Aavid Thermalloy LLC

Patent Trials and Appeals Board

Sep 17, 2020

IPR2019-00338 (P.T.A.B. Sep. 17, 2020)

Trials@uspto.gov Paper 56
571-272-7822 Date: September 17, 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.
____________

IPR2019-00338
Patent 7,100,680 B2
____________

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

BARRETT, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing of the Final Written Decision
37 C.F.R. § 42.71(d)
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I. INTRODUCTION
Cooler Master Co., Ltd. (“Petitioner”) filed a Request for Rehearing,
Paper 55 (“Request” or “Req. Reh’g”), of the Final Written Decision
determining some challenged claims of U.S. Patent No. 7,100,680 B2
(“the ’680 patent,” Ex. 1101) to be unpatentable, Paper 54 (“Final Decision”
or “Final Dec.”). Pertinent to this Request, we determined that Petitioner
had not demonstrated that claim 8 of the ’680 patent would have been
obvious over Morikawa and Takahashi. Final Dec. 43–46. Petitioner
requests rehearing of that determination. Req. Reh’g 11. For the reasons
provided below, Petitioner’s Request for Rehearing is denied.
II. ANALYSIS
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.
Claim 8 depends directly from independent claim 5, which recites a
hollow column sealed to a top plate. Dependent claim 8 further limits the
hollow column recited in the underlying independent claim. Specifically,
dependent claim 8 recites: “each of said at least one hollow column each
has a top shoulder disposed near a top end and bonded to a bottom surface of
said top plate around one opening.” Ex. 1101, 7:8–11.
Petitioner’s general assertion of error is that “the Board found that the
prior art did not disclose the shoulder limitation of claim 8.” Req. Reh’g 1
(citing Final Dec. 43–46). To be precise, rather than making an affirmative
finding as to the prior art’s disclosure, as Petitioner asserts, we determined
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that “Petitioner has not demonstrated that Morikawa discloses the recited
[top shoulder limitation].” Final Dec. 45. In other words, our determination
was that Petitioner had not met its burden of proving that a limitation was
taught by the prior art, and therefore had not met its burden of proving that
the challenged claim is unpatentable.
In its Request, Petitioner makes two specific arguments. First,
Petitioner argues that we misapprehended Petitioner’s arguments associated
with figures in the Petition and, in doing so, we incorrectly inferred
Petitioner’s construction for the term “shoulder.” Req. Reh’g 1, 5–8.
Second, Petitioner argues that a figure in the Petition explains how the top
shoulder limitation is met. Id. at 2, 9–11.
A. The Alleged Errors Regarding Petitioner’s Arguments
Petitioner first argues that “[t]he Board misapprehended what
Petitioner points to as ‘a top shoulder,’ which is actually the corner portions
located around the top outer rim of the hollow column.” Req. Reh’g 5
(heading to Section II(B); bolding omitted).
The Petition sets forth two theories as to how Morikawa allegedly
discloses a hollow column having a top shoulder disposed near the top end
and bonded to the bottom of the top plate. Pet. 54–58. One theory utilizes
an “excerpted and annotated Figure 2” of Morikawa. Id. at 54–56. The
second theory utilizes a demonstrative figure not found in Morikawa to
visually explain Petitioner’s arguments regarding “Morikawa’s alternative
embodiment discussed . . . in Section IX.B.6 [of the Petition].” Id. at 57–58;
see also id. at 46 (the cross-referenced section explaining how Petitioner
arrived at the demonstrative figure); Req. Reh’g 9 (identifying the figure on
page 57 of the Petition as merely “based on an embodiment in Morikawa”);
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but see id. at 2 (referring to the figure from page 57 of the Petition as “the
annotated figure above from Morikawa”).
Reproduced below is the “excerpted and annotated Figure 2” of
Morikawa utilized for Petitioner’s first theory.1

1 In the Request, Petitioner argues that it is identifying the “top shoulder” by
“point[ing] to the corner portions located around the top outer rim of the
hollow column.” Req. Reh’g 5. Petitioner’s annotations, however, have the
“sealed” areas distanced from the top corners and the arrows from the “a top
shoulder” label pointing to locations other than at the top corner.
Presumably, Petitioner’s “sealed” areas are positioned in this figure so as to
address the claim’s additional recitation of “bonded to a bottom surface of
said top plate.” It is not clear how this annotated figure shows top corner
portions bonded to the underside of the top plate.
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Pet. 54, 56. Shown above is an excerpt of Morikawa’s Figure 2(B), which is
“a cross-sectional perspective view illustrating a structure of a main portion
of the heat pipe [of Morikawa],” with Petitioner’s annotations. Ex. 1103,
4:52–53. Petitioner argues that, “[a]s can be seen [above] in excerpted and
annotated Figure 2, Morikawa’s ‘metal pipe 11a’ (indicated in light yellow)
corresponds to ’680’s ‘said at least one hollow column’ and has a ‘top
shoulder’ (indicated in cyan).” Pet. 54–56 (emphasis added) (citing
Ex. 1102 ¶ 71). Thus, Petitioner contends that the recited “top shoulder” is
that “indicated in cyan” in the annotated figure reproduced above.
Reproduced below is the demonstrative figure “based” on Morikawa
and utilized for Petitioner’s second theory.

Id. at 57. Shown above is a figure utilized by Petitioner to demonstrate its
contentions as to how a person of ordinary skill in the art would have
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understood “Morikawa’s alternative embodiment” to be configured.
Pet. 46–49 (Section IX.B.6), 57; see Req. Reh’g 9 (“The figure on page 57
of the Petition, which is based on an embodiment in Morikawa, explains
how the limitation of ‘a top shoulder’ is met under the correct understanding
of the entirety of the hollow column shown in the figure.”). Petitioner
argues that, “as can be seen [above], Morikawa’s alternative ‘metal pipe’
(indicated in light yellow) corresponds to ’680’s ‘said at least one hollow
column’ and has a ‘top shoulder’ (indicated in cyan).” Pet. 57 (emphasis
added) (citing Ex. 1102 ¶ 72). Thus, Petitioner, similar to and consistent
with the first theory, contends that the recited “top shoulder” is that
“indicated in cyan” in the demonstrative figure reproduced above.
In its Reply Brief, Petitioner provides an annotated version of Figure 2
of the challenged ’680 patent. That annotated Figure 2 is shown below.

Pet. Reply 29. The figure above is a cross section view of an alternative
embodiment of a heat pipe of the ’680 patent, with Petitioner’s annotations
including purple rectangles and arrows. Ex. 1101, 3:17–19. Petitioner’s
annotations indicate where “[solid] columns 44 are bonded to cover plate 20
at locations 46.” Id. at 4:26–29. Petitioner argues that this annotated figure
shows how a person of ordinary skill in the art “would understand the
‘shoulder’ arrangement” of dependent claim 8, and asserts that “[a]s shown,
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the purple region is where the solid column’s shoulder is bonded to the
plate.”2 Pet. Reply 28-29.
Also in its Reply Brief, Petitioner provides an annotated version of
Morikawa’s Figure 2(B), which is reproduced below.

Paper 33 (“Pet. Reply”) 29. Shown above is the entirety of Morikawa’s
Figure 2(B), which, as mentioned above, is “a cross-sectional perspective
view illustrating a structure of a main portion of the heat pipe [of
Morikawa],” with Petitioner’s annotation in the form of a purple rectangle
around the entire upper portion of metal pipe 11a. Ex. 1103, 4:52–53, 5:3.
Petitioner argues that this Morikawa figure, in the annotated purple region,
discloses the same arrangement “where the solid column’s shoulder is
bonded to the plate” as in the figure from the Specification discussed above.
Pet. Reply 29 (citing Ex. 1102 ¶¶ 71–72; Ex. 1132 ¶¶ 76–77; Pet. 56.).
Petitioner argues that this Figure 2 of Morikawa thus “discloses the shoulder
requirement of claim 8.” Id.

2 Petitioner argues that it is “entitled” to rely on the plate-to-column
arrangement shown in this figure from the ’680 patent for claim construction
purposes because neither party’s expert offered a plain and ordinary
meaning for “shoulder” and because that claim term “does not appear in the
text of the subject patent’s specification.” Req. Reh’g 7–8. We decline to
conclude that the lack of evidence in the record of a plain and ordinary
meaning of “shoulder” indicates that there is no such meaning in the art.
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In the Final Decision, we stated:
Petitioner’s implied construction is that the claimed “shoulder”
is the top end of a column. This is inconsistent with the claim
language which recites that the “hollow column . . . has a top
shoulder disposed near a top end” thus indicating that the top
shoulder is not merely the top end of the column but a structure
“near” and discernable from the top end of the hollow column.
Final Dec. 45.
Petitioner argues in its Request that “[t]he Board’s findings . . . were
based on a misapprehension of the arguments associated with a figure . . .
[from page 57] in the Petition,” and that “the Board incorrectly inferred
Petitioner’s ‘implied construction’ for the term, ‘[a top] shoulder,’ in claim 8
of the ’680 patent as ‘the top end of a column.’” Req. Reh’g 1 (citing Final
Dec. 45). Petitioner further argues that it “has always and consistently
pointed to the corner portions located around the top outer rim of the hollow
column as meeting the limitation of ‘a top shoulder,’ as shown [in the two
figures from pages 56 and 57 of Petition and reproduced above].” Id. at 5–6.
We are not persuaded by Petitioner’s argument that we
misapprehended its implied construction of the recited “top shoulder
disposed near a top end” of the column. Petitioner, prior to the Final
Decision and as detailed above, consistently identified the top end of
Morikawa’s metal pipe (mapped by Petitioner to the recited “hollow
column”) as a top shoulder disposed near a top end of the column. Petitioner
articulated this position via the use of the cyan line in the Petition and the
purple rectangle in its Reply. Petitioner’s assertion in the Request that the
top shoulder in Morikawa is the “corner portions located around the top
outer rim of the hollow column” is a new argument. As such, it is not
something that we could have misapprehended or overlooked.
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Even if this was not an untimely argument, we do not find it
persuasive. Petitioner’s articulation of its proposed construction in the
Request, like the applied construction in the Petition, reads out limitations
imposed by the claim language itself. As mentioned, dependent claim 8
further limits the hollow column of the underlying independent claim 5,
adding, in part, a requirement that the hollow column have a “top shoulder
disposed near a top end.” Petitioner fails to explain how an article, under its
current construction—where a “top shoulder” merely is “the corner portions
located around the top outer rim of the hollow column,” Req. Reh’g 11—is
structurally different than every other column that would have a corner at the
top, namely the intersection of the vertical side and the top surface. Thus,
Petitioner’s construction fails to give meaning to, at least, the dependent
claim’s addition of structure in the form of a shoulder disposed near the top
end of the column.
B. Petitioner’s Argument that a Figure in the Petition Discloses the
“Top Shoulder”
Petitioner next argues that “[t]he figure on page 57 of the Petition,
which is based on an embodiment in Morikawa, explains how the limitation
of ‘a top shoulder’ is met under the correct understanding of the entirety of
the hollow column shown in the figure.” Req. Reh’g 9; see also id.
(section heading asserting that a demonstrative figure in the Petition
“disclosed the ‘top shoulder’”). This section of the Request primarily is an
argument as to how Petitioner purportedly satisfied its burden, which is, in
effect, merely an assertion of disagreement with our determination that the
Petition was not persuasive, rather than identification of anything we
misunderstood or overlooked. To the extent that these arguments were
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raised in substantive briefs, we considered those arguments in reaching the
Final Decision. See Final Dec. 43–46.
Petitioner asserts that it previously identified the “top end” as only the
“top inner rim” (i.e., the inner diameter or inner circumference of the hollow
column) as shown in the demonstrative figure on page 57 of the Petition.
Req. Reh’g 9, 11. Thus, argues Petitioner, the “corner portions located
around the top outer rim” “is a structure that is different from but is located
‘near’ the indicated ‘top end,’ i.e., the top inner rim (orange) of the hollow
column.” Id. at 11. This is a new argument and is inconsistent with the
visual argument on page 56 of the Petition where the actual figure from
Morikawa is annotated to identify either the outer circumference or the
entire top of the hollow column as “a top end,” not merely the “top inner
rim.”
We stated in the Institution Decision and reiterated in the Final
Decision:
We fail to discern, in the relied upon figures, any
structure in the form of a shoulder, notwithstanding Petitioner’s
addition of cyan lines. We also note that the second annotated
figure (on Pet. 57) identifies, via red circles at added cyan lines,
“sealed” areas that appear to be some distance from the
purported metal pipe (light yellow); this suggests that Petitioner
is relying on its own added cyan line as disclosure of a shoulder
on a hollow column. See id. at 57.
Final Dec. 44 (quoting Paper 7 (Dec. to Inst.), 20). In the Request,
Petitioner provides a further annotated version of the demonstrative figure,
this time adding a dashed white rectangle, and argues that the “black contour
of the hollow column” should be understood as part of the hollow column.
Req. Reh’g 9–10. The newly added white rectangle is tangent to the
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“sealed” circle annotations, and Petitioner argues that the sealed area is “no
longer” located some distance away. See id. at 11.
Even if we incorrectly interpreted Petitioner’s demonstrative figure
and that figure shows that the top corner of the pipe is sealed to the
underside of the top plate, the result does not change. The pertinent issue is
not whether Petitioner created a figure where a hollow column is bonded to
the underside of the top plate. Rather, the critical issue is whether Petitioner
has shown how Morikawa discloses that “each of said at least one hollow
column each has a top shoulder disposed near a top end and bonded to a
bottom surface of said top plate around one opening,” as recited in
dependent claim 8. Ex. 1101, 7:8–11. Petitioner’s argument, via the
demonstrative figure, may show “each of said at least one hollow
column . . . bonded to a bottom surface of said top plate around one
opening,” but reads out the portion of the limitation regarding a top
shoulder.
III. CONCLUSION
For the above reasons, Petitioner has not persuaded us that we
misapprehended or overlooked any fact or argument that demonstrates we
should modify our Final Written Decision. Therefore, we deny Petitioner’s
Request for Rehearing of the Final Written Decision.
IV. ORDER
For the foregoing reasons, it is
ORDERED that Petitioner’s Request for Rehearing is denied.

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PETITIONER:
Erik Milch
emilch@cooley.com

Andrew Mace
amace@cooley.com

Reuben Chen
rchen@cooley.com

PATENT OWNER:
Kenneth Albridge, III
kmalbridge@michaelbest.com

Kevin Moran
kpmoran@michaelbest.com

Brian Marstall
bjmarstall@michaelbest.com