Aavid Thermalloy LLC

Patent Trials and Appeals Board

Jun 4, 2020

IPR2019-00334 (P.T.A.B. Jun. 4, 2020)

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

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

COOLER 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.

BARRETT, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
Denying-in-Part, Dismissing-in-Part Patent Owner’s Motion to Exclude
35 U.S.C. § 318(a); 37 C.F.R. § 42.64
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I. INTRODUCTION
A. Background and Summary
Cooler Master Co., Ltd. (“Petitioner”)1 filed a Petition requesting
inter partes review of U.S. Patent No. 7,100,680 B2 (“the ’680 patent,”
Ex. 1001). Paper 2 (“Pet.”). The Petition challenges the patentability of
claims 1–3 of the ’680 patent. We instituted an inter partes review of all
challenged claims on all proposed grounds of unpatentability. Paper 7
(“Dec. to Inst.”), 38. Aavid Thermalloy LLC (“Patent Owner”)2 filed a
Response to the Petition. Paper 27 (“PO Resp.”). Petitioner filed a Reply
(Paper 34, “Pet. Reply”) and Patent Owner filed a Sur-Reply (Paper 40, “PO
Sur-Reply”). The parties filed papers addressing Patent Owner’s
identification of allegedly improper arguments and evidence in Petitioner’s
Reply. Papers 40 (PO Sur-Reply Appendix listing allegedly new theories
and new evidence in the Reply), 43 (Petitioner’s Response to the same),
Paper 49 (Petitioner’s Notice of Supplemental Authority), Paper 50 (Patent
Owner’s Notice of Supplemental Authorities).
Additionally, Patent Owner filed a Motion to Exclude (Paper 46, “PO
Mot. Excl.”), to which Petitioner filed an Opposition (Paper 48, “Pet. Opp.
Mot. Excl.”), and Patent Owner filed a Reply (Paper 51).
An oral hearing was held on March 5, 2020, and a transcript of the
hearing is included in the record. Paper 54 (“Tr.”).

1 Petitioner identifies Cooler Master Co., Ltd. and CMI USA, Inc. as real
parties-in-interest. Paper 37.
2 Patent Owner identifies Aavid Thermalloy LLC as the real party-in-
interest, and further states that “Aavid 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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This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
For the reasons discussed below, we determine that Petitioner has shown by
a preponderance of the evidence that claim 3 of the ’680 patent is
unpatentable, but Petitioner has not shown by a preponderance of the
evidence that claims 1 and 2 of the ’680 patent are unpatentable. We also
deny Patent Owner’s Motion to Exclude.
B. Related Proceedings
One or both parties identify, as matters involving or related to the
’680 patent, Aavid Thermalloy LLC v. Cooler Master Co., Case No. 4:17-cv-
5363 (N.D. Cal.), and Patent Trial and Appeal Board cases IPR2019-00144,
IPR2019-00145, IPR2019-00146, IPR2019-00147, IPR2019-00333,
IPR2019-00337, and IPR2019-00338. Papers 4; 37.
C. The ’680 Patent
The ’680 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 1:18–21.
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 1:66–2:2. 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 mounting board.” Id. at 2:3–
7. “[T]he same screws which hold the heat spreader against the chip can
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also be used to clamp a finned heat sink to the opposite surface of the heat
spreader.” Id. at 2:9–11.
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 2:12–20. 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 2:26–29.
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 2:36–46.
Figure 1 is reproduced below.
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Figure 1 shows “a cross section view of the preferred embodiment of a flat
plate heat pipe 10 of the invention with through holes 12 through its vapor
chamber 14 and in contact with finned heat sink 16.” Id. at 3:28–31. “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 4:15–18. “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 3:32–34.
“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 3:34–37.
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
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through holes 12 in heat pipe 10, and are threaded into the
mounting plate (not shown) for the integrated circuit chip.
Id. at 4:18–24.
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
affect on the interior of heat pipe 10.
Id. at 4:25–30.
The Specification describes an alternate embodiment. Id. at 2:47–59.
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 2:50–57. The Specification explains that, “with the holes located in
the peripheral lips, the heat pipe boundary structure can be any shape.” Id.
at 2:57–59. 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
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lips 22 and 24 of the heat pipe and hole 50 shown in another sealed
structure, one of the depressions 26.” Id. at 4:42–46. “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 4:49–53.
D. Illustrative Claims
All of the challenged claims of the ’680 patent, claims 1–3, are
independent claims. Those claims are reproduced below.
1. A heat pipe for spreading heat comprising:
a boundary structure including a first plate and a second
plate arranged in spaced apart relation, each of said plates
including interior confronting surfaces and a peripheral lip
located at an edge of said boundary structure which are bonded
together so as to define an enclosed vapor chamber;
a depression formed in said first plate which projects into
said vapor chamber, is spaced from said peripheral lip, and is
bonded to said second plate;
an opening defined through said first plate depression
and said second plate wherein said depression comprises an
annular outer surface that is bonded to a corresponding annular
edge surface in said second plate and further wherein said
opening is isolated from said vapor chamber;
at least one spacer extending between and contacting said
first and second plates; and
a wick positioned upon said confronting interior surfaces
including that portion of the interior surface of said first plate
that forms a surface of said depression within said vapor
chamber.

2. A heat pipe for spreading heat comprising:
a first plate having a circumferential edge lip bounding
an inner surface and at least one hollow column that is integral
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with said first plate and 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 bonded together so as to define a vapor chamber; wherein
a hollow column bonded at one end to said second plate
so as to coaxially align said hollow column with one of said at
least one openings in said second plate thereby to form a
mounting hole that extends through said first plate and said
second plate and is isolated from said vapor chamber.

3. A heat pipe for spreading heat comprising:
a first plate having a circumferential edge lip bounding
an inner surface and a 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 bonded together so as to define a vapor chamber; wherein
said depression having an open ended tubular cross-
section and an outer surface, a portion of which outer surface is
bonded to said second plate so as to coaxially align said
depression with one of said at least one openings 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.
Ex. 1001, 5:32–6:21.
Challenged independent claim 3, like claim 2, recites, in pertinent
part, “a circumferential edge lip bounding an inner surface” rather than “a
peripheral lip located at an edge of said boundary structure” as in claim 1.
Id. at 5:55–56, 6:5–6. Independent claim 5, challenged in a related petition
but not in this case, recites “an edge lip that bounds a top surface and a
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bottom surface.” Id. at 6:44–45; see, e.g., IPR2019-00338 (challenging
claims 5–8 of the ’680 patent).
E. Evidence
Petitioner relies on the following references:
Reference Exhibit No.
Japanese Examined Utility Model Application Publication
No. S53-32387 Y; Title: Heat Pipe; Published Aug. 11,
1978; Inventor: Takao Morikawa, Mitsuhiko Nakata (as
translated (“Morikawa”)
1003
Japanese Unexamined Utility Model Application S50-
55262; Asserted Year of Publication: 1975; Inventor: Kazuo
Nakamura (as translated) (“Nakamura”)3
1004
Japanese Examined Utility Model Application Publication
No. H8-10205; Published March 27, 1996; Inventors:
Tadahito Takahashi, Kaoru Hasegawa, Muneaki Sokawa (as
translated) (“Takahashi”)
1005
Petitioner also relies on the Declaration of Dr. Himanshu Pokharna
(Ex. 1002) and the Supplemental Declaration of Dr. Himanshu Pokharna
(Ex. 1032) in support of its arguments and Patent Owner relies on the
Declaration of Dr. Amir Faghri (Ex. 2002) in support of its arguments. The
parties rely on other exhibits as discussed below.
F. Asserted Grounds of Unpatentability
Petitioner asserts that the challenged claims are unpatentable on the
following grounds (Pet. 6):

3 We list here Petitioner’s assertion as to the publication date of Nakamura.
We address below the disputed issue of whether Nakamura is a printed
publication. Patent Owner moved to exclude Nakamura as irrelevant. We,
for the reasons discussed below, deny Patent Owner’s motion.
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Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
2 103(a) Morikawa
2 103(a) Morikawa, Takahashi
1–3 103(a) Morikawa, Takahashi, Nakamura

II. ANALYSIS
A. Principles of Law
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).
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) any objective evidence of
non-obviousness.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).

4 The parties have not directed our attention to any objective evidence of
non-obviousness.
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B. The 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. 11 (citing Ex. 1002 ¶ 9).
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 ’680 patent as
well as “a large majority of active workers in the field at the time of the
invention.” Id. (citing Ex. 2002 ¶ 80). Rather, Patent Owner contends that
the person of ordinary skill in the art at the time of the invention would have
“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).
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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 ’680 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.
Nevertheless, 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
In an inter partes review requested in a petition filed on or after
November 13, 2018, we apply the same claim construction standard used in
district courts, namely that articulated in Phillips v. AWH Corp., 415 F.3d
1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2019). The
Petition in this case was filed November 14, 2018.
In applying that standard, claim terms generally are given their
ordinary and customary meaning as would have been understood by a person
of ordinary skill in the art at the time of the invention and in the context of
the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining
the meaning of the disputed claim limitation, we look principally to the
intrinsic evidence of record, examining the claim language itself, the written
description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
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v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
(citing Phillips, 415 F.3d at 1312–17).
1. “hollow column”
Petitioner initially proposed that “hollow column” be interpreted as a
“cylindrical structure surrounding a void or cavity,” and argued that the
proposed construction advocated by Patent Owner in the district court
litigation—“a columnar structure defining an unfilled or empty space”—
should not be adopted. See Pet. 13 (quoting Ex. 1019, 6 (Patent Owner’s
proposed construction in the District Court); citing, inter alia, Ex. 1002 ¶ 37
(Dr. Pokharna testifying that Patent Owner’s litigation construction is
“unhelpful” and “is vague and too broad, and goes beyond what has been
disclosed by the specification of the patents-in-suit.”)). However, Petitioner,
in applying its proposed combination of prior art to claim 2, seemingly
adopted Patent Owner’s construction. See id. at 79 (“Thus, similarly, the
upper plate in Nakamura can form ‘a columnar structure defining an unfilled
or empty space’ to meet the ‘hollow column’ limitation.” (citing Ex. 1002
¶ 99)). Petitioner, in its articulation of the ground, points to Figures 1 and 2
of the challenged patent in arguing that “the ’680 patent discloses the hollow
column as ‘columns 44’ in which ‘holes 12’ are located.” Id. at 77–79.
In the Institution Decision, we determined that the ’680 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. Dec. to Inst. 30–31.
We found that Petitioner had failed to “reconcile adequately its reliance on a
type of prior art depression-like spacer that the Specification [of the ’680
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patent] appears to distinguish from the recited hollow column.” Id. at 31–
32.
Patent Owner, in its Response, argues that the term “hollow column”
needs no construction because it “is not a technical term and is used in the
specification simply to refer to a column that is hollow.” PO Resp. 27
(citing Ex. 1001, 1:66–2:2, 2:16–18, 2:36–39, 2:43–46, 3:28–31, 4:26–30;
Ex. 2002 ¶ 119). Patent Owner further argues that Petitioner’s initial
construction (“cylindrical structure surrounding a void or cavity”) is
incorrect, and that “the specification [of the ’680 patent] differentiates
depressions and columns as separate types of spacers.” Id.
Petitioner, in its Petitioner Reply, argues that we should adopt Patent
Owner’s litigation position, because “Patentee’s litigation construction . . .
should be applied against the Patentee” and because the ’680 patent “does
not expressly define ‘hollow column.’” Pet. Reply 19. Petitioner also points
to depictions of solid columns 44 in Figure 2 of the ’680 patent as support
for this interpretation. Id. at 19‒20.
In its Sur-Reply, Patent Owner argues that its district court litigation
contentions are just that—contentions—and do not constitute a proper claim
construction analysis to satisfy Petitioner’s burden. PO Sur-Reply 8
(quoting St. Jude Med., LLC v. Snyders Heart Valve LLC, IPR2018-00106,
Paper 58 at 30 (PTAB May 2, 2019)). Patent Owner, “[f]or avoidance of
doubt, . . . expressly acquiesces to the Board’s distinction between
‘depressions’ and ‘hollow columns,’” and relies on its expert’s deposition
testimony as support for the proposition that columns and depressions are
completely different things. Id. (quoting Ex. 1033, 30:20–23, 41:6–14).
Patent Owner concludes by asserting that this distinction “is consistent with
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the Board’s interpretation in the institution decision, which [Patent Owner]
agrees stays true to the claim language and naturally aligns with the
specification.” Id. at 8–9.
We have reviewed the description provided in the ’680 patent,
including the portions cited by Patent Owner in support of its proposition
that the term “hollow column” “is used in the specification simply to refer to
a column that is hollow.” PO Resp. 27. For the reasons discussed below,
we are not persuaded that our understanding of “hollow column” in the
Institution Decision is incorrect or that we should adopt the broader
construction proffered by Petitioner.
The cited portions of the ’680 patent do not use the term “hollow
column.” In fact, the term is not used anywhere in the ’680 patent except for
the claims. The ’680 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, 2:18–20, 4:26–30.
Specifically, as discussed in our Institution Decision, the Specification
of the ’680 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,
2:12–46.
These spacers [between plates] can be solid columns, embossed
depressions formed in one of the plates, or a mixture of the
two.[5] . . .
The spacers also make it possible to provide holes into
and through the vapor chamber, an apparent inconsistency since

5 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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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 2:18–20, 2:36–46. Thus, the ’680 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 4:46–49, Fig. 2
(hole 50 in bottom of depression 26 that 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, 4:26–30, 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 ’680 patent also distinguish between
columns 44, which extend from contact plate 18 to the outer surface of cover
plate 20, and depressions 26, which extend from cover plate 20 to the inner
surface of contact plate 18. Ex. 1001, Figs. 1, 2. In other words, “the
bottom of depression 26 must be bonded to inner surface 28 of contact
plate 18.” Ex. 1001, 4:47–48.
The claim language of the ’680 patent matches this distinction made
in the written description. For instance, claim 2 recites a heat pipe
comprising “at least one hollow column” and claims 1 and 3 recite a heat
pipe comprising “a depression.” Ex. 1001, 5:39, 5:56, 6:6–7. Based on the
claim language and the description of spacers provided in the ’680 patent,
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we do not construe “hollow column” to encompass depressions that are
described in the ’680 patent as embossed in and extending from one plate to
the inner surface of the opposite plate.
2. Vapor Chamber
Petitioner proposes that a person of ordinary skill in the art would
have understood “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.” Pet. 13. 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.
In contrast to Petitioner’s proposed aspect of being “hermetically
sealed,” Patent Owner argues that “the term ‘vapor chamber’ refers to a
chamber that is vacuum sealed consistent with the term’s plain and ordinary
meaning, and this is confirmed by the context of the ’680 Patent.” PO
Resp. 17 (citing Ex. 2002 ¶¶ 33–36, 44, 90–93; Ex. 1001, 2:12–13, 2:20–46,
3:37–41, 4:46–49; Ex. 2005, 104:19–24). The parties do not identify a
distinction pertinent to any dispositive issue in this case. See Pet. Reply 6
(Petitioner asserting that the prior art discloses a vacuum sealed chamber
under Patent Owner’s construction). Accordingly, we need not reach the
disputed issue as to whether a “vapor chamber” is hermetically or vacuum
sealed.
Patent Owner notes that Petitioner’s proposed construction of “vapor
chamber” does not refer to capillary forces. PO Resp. 18. 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 ’680 patent as important to spreading heat. Id. (citing
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Ex. 1001, 1:66–2:2, 2:20–46, 3:54–4:8; Ex. 2002 ¶¶ 45, 96). 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 18–19 (citing Ex. 2005, 126:8–128:4) (alterations in
original).
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 ’680
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 ’680 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, 1:66–2:2. This description makes
no mention of capillary forces. Another cited portion of the ’680 patent
describes the function of the spacers as providing support for portions of a
capillary wick. Id. at 2:20–46. 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 ’680 patent cited by Patent Owner describes an
embodiment of the heat pipe that uses a capillary wick. Id. at 3:54–4:8.
The ’680 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
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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 3:56–64. Thus, these portions of the ’680 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, 5:50–53 (claim 1), 6:51 (claim 5: “a capillary wick provided
within said vapor chamber”).
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.” See 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.
at 16–17. Patent Owner argues that heat spreading refers to two- or three-
dimensional heat flow and is one of the key attributes of a vapor chamber
heat pipe that distinguishes it from conventional heat pipes, which,
according to Patent Owner, mainly transport heat in one dimension. Id.
at 16 (citing Ex. 2002 ¶ 88). Patent Owner argues that Petitioner’s
construction “disregards the significant difference between vapor chamber
heat pipes and conventional heat pipes that would have been understood by a
[person of ordinary skill in the art] at the time of the invention and does not
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account for the text of the specification that repeatedly refers to spreading
heat.” Id. at 16–17 (citing Ex. 2002 ¶ 89).
As reproduced above, the ’680 patent describes operation of the heat
pipe to “transport heat from the evaporator to the condenser.” Ex. 1001,
3:56–64. 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 ’680 patent. Accordingly, we adopt and employ this aspect of
Petitioner’s interpretation of “vapor chamber.”
D. The Alleged Obviousness of
Claim 2 Over Morikawa (Ground 1)
Petitioner, in the Petition, argued that independent claim 2 of the ’680
patent would have been obvious over Morikawa alone. Pet. 6, 21–45. In the
Decision instituting an inter partes review, we determined that Petitioner
had not demonstrated a likelihood of prevailing on this challenge. Dec. to
Inst. 13–14. Specifically, we determined that Petitioner had not made an
adequate threshold showing with regard to the limitation reciting edge lips
being bonded together. Id. After institution, Patent Owner opposed
Petitioner’s challenge. See, e.g., PO Resp. 46–49 (addressing the “edge lips”
limitation). In its Reply Brief, under the heading “GROUND 1 –
RETRACTED,” Petitioner states: “While Petitioner maintains that both
Morikawa and Nakamura disclose the claimed ‘lips,’ Petitioner no longer
relies on Ground 1 for this IPR.” Pet. Reply 22 (bolding omitted).
Petitioner does not explain what it means by the term “retracted,” and we
have not been presented with, for example, a motion for partial adverse
judgment or a joint motion to withdraw Ground 1 from this proceeding or
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otherwise limit the Petition. We proceed to reanalyze Ground 1 on the full
record developed during trial.
1. Overview of Morikawa (Ex. 1003)
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
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.

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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
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.
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2. Analysis of the Alleged Obviousness of Claim 2 over Morikawa
The dispositive issue with regard to this ground, as it was at the
institution stage, pertains to the structural configuration where the bonding
occurs. Claim 2 recites:
a first plate having a circumferential edge lip bounding an 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 . . . , said edge lips of said first
and second plates being bonded together so as to define a vapor
chamber.
Ex. 1001, 5:55–64. Thus, the claim requires each of the two plates to have a
circumferential edge lip bounding an inner surface, and for those two edge
lips to be bonded together so as to define a vapor chamber.
For the recited circumferential edge lips of the first plate and of the
second plate, Petitioner uses annotated versions of Morikawa’s Figure 2A,
shown below, to depict its contentions:

Each of the above versions of Morikawa’s Figure 2A is a partially cut-out
explanatory perspective view of a heat pipe with Petitioner’s annotations in
the form of a labeled arrow pointing, in the left figure, to the feature
identified as the claimed circumferential edge lip of the first plate and, in the
right figure, to the feature identified as the claimed circumferential edge lip
of the second plate. Ex. 1003, 4:50–52; Pet. 24, 35. We understand
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Petitioner to identify, as a circumferential edge lip, that which appears to be
a vertical surface (shown in purple) spanning the distance between
Morikawa’s upper and lower surfaces of the panel. Thus, we understand
Petitioner to identify only one circumferential edge lip. Petitioner has not
explained adequately how Morikawa either discloses two edge lips bonded
together so as to define a vapor chamber or renders obvious subject matter
having that structure and configuration. See PO Resp. 47–49.
Petitioner has not demonstrated by a preponderance of the evidence
that claim 2 would have been obvious over Morikawa alone.
E. The Alleged Obviousness of Claim 2 over Morikawa and Takahashi
(Ground 2)
Petitioner alleges that claim 2 of the ’680 patent would have been
obvious over the combination of Morikawa and Takahashi. See Pet. 21–45.
Patent Owner argues that Petitioner has failed to show that Morikawa
discloses the recited hollow column that is integral with a plate. See PO
Resp. 49–50, 55; PO Sur-Reply 21–22. Specifically, Patent Owners argues
that Petitioner has applied an interpretation of “integral” that is not
supported by the Specification or prosecution history of the ’680 patent. PO
Sur-Reply 22 (citing Ex. 1001, 2:39–46). For the reasons given below, we
determine that Petitioner has not demonstrated that the challenged claim
would have been obvious over Morikawa and Takahashi.
Claim 2 calls for a particular relationship between the plates and
hollow columns. Specifically, claim 2 recites, in pertinent part:
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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
a hollow column bonded at one end to said second plate
so as to coaxially align said hollow column with one of said at
least one openings in said second plate.
Ex. 1001, 5:55–67. Thus, claim 2 calls for a first plate having an integral
hollow column and a second plate having a hollow column bonded to the
second plate.
For the integral aspect, Petitioner argues:
Morikawa teaches that its “metal pipe” is integral with the
upper plate like the “hollow column that is integral with said
first plate” in the ’680 patent. This is because Morikawa
teaches “welding and fixing the metal pipe to the panel
surfaces,” thus integrating the metal pipe with the upper plate.
Pet. 31–32 (quoting Ex. 1003 (Morikawa), 4:26–27)). For the bonded end of
the hollow column, Petitioner argues:
Morikawa also teaches that its “metal pipe” is bonded at one
end to its lower plate like the “hollow column bonded at one
end to said second plate” in the ’680 patent. This is because
Morikawa teaches “welding and fixing the metal pipe to the
panel surfaces,” thus bonding the metal pipe with the lower
plate.
Id. at 41 (quoting Ex. 1003 (Morikawa), 4:26–27).
Petitioner, thus, contends that a welded pipe is both an integral hollow
column and a bonded hollow column.
The dispositive issue 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 ’680 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
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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 sets out a genus-species argument in its Reply Brief,
asserting that welding is both a type of bonding and a type of integrating,
reasoning that “this is like a human can be both a mammal and a vertebrate,
but it does not mean mammals and vertebrates are the same (e.g., a bird is a
vertebrate but not a mammal).” Pet. Reply 28–30. Be that as it may,
Petitioner’s argument does not assist us in ascertaining the meaning of
“integral” to the person of ordinary skill in the art.
Petitioner argues that “Morikawa’s hollow columns ‘fix[ed]’ and
‘weld[ed]’ to the plates can be viewed as being ‘integral’ to the plates, as the
Federal Circuit held in a similar case.” Pet. Reply 29 (citing In re Hotte, 475
F.2d 644, 647 (CCPA 1973)). Petitioner’s reliance on In re Hotte is
misplaced. Hotte did not, as Petitioner implies, hold as a matter of law that
the claim term “integral” must be construed to encompass a welded joint in
every patent and in every field of art. Rather, Hotte stands for the
proposition that any claim term must be analyzed in light of the particular
facts of the case. See Hotte, 475 F.2d at 647 (“Appellant’s specification
does not expressly restrict the meaning of ‘integral’ to ‘one piece’ and such a
meaning is wholly irreconcilable with the recitation in claim 1 of ‘a vitreous
case surrounding and integrally united with the capacitor unit so formed.’”).
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We also note that Hotte, unlike the case here, would have involved the use
of the broadest reasonable interpretation standard in construing claims in a
pending application. See Henderson v. Grable, 339 F.2d 465, 470 (CCPA
1964) (cited approvingly in Hotte; stating, in an interference, that “the
circumstances here require that the unambiguous term ‘integral’ be given the
broadest construction the language will reasonably bear without resort to the
specification from which it originated,” and determining the Board erred by
not “examining [the term] to see whether a reasonable interpretation, but one
not so broad as to do violence to the language or the concept of the
invention, would include the Henderson structure.”).
Petitioner mentions, in the Reply Brief, the person of ordinary skill in
the art (“POSITA”) in arguing that:
A POSITA would understand that welding, unlike lower
temperature techniques such as soldering or brazing, requires
extreme high heat to melt the two base metals to fuse and
integrate them together to form a homogeneous continuum. If
done right, the welded portion would be as strong as the
surrounding base metals.
Pet. Reply 29 (citing Ex. 1032 ¶ 76). We acknowledge that the act of
welding, as a conceptual matter, may result in a very strong bond and may
fuse two base metals together. However, Petitioner’s contention is directed
to the ordinary artisan’s understanding of the prior art reference’s “welding,”
rather than a claim term. This contention omits an analysis as to how a
person of ordinary skill in this particular art would have understood the
claim terms “integral” and “bonded,” which is necessary before we apply
those terms to the reference’s welding.
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
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’680 patent.” Pet. 31–32 (citing Ex. 1002 ¶ 61). 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 the assertion that a welded component is like the
integral hollow column of the ’680 patent. See id. at 30–32. 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 flawed
repetition of Petitioner’s argument. Compare Pet. 31–32 (Petitioner’s
argument having an annotated figure interposed between “As shown below”
and “As also shown above”), with Ex. 1002 ¶ 61 (Dr. Pokharna’s testimony
repeating Petitioner’s argument but lacking any figure between “As shown
below” and “As also shown above”). Dr. Pokharna, like Petitioner, fails to
explain adequately why a welded component is like the integral column of
the ’680 patent. See Ex. 1002 ¶ 61 (making the statement without citing
support).
The specification of the ’680 patent distinguishes between a
component bonded to a plate and something “embossed in one plate,” i.e.
integral with the plate. See Ex. 1001, 2:39–43. A portion of Figure 2 of
the ’680 patent is shown below.
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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., 4:42–43. The
depiction shows the material of the bottom plate bent upward and with
“columns 44 . . . bonded to cover plate 20 at locations 46.” Id., 4:26–30.
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
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 3, Petitioner argues that Nakamura provides reason to replace
Morikawa’s welded pipes with concavities/depressions formed from one of
the plates. See Pet. 58–63 (citing, inter alia, Ex. 1002 ¶¶ 85–86). 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 60 (quoting Ex. 1004, 3). 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 58–63. These
arguments and evidence are consistent with the conclusion that the recited
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“hollow column that is integral with said first plate” does not encompass a
pipe welded to a plate.
Petitioner has not demonstrated by a preponderance of the evidence
that claim 2 would have been obvious over Morikawa and Takahashi.
F. The Alleged Obviousness of Claims 1–3 over Morikawa,
Takahashi, and Nakamura (Ground 3)
Petitioner alleges that claims 1–3 of the ’680 patent would have been
obvious over Morikawa, Takahashi, and Nakamura. See Pet. 45–98; Pet.
Reply 30–35. Patent Owner offers several arguments in response to
Petitioner’s challenge. See PO Resp. 55–64; PO Sur-Reply 22–25. For the
reasons given below, we determine that Petitioner has demonstrated that
claim 3 would have been obvious over Morikawa, Takahashi, and Nakamura
but has not demonstrated that claims 1 and 2 would have been obvious over
that same combination.
1. Status of Nakamura as Prior Art
Petitioner contends that Nakamura is prior art under 35 U.S.C.
§ 102(b), asserting that “Nakamura is a ‘Japanese Unexamined Utility
Model Application Publication in the Year 1975’ that was filed on
September 18, 1973 and published in 1975.” Pet. 46; see also id. at vii
(Exhibit list stating “Year of Publication: 1975”).
Patent Owner, in the Preliminary Response, argued that Petitioner had
failed to establish that Nakamura qualifies as prior art because Petitioner’s
English translation of Nakamura adds a parenthetical “(1975)” after the
number “S50-55262” where no such parenthetical is included in the original
document. Paper 6 (Prelim. Resp.), 13. Patent Owner also argued that
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Nakamura did not contain indicia, such as INID6 codes, that often qualify a
foreign patent application as a “printed publication” and 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. at 6, 10‒11. Patent Owner further argued
that “Nakamura includes no indication that it was indexed in a meaningful
way” and “does not identify any date prior to May 12, 1999 on which
Nakamura was available to and locatable by the public.” Id. at 11, 14.
In the Institution Decision, the Board determined that Petitioner
provided enough evidence, including at least the translated version of
Nakamura, to make the requisite threshold showing of a reasonable
likelihood of prevailing on the issue of whether Nakamura is a printed
publication. Dec. to Inst. 19–20. 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 17–18 (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 19. The Board also encouraged the
parties to meet and confer regarding Japan Patent Office practice in the

6 “‘INID’ is an acronym for ‘Internationally agreed Numbers for the
Identification of (bibliographic) Data.’” Ex. 2001, 1.
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1970s as applied to unexamined utility model applications to try to resolve
this issue. Id. at 20.
After institution, Patent Owner filed objections to evidence that
included various objections to Nakamura. Paper 14, 1‒2 (objecting to
Exhibit 1004 under Federal Rule of Evidence (FRE) 104, FRE 401,
FRE 901, and FRE 1002). Petitioner responded by serving Patent Owner
with supplemental evidence, including the Chen Declaration.7 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. 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, and an English language translation thereof. Ex. 2011, 14‒20
(Ex. B). Thus, Patent Owner received a copy of the condensed version of
Nakamura prior to filing its Patent Owner Response.

7 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
’680 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. 29. 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 32.
Patent Owner asserts that Nakamura does not have an abstract and nothing
in the record suggests that Nakamura was classified before May 12, 1999.
Id. Patent Owner further asserts that Nakamura does not include INID
codes. Id. at 33. 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. See 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).8 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 9‒11.
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

8 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. The decision further describes
that a petitioner may move to submit new evidence as supplemental
information if the patent owner does not challenge the reference’s status as a
printed publication. Id.
In this case, the evidence submitted with the Petition includes
Nakamura itself in the original Japanese language 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).
As discussed above, Patent Owner presented arguments challenging
the dissemination and public accessibility of Nakamura in its Patent Owner
Response. See, e.g., PO Resp. 32 (“Petitioner has failed to file any evidence
that Nakamura was actually disseminated or publicly accessible or findable
before the May 12, 1999 priority date.”). 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
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Patent Owner that Petitioner’s new evidence, submitted in the Reply, was
improper as untimely.
Patent Owner also argues that Petitioner’s Reply “includes scant
argument or explanation as to why it believes Nakamura is a printed
publication” and instead improperly incorporates by reference the arguments
and explanations from the Miyano Declaration. PO Sur-Reply 11 (citing
Ex. 1044). We disagree with Patent Owner that the arguments presented in
Petitioner’s Reply are inadequate. The Reply explains how the Japan Patent
Office provided public access to utility model applications at the time of
Nakamura, including by publication of a condensed version of the
application in the Japanese Utility Model Gazette and by allowing public
inspection of the full application at the Japan Patent Office upon request.
Pet. Reply 21. Petitioner properly refers in its Reply to the Miyano
Declaration as support for these assertions. The Reply also explains how an
interested member of the public would obtain access to the full version of
the publication. Again, Petitioner properly refers in its Reply to the Miyano
Declaration for support. Thus, we consider the arguments raised in
Petitioner’s Reply, along with the supporting evidence cited in the Reply, to
ascertain whether Nakamura qualifies as prior art.
Now that we have 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) (2018). In
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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. 46; Pet. Reply 21.
We look to the underlying facts to make a legal determination as to
whether a reference is a printed publication. Suffolk Techs., LLC v. AOL
Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a
given reference qualifies as a prior art “printed publication” involves a case-
by-case inquiry into the facts and circumstances surrounding its disclosure to
members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed.
Cir. 2004). The key inquiry is whether the reference was made “sufficiently
accessible to the public interested in the art” before the critical date. In re
Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); see In re Wyer, 655
F.2d 221, 226 (CCPA 1981). “A given reference is ‘publicly accessible’
upon a satisfactory showing that such document has been disseminated or
otherwise made available to the extent that persons interested and ordinarily
skilled in the subject matter or art exercising reasonable diligence, can locate
it.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
Cir. 2006) (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
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evidence indicating that the contents of the file wrapper were disseminated
or copied. Id. at 1377‒78.
The court disagreed explaining:
[t]he “printed publication” provision of § 102(b) “was designed
to prevent withdrawal by an inventor . . . of that which was
already in the possession of the public.” . . . Whether a given
reference is a “printed publication” depends on whether it was
“publicly accessible” during the prior period. A given reference
is “publicly accessible” upon a satisfactory showing that such
document has been disseminated or otherwise made available to
the extent that persons interested and ordinarily skilled in the
subject matter or art exercising reasonable diligence, can locate
it and recognize and comprehend therefrom the essentials of the
claimed invention without need of further research or
experimentation.
Id. at 1378 (internal citations omitted); see also Wyer, 655 F.2d at 226.
With respect to Wyer, the issue was whether an Australian patent
application laid open for public inspection was a printed publication if only
an abstract of the application was published by the Australian Patent Office.
Wyer, 655 F.2d at 223, 226. The court found that, although there is no
evidence of actual viewing or dissemination of any copy of the application,
there is no dispute that the records were maintained for this
purpose. Given that there is also no genuine issue as to whether
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
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the Wyer court’s conclusion that the application was “publicly
accessible.”
Bruckelmyer, 445 F.3d 1379.
In this case, Petitioner provides a certified translation of Nakamura.
See Ex. 1004, 12.9 The top of the first page is translated as “Japanese
Unexamined Utility Model Application Publication S50–55262 (1975).” Id.
at 1. The as-translated first page contains a seal of the Japan Patent Office
(bottom right) and certain numbered items, including “1 Title of the
Invention” and “2 Inventor.” Id. The first page also twice recites the date of
September 18, 1973 (near the top and in the seal of the Japan Patent Office).
Id. This 1973 date coincides with that which Petitioner contends is the
application filing date. Pet. 46.
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 ’680 patent, i.e., May 12, 1999. PO Resp. 30; id. at 33 (“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. 1003) and notes that, unlike these published
Japanese applications, Nakamura does not include INID codes. Id. at 32–33.
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. at 33.

9 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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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.
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. Ex. 1044 ¶¶ 13‒15
(explaining that the public would gain access to the full version by
presenting identifying information such as the publication number).
Petitioner provides a copy of the condensed version of Nakamura
published in the Japanese Utility Model Gazette in 1975. Ex. 1044
(Attachment C); Ex. 1047. According to Petitioner’s declarant, this
condensed version of Nakamura was published on May 26, 1975. Ex. 1044
¶¶ 11‒13. We also observe that this condensed version of Nakamura
includes INID codes similar to those that appear on the faces of Morikawa
and Takahashi. Ex. 1047, 1 (showing circled numbers on the face of the
publication that correspond to INID codes on the faces of Morikawa
(Ex. 1003) 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
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sufficient detail of the contents of the application were provided such one
skilled in the art exercising reasonable diligence would have been able to
locate Nakamura.
According to Petitioner’s declarant, under Japanese law in effect
in 1973‒1975, the complete version of Nakamura (Ex. 1004) was “made
available to the public on May 26, 1975, i.e., the same day [the condensed
version of Nakamura] published.” Ex. 1044 ¶ 14. Thus, according to
Petitioner’s declarant, to gain access to the full version of Nakamura, a
member of the public need only present identifying details of the
application, available from the published condensed version, to be given
access to the full version. Pet. Reply 21; Ex. 1044 ¶¶ 15‒17. Based on this
evidence, we find that the condensed version of Nakamura, as published in
the Japanese Utility Model Gazette, would have been a roadmap to the full
version of the Nakamura application, so that the contents of the full
Nakamura application were sufficiently accessible to the public and to
persons skilled in the pertinent art to qualify as a “printed publication.” This
is sufficient to make Nakamura (Ex. 1004) publicly accessible as of May 26,
1975.
We determine that Petitioner has provided enough evidence to show
that Nakamura qualified as a printed publication more than a year before
May 12, 1999, the earliest possible effective filing date of the challenged
claims of the ’680 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
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Japan Patent Office practice at the time of Nakamura’s publication, to show
that Nakamura qualifies as a printed publication at the time of the invention.
Accordingly, Petitioner has established that Nakamura qualifies as prior art
under § 102(b).
2. Overview of Takahashi (Ex. 1005)
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.
[T]he container (2) is provided with a first plate member (11)
that has a concave part for hydraulic fluid passage (13) over
almost the total length on one side, a peripheral wall (4)
surrounding it, and an intermediate partition wall (3); and a
second plate member (12) in a strip shape for covering the
opening of the concave part for hydraulic fluid passage (13).
Id. at 4:65–5:4.
The container (2) is formed by mutually superimposing
the first and second plate members (11) and (12) that constitute
a container (2) and bonding by a vacuum brazing method the tip
of the peripheral wall (4) of the first plate member (11), the
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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 5:28–38.
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
aluminum plates.” Id. at 6:4–9, see id. at 8:12–16.
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
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inwards, for example, the flanges (17) and (17) at the tips of the
peripheral walls (4) and (4) of both plate members (11) and
(12), and the tips of intermediate partition walls (3) and (3) are
joined to each other by a vacuum brazing method to form a
container (2).
Id. at 6:14–22.
3. Overview of Nakamura (Ex. 1004)
According to Petitioner’s translation, Nakamura discloses
a heat pipe that transfers heat by a sealed container made of
thermally conductive metal plates and a refrigerant enclosed in
the sealed container, wherein a portion of one or both of
opposing upper and lower surfaces of the sealed container has a
molded concavity and a hole for component installation is
provided in a concavity joining surface where the concavity and
a flat surface opposing the concavity or an opposing concavity
are joined together.
Ex. 1004, 4.10 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:

10 In citing to Nakamura in this and following sections, we follow
Petitioner’s convention of citing to the numbers in parentheses at the bottom
center of the translation rather than those used in numbering the pages of the
exhibit overall. We also omit the translator’s marginalia, parentheticals, and
italics.
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Figures 3 and 4 illustrate examples of a heat pipe of Nakamura’s invention,
with Figure 3 being a perspective view and Figure 4 being a partial
cross-sectional view of Figure 3 at cutting plane line IV–IV. Ex. 1004, 4, 7;
Ex. 2012, 5‒6, 8. “In Figures 3 and 4, 7 is a sealed container where thin
plates of a material with favorable thermal conductivity such as copper or
aluminum are formed into a sealed configuration by soldering, brazing, or
the like and 8 is a wick that . . . is affixed to an inner-wall surface of the
sealed container 7.” Id. at 5. See also Ex. 2012, 6 (describing that reference
numeral 7 denotes a sealed container “made of a thin sheet of a high thermal
conductivity material” that is formed to be “airtight by soldering, brazing or
the like” and has wick 8 attached to the interior wall surfaces of sealed
container 7).
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
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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, 6; 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, 6–7; 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, 7; see also Ex. 2012, 7 (similar translation).
4. The Alleged Obviousness of Claim 1 over Morikawa,
Takahashi, and Nakamura
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 1 unpatentable under 35 U.S.C.
§ 103(a). Claim 1 recites both “a depression formed in said first plate” and
“at least one spacer extending between and contacting said first and second
plates.” Ex. 1001, 5:39, 5:48–49.
Petitioner asserts that Nakamura’s concavities 9 correspond to the
claimed “depression” and that a person having ordinary skill in the art would
have been led to replace Morikawa’s metal pipes with 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. 55–63. 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,
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“when combined with Nakamura, Morikawa no longer needs to create the
‘through path’ inside such ‘metal column.’” Pet. 71 (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 72. Thus,
Petitioner proposes to modify Morikawa to replace metal pipes with
concavities and to replace metal pipes with conventional spacers that are not,
as Morikawa teaches, drilled to form metal pipes. See Ex. 1003, 4:25–41.
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 or columns with
Nakamura’s concavities. PO Resp. 57. Patent Owner argues that Petitioner
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 or columns. Id.
at 57–58. 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 or columns with Nakamura’s concavities. See
id. at 58.
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 31 (citing Pet. 71–73).
We agree with Patent Owner that Petitioner has not explained
adequately and persuasively what would have led one having ordinary skill
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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).
5. The Alleged Obviousness of Claim 2 over Morikawa,
Takahashi, and Nakamura
Independent claim 2 recites a hollow column to form a mounting hole
rather than, as in independent claim 1, a depression in a first plate bonded to
the second plate and having an opening through a bonded annular surface.
For independent claim 2, Petitioner’s proposed combination
substitutes Nakamura’s concavities for the metal pipes in Morikawa. See
Pet. 76–81, 83–87. In its Reply, Petitioner confirms its articulation of
Ground 3, maintaining 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 31. However, Petitioner, for claim 2, relies on what it calls the
“concavities/depression,” rather than Morikawa’s drilled columns (pipes),
for the recited “hollow column” of claim 2. Petitioner argues
Nakamura’s “concavities” formed in the plates can meet the
’680 patent’s “hollow column” related limitations . . . . The
reason is the ’680 patent discloses that the “hollow column” can
be formed as part of a plate enclosing the “vapor chamber.”
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That is, the “hollow column” limitation can be met by a
structure formed by one or both of the heat pipe’s plates.
Pet. 76–77.
Patent Owner argues that Nakamura’s Figures 3 and 4 show
concavities but “do[] not disclose a ‘hollow column’ as claimed.” PO
Resp. 60–61 (citing Ex. 2002 ¶¶ 147, 149–152).
Petitioner’s articulated ground is premised on its assertion that the
term “hollow column” means “a columnar structure defining an unfilled or
empty space.” Pet. 79 (citing Ex. 1002 ¶ 99). Petitioner contends that
concavity 9 in Nakamura’s top plate constitutes the hollow column. See,
e.g., id. at 80. Some of Petitioner’s contentions are explained via the
annotated figures reproduced below.

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Pet. 80. The figures above are an enlarged and annotated portion of
Nakamura’s Figures 3 and 4, 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 surfaces 9a are sealed
together by soldering or the like, and bolt hole 11 is drilled through the
concavity joining surfaces. Ex. 1004, 5‒6; Ex. 20212, 6‒7. Petitioner
contends, as indicated in the annotated figure, that the concavity labeled as 9
and indicated by Petitioner in red is the recited “at least one hollow column
that is integral with said first plate.” Pet. 79–81.
As discussed above in our claim interpretation analysis, the
Specification of the ’680 patent distinguishes between spacers formed by
“depressions” and spacers formed by “hollow columns.” See Ex. 1001,
2:12–46. Specifically, we do not construe “hollow column” to encompass
depressions, described in the ’680 patent as embossed in and extending 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 ’680 patent, that of a
column with a through hole, is the Specification’s disclosure of the recited
“hollow column.” Pet. 77 (quoting Ex. 1001, 4:25–30). 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 ’680 patent’s first spacer embodiment. See id. at 80
(annotated Figure 4 of Nakamura). Accordingly, Petitioner has not
demonstrated a likelihood of prevailing in this challenge to claim 2.
Specifically, as shown in Figure 4 relied on by Petitioner, Nakamura’s
concavity 9 is embossed in and extends from one plate to the inner surface
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of the opposite concavity 9 formed in the opposite plate. Ex. 1004, Fig. 4;
Ex. 2012, Fig. 4. As noted above, this depression-like spacer is not a
disclosure of a “hollow column” as claimed.
For these reasons, Petitioner has failed to show by a preponderance of
the evidence that the combination of Morikawa, Takahashi, and Nakamura
renders claim 2 unpatentable under 35 U.S.C. § 103(a).
6. The Alleged Obviousness of Claim 3 over Morikawa,
Takahashi, and Nakamura
Independent claim 3 recites a heat pipe comprising two plates each
having a circumferential edge lip with the edge lips bonded together to
define a vapor chamber, the first plate having a depression bonded to the
second plate, and an opening in the second plate aligning with the open end
of the depression so as to form a mounting hole through the two plates and
that is isolated from the vapor chamber. Ex. 1001, 6:4–21.
a. “A heat pipe for spreading heat”
The preamble of independent claim 3 recites “[a] heat pipe for
spreading heat comprising . . . .” Ex. 1001, 6:4. Petitioner, relying on the
testimony of Dr. Pokharna, contends that, “[t]o the extent that the preamble
is limiting,” Morikawa discloses a heat pipe for spreading heat. Pet. 21–22,
87 (incorporating the analysis in Section IX.B.1 on Pet. 21–22; collectively
citing Ex. 1002 ¶¶ 55, 109).
Morikawa explicitly discloses a “heat pipe” and, as Petitioner notes
(id. at 21), explains that “[a] heat pipe is widely used as a means of releasing
heat from an internal component of a computer, as a heat-control means of a
nuclear reactor, as a heat-control means of an artificial satellite, and in other
uses as an effective means of efficient heat transfer.” Ex. 1003, 1:28–36.
Dr. Pokharna testifies that, “[b]y disclosing a ‘heat pipe’ that transfers and
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releases heat, Morikawa discloses ‘[a] heat pipe for spreading heat
comprising.’” Ex. 1002 ¶ 55.
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. 44 (citing Ex. 2002 ¶¶ 67, 126–127). Patent Owner raises this
argument in the context of arguing that Morikawa does not disclose a “vapor
chamber” as recited in the body of the claim. Id. at 43–44. Patent Owner
does not assert in its Response11 that the language “for spreading heat” in the
preamble of claim 3 is itself limiting, and instead seeks to insert the
requirement of spreading heat into the construction of “vapor chamber.”
As discussed above, both parties proposed a construction of “vapor
chamber” that includes an aspect of heat transfer. We adopted the aspect of
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 3 is limiting, to
the extent Patent Owner’s argument that Morikawa does not disclose heat

11 In its Reply, Petitioner argues that the preamble of claim 3 is not limiting.
Pet. Reply 3‒4. In response to this argument, Patent Owner argues, for the
first time in the Sur-Reply, that because the patent title refers to heat
spreading and the patent repeatedly refers to the invention as a “heat pipe
heat spreader” or “heat spreader,” the preamble should be limiting. PO
Sur-Reply 2–3 (citing Poly-America LP v. GSE Lining Tech. Inc., 383 F.3d
1303 (Fed. Cir. 2004)).
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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,
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 3 recites a complete structure including a first
plate and a second plate arranged in spaced apart relation, with each plate
including a circumferential edge lip and with those lips bonded together so
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as to define a vapor chamber, a depression that is formed in the first plate
and bonded to the second plate, the first plate depression having an open
ended cross-section and an outer surface bonded to the second plate so as to
align the depression with an opening in the second plate such that the
mounting hole formed thereby is isolated from the vapor chamber. The
body of this claim does not recite a “heat pipe for spreading heat.” The
preamble’s reference to “for spreading heat” merely identifies an intended
use for the claimed structure. Patent Owner has not demonstrated that this
use itself imposes any structural requirement on the claimed structure
beyond what is required by the body of the claim. Nor has it shown any
“reliance on the preamble during prosecution to distinguish the claimed
invention from the prior art.” Catalina, 289 F.3d at 808. As in Catalina,
“deletion of the disputed phrase from the preamble. . . [would] not affect the
structural definition or operation of the [invention] itself.” Id. at 810.
To the extent the claim term “vapor chamber” includes, among other
things, the function of spreading heat, we address Patent Owner’s arguments
below. For the reasons discussed below, even were the preamble treated as
limiting, we find that Morikawa’s device meets this limitation.
b. “a first plate having a circumferential edge lip
bounding an inner surface . . . [and] a second plate
arranged in spaced apart confronting relation to said
first plate and including a circumferential edge lip
bounding an inner surface . . ., said edge lips of said
first and second plates being bonded together so as to
define a vapor chamber”
For these limitations, Petitioner’s proposed combination is
Morikawa’s heat pipe modified to have the flanges of Takahashi. Pet. 88–90
(incorporating the analysis in Section IX.B.2 on Pet. 22–30, in Section
IX.B.4 on Pet. 32–36, and in Section IX.B.7 on Pet. 38–41; collectively
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citing Ex. 1002 ¶¶ 56–60, 109, 111, 114). Petitioner contends that the
proposed combination yields a structure formed from two plates with
circumferential edge lips bonded together so as to define a vapor chamber.
Id. Patent Owner argues that Petitioner has failed to show that a person of
ordinary skill in the art would have had a reason to make the proposed
combination and that the combination lacks the recited first and second
plates, circumferential edge lips, and a vapor chamber. PO Resp. 55–64.
1. Two Plates with Circumferential Edge Lips Bonded
Together
Petitioner contends that Morikawa discloses a structure including a
first plate and a second plate arranged in spaced apart relation and with each
plate having inner surfaces. Pet. 22, 32–33. Petitioner provides the
following annotated version of Morikawa’s Figure 3.

Id. at 33. Above is Petitioner’s annotated version of an explanatory cross-
sectional view illustrating the structure of Morikawa’s heat pipe. Id.;
Ex. 1003, 4:54–55. Petitioner shows, in other annotated versions of Figure 3
of Morikawa, how these plates each have an inner surface. Pet. 22, 34.
Petitioner contends that it would have been obvious to combine
Takahashi’s flanges with Morikawa’s heat pipe in a manner resulting in each
plate having a circumferential edge lip bounding an inner surface and which
are bonded together. Id. at 25–26, 35–36.
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For the aspect of circumferential edge lips bounding an inner surface
and bonded together, Petitioner refers to its arguments made in the context
of the first and second grounds. Id. at 88, 90 (referring to Sections IX.B.2,
IX.B.5, and IX.B.7 (id. at 22–30, 33–36, 38–41). Petitioner utilizes an
annotated version of Takahashi’s Figures 5 and 6, shown below, in
explaining its contentions.

The above figures depict cross sectional views of a heat pipe of Takahashi
with Petitioner’s annotations identifying “circumferential edge lip[s].”
Pet. 25; Ex. 1005, 8:12–15.
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. 26. 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 ¶ 59).
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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. 26–28 (citing Ex. 1002 ¶ 60). 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 28 (citing Ex. 1002 ¶ 60).
Specifically, Petitioner argues:
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. (Pokharna, ¶60.) This is
because these “flanges (17) and (17)” are protruding and
exposed outwardly, and thus are easier to be pressed and
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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 ’680 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 29 (citing Ex. 1002 ¶ 60).
Patent Owner argues that “Morikawa . . . does not teach (or even
contemplate) the concept of constructing a heat pipe using two ‘plates.’” PO
Resp. 45 (citing Ex. 2002 ¶ 132); see also id. at 56 (“Petitioner fails to
identify any rationale or motivation to modify Morikawa or combine it with
Takahashi or Nakamura to provide a ‘first plate’ and ‘second plate.’”).
Patent Owner argues, with reference to Dr. Faghri’s testimony, that a person
of ordinary skill in the art would have understood Morikawa’s heat pipe
container to be made from a single plate. Id. at 45 (citing Ex. 2002 ¶¶ 133).
Patent Owner argues that a person of ordinary skill in the art would have
understood that Nakamura’s heat pipe would be constructed from either a
unitary tube member formed with a generally rectangular profile or a single
sheet of metal bent and sealed along one seat and then fitted with end caps.
Id. (citing Ex. 2002 ¶ 133).
Petitioner argues that Morikawa’s Figures 2B and 3 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 this Figure, which Dr. Pokharna
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pointed to in his original Declaration as support for first and second plates.
Id.; see Ex. 1002 ¶ 78.
Patent Owner responds that Petitioner’s reliance on Figures 2B and 3
“is misguided, as the Figures only show a partial cross-section without
illustrating the sides of the upper and lower portions.” PO Sur-Reply 15.
Patent Owner further argues that Petitioner’s discussion of “different
cross-hatching” improperly raises a new theory because it was raised for the
first time in Petitioner’s Reply. Id. Patent Owner also argues that to the
extent the cross-hatching in Morikawa is discernible, there appears to be no
difference between them, with similar cross-hatch lines extending at the
same angle in both portions. Id. (citing Ex. 2002 ¶¶ 65, 66, 133–134).
First, we disagree with Patent Owner’s characterization of Petitioner’s
Reply arguments regarding cross-hatching to improperly raise a new theory.
Petitioner and Dr. Pokharna pointed to Figure 3 of Morikawa as support for
the assertion that Morikawa discloses two plates. See, e.g., Pet. 22, 33–34,
50; Ex. 1002 ¶¶ 62, 63, 78. Petitioner’s further arguments about what is
shown in this Figure were properly raised in response to Patent Owner’s
arguments contesting Petitioner’s reading of Morikawa’s disclosure.
Further, we do not credit Dr. Faghri’s testimony regarding how a
person of ordinary skill would have understood Morikawa to be constructed
because it 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
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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.
Patent Owner argues that the assembly process of Morikawa’s heat
pipe is consistent with it being formed of only a single plate. PO Resp. 46.
Patent Owner contends that “Morikawa describes providing holes in the
‘upper and lower surfaces of the panel’ and then inserting metal pipes 11a
into the holes and welding and fixing the pipes in place.” Id. (citing
Ex. 2002 ¶ 133; Ex. 1003, 4:25–29). We fail to see how the cited portion of
Morikawa supports Patent Owner’s proposition. The cited portion does not
indicate that the hole is large enough for the pipe to pass through, as Patent
Owner urges, but merely states that the pipe is welded to the panel such that
“the metal pipe is communicated to holes provided in advance in upper and
lower surfaces of the panel.” Ex. 1003, 4:25–29. That is consistent with an
assembly where the inside diameter of the pipe is the same as the pre-drilled
hole and with the pipe’s inside diameter and the hole being aligned during
welding. Patent Owner also contends that Morikawa “describes inserting a
metal column into the hollow region of the heat pipe to block the holes,
where the columns are then welded, fixed in place, and drilled through to
form the through path.” PO Resp. 46 (citing Ex. 2002 ¶ 134; Ex. 1003,
4:29–41). According to Patent Owner, “[t]his approach . . . would not be
necessary in a two-plate construction since [the pipes] could be inserted or
fixed in the structure of the container before it is fully assembled.” Id.
(citing Ex. 2002 ¶ 134). Neither Patent Owner nor Dr. Faghri explain
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adequately why, even assuming that the approach would “not be necessary”
in a two-plate assembly, the approach is exclusively limited to single-plate
assemblies and could not also be utilized with two-plates.
Patent Owner asserts that, “according to Petitioner’s translation,
Morikawa repeatedly refers to ‘upper and lower surfaces of the panel,’
(Ex. 1003 at 4:28–29, 4:36–37) and ‘upper and lower inner surfaces of the
panel’ (Ex. 1003 at 4:32–33),” and argues that “[t]he references to plural
‘surfaces’ of a single ‘panel’ undermines Petitioner’s argument that
Morikawa discloses two plates.” PO Sur-Reply 15–16. However,
Morikawa refers to the entire heat pipe as a “panel,” thus it is not surprising
that the term is singular. See, e.g., Ex. 1003, 2:8–10 (“A shape of the heat
pipe is not limited to that of a so-called pipe type, and included are a shape
of a panel type and shapes of other types.”), 3:15–17 (“FIG. 2A illustrates a
partially cut-out explanatory perspective view of a structure of a heat pipe of
a panel type of the present invention.”), 3:25–28 (referring to a component
“inside the panel”). We do not find persuasive Patent Owner’s implied
argument that Morikawa’s reference to a singular “panel” supports a finding
that the disclosed device is manufactured from a single plate.
We find evidence in the record contrary to Patent Owner’s arguments
and Dr. Faghri’s opinions. Specifically, we agree with Petitioner that
Morikawa’s Figures 2B and 3 appear to show two plates. Pet. Reply 23.
Further, Dr. Pokharna provides sound reasoning as to why, based on
Nakamura’s construction, one having ordinary skill in the art would have
understood Nakamura’s heat pipe to be made using two plates. Ex. 1032
¶¶ 41‒55. Additionally, Petitioner submitted evidence, circa 1973, showing
that it was known in the art at the time to make heat pipes from two plates.
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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 the evidence supports the view that Nakamura discloses a container
formed from two plates.
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. See
PO Resp. 63–64 (referring to argument in Sections VII.C and VI.D); id.
at 52–53 (Section VII.C referring to argument in Section VI.C).
Specifically, as to a reason to combine, Patent Owner argues that:
Morikawa’s heat pipe container is not made from two
“plates.” . . . As a result, 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, which a POSITA would have been motivated to avoid.
Ex. 2002 ¶ 154.
. . .
A POSITA at the time of the invention would have recognized
that replicating “flanges (17) and (17)” of Takahashi in
Morikawa’s heat pipe could create gaps in the capillary
structure and adversely affect performance of the heat pipe,
which a POSITA would have been motivated to avoid.
Ex. 2002 ¶ 155.
PO Resp. 53.
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 ¶¶ 154‒155. As discussed above, Morikawa discloses
a heat pipe formed of two plates. See Ex. 1003, Figs. 2(A), 2(B), 3.
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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. 29–30 (citing Ex. 1002 ¶ 60). 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 at the time of filing for the ’680
patent” and that “a [person of ordinary skill in the art] would have
reasonably expected the combination of Morikawa and Takahashi to yield
predictably successful results.” Ex. 1002 ¶ 60.
Dr. Faghri testifies that adopting Takahashi’s flanges would have
complicated Morikawa’s construction because it could have created gaps in
Morikawa’s capillary structure. Ex. 2002 ¶ 155. However, as Dr. Pokharna
opines (Ex. 1032 ¶ 63), Morikawa likely used the known method of brazing
or soldering to form the assembly, so it is unclear how use of Takahashi’s
flanges, joined by brazing or soldering, would disrupt the capillary action in
Morikawa’s heat pipe. Further, Dr. Faghri testifies that this purported
problem—that capillary gaps merely could result—would have been
recognized by persons of ordinary skill in the art, but does not testify that
this would have been viewed as an insurmountable problem without an
existing known solution or one that would offset the benefits of using
flanged joints. See Ex. 2002 ¶ 155. Dr. Faghri’s position is also belied by
the ’680 patent itself, which describes the joining of plates by soldering or
brazing as “well understood” “conventional means” of joining plates.
Ex. 1001, 3:32–41 (“Contact plate 18 and cover plate 20 are sealed together
at their peripheral lips 22 and 24 by conventional means, such as soldering
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or brazing, to form heat pipe 10. . . . This is the conventional method of
constructing a heat pipe, and is well understood in the art of heat pipes.”).
We find that Petitioner has provided adequate evidence and reasoning
of a reason to employ Takahashi’s flanges in Morikawa’s heat pipe, and that
the resulting modification would result in a structure having two plates with
circumferential edge lips bonded together.
Patent Owner contends that the recited “circumferential edge lip”
“requires lips extending around the circumference of the plates that are
bonded together.” PO Resp. 46–47; see also PO Sur-Reply 5
(“‘[C]ircumferential edge lips’ must extend circumferentially around the
edges of the boundary structure.”).12 Patent Owner contests Petitioner’s
assertion that Takahashi’s flanges extend about the entire circumference of
each plate. PO Resp. 52; cf. id. at 53–54 (arguing that Morikawa’s heat
pipe, purportedly made from a single plate, uses end caps, and Takahashi’s
embodiment with end caps omits its flanges and therefore the combination
will lack flanges) (citing Ex. 2002 ¶ 157)). We understand Takahashi’s
embodiment shown in Figures 5 and 6 to include flanges extending around
the circumference of the container when Takahashi is considered in its
entirety. Takahashi discloses sealing its heat pipe around its entire
circumference by vacuum brazing. Ex. 1005, 5:12‒20, 6:4‒22, 8:7‒16
(discussing the flange-less embodiment (a) shown in Figures 1‒4).

12 Petitioner asserts that “the meaning of ‘lip’ needs no resolution because
Takahashi discloses a ‘lip’ under either party’s construction” (Pet.
Reply 12), and that “the pertinent figures of Takahashi . . . clearly show that
the Takahashi apparatus is sealed about its periphery” (id. at 26). We agree
that no explicit construction of “circumferential edge lip” is necessary to
resolve the parties’ disputes here.
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Takahashi further describes that the flanged embodiment shown in cross-
section in Figures 5 and 6 is “equivalent” to the embodiment shown in
Figures 3 and 4. We agree with Dr. Pokharna that a person having ordinary
skill in the art would have read Takahashi’s additional 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 26–28 (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.
2. Vapor Chamber
In independent claim 3, the phrase “so as to define a vapor chamber”
comes at the end of the limitations:
a first plate having a circumferential edge lip bounding an inner
surface . . . [and] a second plate arranged in spaced apart
confronting relation to said first plate and including a
circumferential edge lip bounding an inner surface . . ., said
edge lips of said first and second plates being bonded together
so as to define a vapor chamber.
Ex. 1001, 6:5–13. Petitioner contends that Morikawa, as modified to have
Takahashi’s flanges, results in such a “vapor chamber” under either party’s
proposed construction for that phrase. Pet. 53–55; see id. at 38–40, 90
(referring to argument at Section IX.B.7).
Patent Owner contends that Morikawa does not disclose a “vapor
chamber.” PO Resp. 56 (incorporating the analysis in Section VI.B on PO
Resp. 43–45). This contention is based on Patent Owner’s proposed
construction of “vapor chamber” to require heat spreading in the form of
heat flow in more than one dimension. See id. at 3–4, 43–45, 56. As
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discussed above, we adopt the aspect of Petitioner’s proposed construction
of “vapor chamber” to encompass evaporation and condensation of a heat
transfer fluid “to transport or spread heat.” We do not construe “vapor
chamber” to require two- or three-dimensional movement of heat within the
chamber. We acknowledge, however, that the evaporation and condensation
of the heat transfer fluid within the vapor chamber will result in heat being
transported or spread.
We find that Petitioner has shown that Takahashi discloses that its
flanges are joined to each other by vacuum brazing to form a sealed
container, and Morikawa discloses that its sealed container provides a sealed
space in which a heat transfer fluid is evaporated and condensed to
transport heat. See Pet. 25 (citing Ex. 1005, 6:14‒22), id. at 38–39 (citing
Ex. 1003, 1:36–2:7). Specifically, Morikawa discloses a heat pipe formed as
a sealed container under either party’s proposed construction—an enclosed
and hermetically sealed void or cavity (Pet. 13) and a vacuum sealed
chamber (PO Resp. 14). Ex. 1003, 1:36–41; Ex. 1002 ¶ 67. Morikawa
further discloses that the container has a refrigerant that is added to the
container after air is extracted therefrom, and that the refrigerant can be
evaporated and condensed to transport or spread heat. Ex. 1003, 1:36–2:7;
Ex. 1002 ¶ 67.
Patent Owner argues that Morikawa teaches “one-dimensional heat
flow.” PO Resp. 44 (citing Ex. 2002 ¶¶ 67, 126–127, 130, 131). Patent
Owner provides an illustration, reproduced below, for purposes of
explanation.
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PO Resp. 44. The illustration above appears to be based on Figure 2A of
Morikawa, in which Patent Owner has added heat sources and coloring to
indicate the heating portion in red and cooling portions in blue. Id. 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 ’680 patent and Morikawa, as shown below. Pet. Reply 4–5 (citing Ex.
1032 ¶¶ 26‒32).

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The illustration on the left is based on Figure 3 of the ’680 patent and shows
a heat source in purple and the heat flow traveling away from the heat source
as red arrows. Ex. 1032 ¶ 28–29. The illustrations on the right are based on
Morikawa as shown in Figure 2(A) of Nakamura and depict a heat source
with the heat flow traveling away from the heat source as red arrows. Pet.
Reply 4–5; Ex. 1032 ¶ 30.
Dr. Pokharna testifies that in the device of the ’680 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 ¶¶ 27–29.
Dr. Pokharna illustrates, in the annotated illustration on the left above, an
internal 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 outwards, as per normal physics” as depicted with the red arrows in
the annotated illustration on the left above. Id. ¶ 29. Dr. Pokharna also
testifies that heat flows toward heat sink 16 (not shown in the annotated
figure) into the page from this point of view. Id.
Petitioner criticizes Dr. Faghri’s testimony as “faulty” because
Dr. Faghri (1) “never explains how heat spreads in the [’680 patent’s] heat
pipe,” (2) does not provide adequate foundation for his opinion that heat
moves in Morikawa’s device 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- or three-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
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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 as relied upon in Petitioner’s
challenge.
We find that Morikawa as modified by Takahashi discloses the recited
“vapor chamber” under either party’s proposed construction.
For these reasons, Petitioner has provided adequate evidence to
demonstrate that the combination of Morikawa and Takahashi discloses the
recited “a first plate having a circumferential edge lip . . . [and] a second
plate arranged in spaced apart confronting relation to said first plate and
including a circumferential edge lip . . ., said edge lips of said first and
second plates being bonded together so as to define a vapor chamber.”
c. “a first plate having . . . a depression which projects
outwardly relative to said inner surface”
Petitioner contends that Nakamura discloses the claimed “first plate
having . . . a depression which projects outwardly relative to said inner
surface.” Pet. 88–89 (citing Ex. 1002 ¶ 110). Specifically, Petitioner
identifies, as the recited depression, Nakamura’s concavity 9 of the top plate,
with that concavity being adhered to an opposing concavity of the bottom
plate. Id. Petitioner asserts that “‘concavity’ labeled as ‘9’ . . . extends
downwardly in the direction that ‘said inner surface’ is facing towards.” Id.
at 88 (citing Ex. 1002 ¶ 110); see id. at 89 (Petitioner’s annotated version of
Nakamura’s Figure 3 depicting the subject feature in red). Petitioner
proposes to substitute Nakamura’s concavity for the pipe of Morikawa. Id.
at 88 (referring to argument at Sections X.B.5.b and X.B.5.c).
As for a reason to combine Nakamura with Morikawa, Petitioner
argues, inter alia, that:
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[A] POSITA would have understood that the concavities /
depressions allow fasteners to go through the body region of the
heat pipes onto which the heat-generating elements can be
secured. (Pokharna, ¶85.)
Further, Nakamura expressly provides a POSITA with
the motivation to combine it with Morikawa because, for
starters, Nakamura directly names Morikawa, describes its
shortcomings, and offers the solutions to resolve such
shortcomings.
Id. at 58 (citing Ex. 1002 ¶ 85; Ex. 1003, 1:3; Ex. 1004, 3–4). Petitioner
notes that these shortcomings pertain to the difficulty of brazing Morikawa’s
pipe to an outer wall in order to create a non-leaking seal. See id. at 58–63
(citing Ex. 1002 ¶ 86). Petitioner argues that, “when reading Morikawa and
Nakamura together, a POSITA would have been motivated to combine
Nakamura with Morikawa because Nakamura expressly provides the
solution, and thus the motivation to combine Nakamura with Morikawa to
solve the problems in Morikawa.” Id. at 63 (citing Ex. 1002 ¶ 86).
Petitioner has demonstrated adequately that 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 ’680 patent. Compare Pet. 57 (showing annotated Figure 4 of
Nakamura), with Ex. 1001, Figs. 1, 2 (showing depressions 26). We further
find that Petitioner has shown that a person having ordinary skill in the art
would have had a reason to modify Morikawa’s heat pipe to employ the
depressions of Nakamura. Pet. 58–63 (citing Ex. 1002 ¶¶ 85–86).
d. “at least one opening through said second plate”
Petitioner asserts that Nakamura discloses the recited “at least one
opening through said second plate.” Pet. 81–82; see id. at 90 (referring to
argument at Section X.C.6; citing Ex. 1002 ¶ 113). Specifically, Petitioner
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contends that the hole in the bottom plate concavity of Nakamura
corresponds to the recited opening. Id. (providing an annotated version of
Nakamura’s Figure 4). We agree with Petitioner and, for the reasons given
below, find that an opening in a concavity also is an opening in a plate.
e. “said depression having an open ended tubular cross-
section and an outer surface, a portion of which outer
surface is bonded to said second plate so as to
coaxially align said depression with one of said at least
one openings 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”
Claim 3 calls for the first plate depression to have an open ended
tubular cross-section and an outer surface bonded to the second plate so as to
align the second plate opening with the depression and thereby forming a
mounting hole isolated from the vapor chamber. Ex. 1001, 6:14–21.
Petitioner contends that the proposed combination discloses this limitation,
asserting that Nakamura’s first plate depression comprises an outer surface
that is bonded to a corresponding annular surface in the second plate
concavity such that the aligned openings create a hole that is isolated from
the vapor chamber. Pet. 90–98 (citing Ex. 1002 ¶¶ 115–118); see id. at 66–
71 (asserting that Nakamura’s plates each have an opening in the concavity
through which the bolt passes, that the area of the concavity is an annular
surface, and that those surfaces are bonded together) (citing Ex. 1002 ¶¶ 89–
91). Nakamura shows, in Figure 4, plates having inwardly formed
concavities 9 that are adhered together by soldering or the like and with a
hole formed in the mating concavities for accommodating a bolt and with
the hole being isolated from the interior. See Ex. 1004, 5, Fig. 4; Ex. 2012,
6, Fig. 4.
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As mentioned, claim 3 calls for a depression in the first plate bonded
to the second plate with the second plate having an opening. Patent Owner
argues that this structural relationship is not disclosed by Nakamura. PO
Resp. 59–60. Patent Owner argues that Nakamura describes one concavity
(depression) bonded to another concavity but not to an opposite plate. Id.
at 60. Patent Owner further argues that Nakamura’s hole is formed in the
two concavities and, therefore, the hole is not formed in the second plate as
recited in claim 3. Id.
We do not find Patent Owner’s arguments persuasive. Nakamura’s
concavities are formed in the plates—each concavity is an embossed part of
the respective plate. See Ex. 1004, 6 (“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.”); see also Ex. 2012, 6.
Thus, a concavity bonded to an opposing concavity also is bonded to the
opposing plate. Also, 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 such that the
hole is formed in the second plate.
We find that Nakamura discloses the subject limitations and
specifically a depression (concavity 9) in one plate that is bonded to another
plate and aligned openings forming a mounting hole isolated from the vapor
chamber.
f. Conclusion as to Ground 3, Claim 3
Based on the foregoing, Petitioner has established that independent
claim 3 is unpatentable over the combination of Morikawa, Takahashi, and
Nakamura.
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III. PATENT OWNER’S 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. PO Mot.
Excl. 1–2. Petitioner opposes. See, e.g., Pet. Opp. Mot. Excl. 1–2.
Patent Owner contends that “Exhibit 1004 [Nakamura] is not relevant
to the proceedings and should be excluded.” PO Mot. Excl. 4 (citing Fed. R.
Evid. 104, 401). Patent Owner argues that, “[f]or Exhibit 1004 to be
relevant, Petitioner was required to introduce sufficient proof that
Exhibit 1004 was publicly accessible such that it qualifies as a prior art
printed publication under United States law.” Id. at 3 (citing Fed. R.
Evid. 104). We disagree.
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
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).
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We dismiss Patent Owner’s remaining requests as moot, because we
do not address in this Decision the substance of any version of Exhibit 1040,
Exhibit 1041, Exhibits 3 and 4 and Attachment 3a to Exhibit 1039.
IV. CONCLUSION13
Petitioner has shown by a preponderance of the evidence that claim 3
of the ’680 patent would have been obvious over Morikawa, Takahashi, and
Nakamura. Petitioner has not shown by a preponderance of the evidence
that claims 1 and 2 of the ’680 patent would have been obvious. We also
deny-in-part and dismiss-in-part Patent Owner’s Motion to Exclude.
In summary:

13 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).
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
2 103(a) Morikawa 2
2 103(a) Morikawa,
Takahashi
2
1–3 103(a) Morikawa,
Takahashi,
Nakamura
3 1, 2
Overall
Outcome
3 1, 2
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V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, claims 1 and 2 of the ’680 patent have not been
proven to be unpatentable;
FURTHER ORDERED that claim 3 of the ’680 patent has been
proven to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied-in-part and dismissed-in-part; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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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