Board failed to apply KSR’s2 flexible
approach to obviousness as it relates to the combination of Morikawa and
Nakamura and the determination of patentability of claim 1. Request 1. In
the Final Decision, the Board determined that Petitioner failed to provide

1 Petitioner phrases the alleged error as pertaining to “obviousness as it
relates to the combination of Morikawa and Nakamura” and refers to
claim 11, which is a claim not challenged in the Petition. Req. Reh’g 1, 3, 8.
Notwithstanding the silence as to Takahashi, we understand Petitioner to be
seeking rehearing regarding the three-reference challenge to claim 1.
2 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
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adequate explanation for the proposed modification of Morikawa with the
teaching of Nakamura in the manner recited in claim 1:
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 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 1. For this reason, Petitioner has not shown by
a preponderance of the evidence that claim 1 is unpatentable
under 35 U.S.C. § 103(a).
Final Dec. 47–48.
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.
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
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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. 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
the art; and (4) any objective evidence of non-obviousness. Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966).” Id. (footnote omitted).3
2. Petitioner’s Burden
As also explained in the Final Decision, “Petitioner bears the burden
of persuasion to prove 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. 10.
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

3 Petitioner does not contest our finding as to the level of skill in the art. See
Final Dec. 11–12 (adopting Petitioner’s proffered level of ordinary skill).
Further, as noted in the Final Decision, the parties have not directed our
attention to any objective evidence of non-obviousness. Id. at 10, n.4.
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Patent 7,100,680 B2
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reasons” for the proposed modification: “structural support and wick
support.” Id. at 4. Petitioner explains, with citation to pages 58–59 of the
Petition, that “Nakamura is a follow-on filing to the Morikawa heat pipe
patent application.” Id.
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. See Final Dec. 47–48
(agreeing with Patent Owner’s arguments as to the manner in which
Morikawa would have been modified in light of Nakamura’s disclosure); id.
at 69–70 (finding, in the context of independent claim 3, that Petitioner
provided adequate reasoning, premised on Nakamura’s criticism, to
substitute Nakamura’s concavity for the pipe of Morikawa). Petitioner’s
citation to pages 58–59 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. Pages 58–59 of the
Petition address Petitioner’s proposed modification of Morikawa to
substitute Nakamura’s concavities for Morikawa’s pipes to meet the
“depression” limitation found earlier in claim 1. See Pet. 55, 62–63
(Petitioner explaining that the proposed combination is the modification of
Morikawa’s pipes “to solve these problems.”). The “spacer” limitation
appears later in claim 1 and, similarly, Petitioner’s purported reasoning
associated with that spacer limitation appears later in the Petition. See
Pet. 71–75. The Petition’s discussion of the earlier “depression” limitation
does not include a reason to replace only some of Morikawa’s spacers with
Nakamura’s concavities.
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Petitioner argues that a person having ordinary skill in the art at the
time of the ’680 patent was clearly aware of both Morikawa and Nakamura.
Request 4‒5 (citing Pet. 15–18 (discussing an overview of Morikawa), 46–
48 (discussing an overview of Nakamura), and 58–60 (discussing
combination of Morikawa and Nakamura for purposes of the “depression”
limitation of claim 1)). 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 sufficient to
provide a reason to modify Morikawa with the teaching of Nakamura in the
manner claimed in challenged claim 1. Similarly, that the Board found that
Nakamura discloses the “depression” limitation of another claim and found
that Morikawa discloses a “hollow column” limitation in another claim in
another patent in another inter partes review does not equate to sufficient
reasoning why a person having ordinary skill in the art would have combined
prior art teachings in a manner to arrive at the claimed subject matter having
both a “depression” and a “spacer.” See Request 2 (citing Final Dec. 69–70
(regarding claim 3); IPR2019-00337, Final Dec. (Paper 49) 49–50
(regarding the “hollow column” limitation of US 7,066,240, claim 9)).
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. 71–73; Reply 31–32). 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 31–32; Pet. 71–73). Petitioner’s argument is flawed for two reasons.
IPR2019-00334
Patent 7,100,680 B2
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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.
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
IPR2019-00334
Patent 7,100,680 B2
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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
relates only to the metal pipes that have through-holes in the cited portions.
Specifically, Petitioner cites, for this proposition, pages 71–73 of the Petition
in its Rehearing Request. Request 5. The arguments on pages 71–73 of the
Petition refer to how Morikawa’s pipes could be modified (by not drilling
the pipes) to become conventional solid spacers and is based on the
assumption that some pipes were retained during Petitioner’s initial
modification of Morikawa’s pipes to be concavities. See Pet. 62–63 (“A
POSITA would have been motivated to modify the metal pipe in Morikawa
that corresponds to the ‘hollow column’ structure in the ’680 patent to solve
these problems.”); id. at 71–72 (arguing that there would be no need for
pipes, i.e. metal columns with a through-hole, “after modifying Morikawa in
IPR2019-00334
Patent 7,100,680 B2
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accordance with Nakamura, as discussed above in Sections X.B.6 and
X.B.8.”). These pages do not discuss Nakamura’s criticism of Morikawa as
Petitioner asserts, and thus does not offer an argument that the criticism is
limited.
In sum, the Petition, in attempting to address limitations to two
different types of spacers in the same claim, failed to provide an adequately
articulated and consistent reason to combine the references’ teachings in a
manner that results in a structure having both types.
Pages 31–32 of Petitioner’s Reply repeat the same error by simply
referring back to the explanation on pages 71–73 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 71–73.)
Accordingly, it is obvious to use Nakamura’s known depressions
with Morikawa’s known columns under KSR.
Pet. Reply 31.
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
metal column to upper and lower inner surfaces of the panel.” Pet.
Reply 31–32 (citing Nakamura at 4; Morikawa, 4:31‒33). Patent Owner,
however, provided expert testimony as to how a person having ordinary skill
IPR2019-00334
Patent 7,100,680 B2
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in the art would have understood Nakamura’s criticism of Morikawa’s
spacers. PO Resp. 57 (citing Ex. 2002 ¶ 160). We credited this testimony in
our Final Decision. Final Dec. 47 (citing PO Resp. 58); id. at 47–48
(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); see id. at 7 (citing PO Resp. 9 as
“admitting” this). 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 30–32 (responding to Patent Owner’s arguments regarding the
subject aspect of the claim 1 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 adequate reason in its Petition to
explain why one would have modified Morikawa by substituting only some
spacers with Nakamura’s concavities, when Nakamura teaches making all of
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Patent 7,100,680 B2
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its spacers using abutting concavities. Pet. 71–73 (citing Pokharna ¶ 93);
Final Dec. 44–46 (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 1. 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 1.
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 1 of the ’680 patent is unpatentable.
IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that Petitioner’s Request for Rehearing is denied.
IPR2019-00334
Patent 7,100,680 B2
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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, III
Kevin P. Moran
Brian J. N. Marstall
MICHAEL BEST & FRIEDRICH LLP
kmalbridge@michaelbest.com
kpmoran@michaelbest.com
bjmarstall@michaelbest.com