Aavid Thermalloy LLC

Patent Trials and Appeals Board

Jun 4, 2020

IPR2019-00338 (P.T.A.B. Jun. 4, 2020)

Trials@uspto.gov Paper 54
571-272-7822 Date: June 6, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

COOLER MASTER CO., LTD.,
Petitioner,

v.

AAVID THERMALLOY LLC,
Patent Owner.
____________

IPR2019-00338
Patent 7,100,680 B2
____________

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

BARRETT, Administrative Patent Judge.

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. 1101). Paper 2 (“Pet.”). The Petition challenges the patentability of
claims 5–8 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.”), 24. Aavid Thermalloy LLC (“Patent Owner”)2 filed a
Response to the Petition. Paper 27 (“PO Resp.”). Petitioner filed a Reply
(Paper 33, “Pet. Reply”) and Patent Owner filed a Sur-Reply (Paper 39, “PO
Sur-Reply”). The parties filed papers addressing Patent Owner’s
identification of allegedly improper arguments and evidence in Petitioner’s
Reply. Papers 39 (PO Sur-Reply Appendix listing allegedly new theories
and new evidence in the Reply), 42 (Petitioner’s Response to the same),
Paper 48 (Petitioner’s Notice of Supplemental Authority), Paper 49 (Patent
Owner’s Notice of Supplemental Authorities).
Additionally, Patent Owner filed a Motion to Exclude (Paper 45, “PO
Mot. Excl.”), to which Petitioner filed an Opposition (Paper 47, “Pet. Opp.
Mot. Excl.”), and Patent Owner filed a Reply (Paper 50).
An oral hearing was held on March 5, 2020, and a transcript of the
hearing is included in the record. Paper 53 (“Tr.”).

1 Petitioner identifies Cooler Master Co., Ltd. and CMI USA, Inc. as real
parties-in-interest. Paper 36.
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 5 of the ’680 patent is
unpatentable, but Petitioner has not shown by a preponderance of the
evidence that claims 6, 7, and 8 of the ’680 patent are unpatentable. We also
deny-in-part and dismiss-in-part 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,
IPR2019-00334, and IPR2019-00337. Papers 4; 36.
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 Claim
Of the challenged claims of the ’680 patent, claim 5 is the sole
independent claim. That claim is reproduced below and is illustrative of the
claimed subject matter:
5. An integrated circuit chip cooling structure comprising:
a top plate having an edge lip that bounds a top surface
and a bottom surface;
a bottom plate having an edge lip that bounds a top
surface and a bottom surface, said edge lips of said top and
bottom plates being bonded together so as to define a vapor
chamber;
a capillary wick provided within said vapor chamber;
wherein said top plate and said bottom plate each define
at least one opening such that the at least one opening of said
top plate and the at least one opening of said bottom plate are
vertically aligned;
at least one hollow column extending between said top
plate and said bottom plate, said at least one hollow column
having a top end sealed to a periphery of said opening defined
in said top plate and a bottom end sealed to a periphery of said
opening defined in said bottom plate, said at least one hollow
column having a central passageway sized to receive a fastener.
Ex. 1101, 6:43–62.
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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”)
1103
Japanese Unexamined Utility Model Application S50-
55262; Asserted Year of Publication: 1975; Inventor:
Kazuo Nakamura (as translated) (“Nakamura”)3
1104
Japanese Examined Utility Model Application Publication
No. H8-10205; Published March 27, 1996; Inventors:
Tadahito Takahashi, Kaoru Hasegawa, Muneaki Sokawa
(as translated) (“Takahashi”)
1105
US 6,082,443; filed Feb. 13, 1998; issued July 4, 2000
(“Yamamoto”)
1124
Petitioner also relies on the Declaration of Dr. Himanshu Pokharna
(Ex. 1102) and the Supplemental Declaration of Dr. Himanshu Pokharna
(Ex. 1132) in support of its arguments and Patent Owner relies on the
Declaration of Dr. Amir Faghri (Ex. 2102) 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.
Because of the outcome in this case, we do not need to address 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
5, 8 103(a) Morikawa
5, 8 103(a) Morikawa, Takahashi
5, 8 103(a) Morikawa, Takahashi, Nakamura
6, 7 103(a) Morikawa, Takahashi, Nakamura,
Yamamoto
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. 12 (citing Ex. 1102 ¶¶ 8–10).
Relying on Dr. Faghri’s testimony, Patent Owner argues for a lower
level of skill in the art than that proposed by Petitioner. PO Resp. 10–11. 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. at 11 (citing Ex. 2102 ¶ 83). 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 10–11 (citing
Ex. 2102 ¶¶ 80–82).
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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 1105, 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. 14 (quoting Ex. 1119, 6 (Patent Owner’s
proposed construction in the District Court); citing, inter alia, Ex. 1102 ¶ 33
(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 independent claim 5,
argues that the prior art discloses the recited “hollow column” under both
parties’ proposed interpretations. See id. at 49 (Morikawa), 72 (Nakamura).
Petitioner, in its articulation of one ground, points to Figure 1 of the
challenged patent in arguing that “the ’680 patent discloses the hollow
column as ‘columns 44’ in which ‘holes 12’ are located.” Pet. 61.
In the Institution Decision in a related case, 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. IPR2019-00334,
Paper 7, 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
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[of the ’680 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. 23
(citing Ex. 1101, 1:66–2:2, 2:16–18, 2:36–39, 2:43–46, 3:28–31, 4:26–30;
Ex. 2102 ¶ 122). 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. at 23–24
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 7
(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
any doubt, . . . expressly acquiesces to the distinction between ‘depressions’
and ‘hollow columns’ that the Board has identified in related IPR
proceedings,” and relies on its expert’s deposition testimony as support for
the proposition that columns and depressions are completely different things.
Id. (quoting Ex. 1133, 30:20–24, 41:6–14). Patent Owner concludes by
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asserting that this distinction “is consistent with the Board’s interpretation in
the institution decisions, which [Patent Owner] agrees stays true to the claim
language and naturally aligns with the specification.” Id.
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. 1101, 2:18–20, 4:26–30.
Specifically, as discussed in our Institution Decision in the related
case, IPR2019-00334, 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 id., 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. 1101, Figs. 1, 2. In other words, “the
bottom of depression 26 must be bonded to inner surface 28 of contact
plate 18.” Ex. 1101, 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. 1101, 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. See Pet. 16, 19–20;
PO Response 14 (Patent Owner arguing that Petitioner’s proposed
construction is “inappropriately broadening the meaning of ‘vapor chamber’
to encompass devices that merely ‘transport’ heat.”). 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. 12–13.
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. 15 (citing Ex. 2102 ¶¶ 33–36, 44, 93–96; Ex. 1101, 2:12–13, 2:20–46,
3:37–41, 4:46–49; Ex. 2105, 104:19–24). The parties do not identify a
distinction pertinent to any dispositive issue in this case. 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. 16. 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
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acknowledged in the ’680 patent as important to spreading heat. Id. (citing
Ex. 1101, 1:66–2:2, 2:20–46, 3:54–4:8; Ex. 2102 ¶¶ 45, 99). 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 16 (citing Ex. 2105, 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. 1101, 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. 1101, 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. 14–15.
Patent Owner urges a narrower definition of “vapor chamber” that requires
evaporation and condensation of a heat transfer fluid to “spread heat.” Id.
Patent Owner argues that heat spreading 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 14 (citing Ex. 2102
¶ 91). 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 account for the text of the
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specification that repeatedly refers to spreading heat.” Id. at 14–15 (citing
Ex. 2102 ¶ 92).
As reproduced above, the ’680 patent describes operation of the heat
pipe to “transport heat from the evaporator to the condenser.” Ex. 1101,
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
Claims 5 and 8 over Morikawa (Ground 1)
Petitioner, in the Petition, argued that independent claim 5 and
dependent claim 8 of the ’680 patent would have been obvious over
Morikawa alone. Pet. 6, 22–58. In the Decision instituting an inter partes
review in a related case, we determined that Petitioner had not demonstrated
a likelihood of prevailing on this challenge. IPR2019-00334, Paper 7, 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. 43–45 (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
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withdraw Ground 1 from this proceeding or otherwise limit the Petition. We
proceed to reanalyze Ground 1 on the full record developed during trial.
1. Overview of Morikawa (Ex. 1103)
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. 1103, 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 Independent Claim 5
over Morikawa
The dispositive issue with regard to this ground pertains to the
structural configuration where the bonding occurs. Claim 5 recites:
a top plate having an edge lip that bounds a top surface and a
bottom surface; a bottom plate having an edge lip that bounds a
top surface and a bottom surface, said edge lips of said top and
bottom plates being bonded together so as to define a vapor
chamber.
Ex. 1101, 6:44–49. Thus, the claim requires each of the two plates to have
an edge lip bounding top and bottom surfaces, and for those two edge lips to
be bonded together so as to define a vapor chamber.
For the recited 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:

Pet. 31, 39. 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 edge lip of the first plate and,
in the right figure, to the feature identified as the claimed edge lip of the
second plate. Ex. 1103, 4:50–52; Pet. 31, 39. We understand Petitioner to
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identify, as an 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 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. 43–45.
Petitioner has not demonstrated by a preponderance of the evidence
that claim 5, or its dependent claim 8, would have been obvious over
Morikawa alone.
E. The Alleged Obviousness of Claims 5 and 8 over Morikawa and
Takahashi (Ground 2)
Petitioner alleges that claims independent claim 5 and dependent
claim 8 of the ’680 patent would have been obvious over the combination of
Morikawa and Takahashi. See Pet. 22–58. Patent Owner argues that
Petitioner has failed to demonstrate obviousness regarding the recited vapor
chamber, two plates, and edge lips. See PO Resp. 45–50; PO Sur-Reply 11–
19. For the reasons given below, we determine that Petitioner has
demonstrated that independent claim 5 would have been obvious over
Morikawa and Takahashi, but has not demonstrated that dependent claim 8
would have been obvious.
1. Overview of Takahashi (Ex. 1105)
Takahashi discloses a heat pipe “fixed with screws for mounting
heating elements, such as transistors or the like.” Ex. 1105, 3:14–15, 26–29.
By way of illustration, Takahashi Figures 3 and 4 are reproduced below.
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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
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
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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
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.
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2. The Alleged Obviousness of Independent Claim 5 over
Morikawa and Takahashi
a. “An integrated circuit chip cooling structure”
The preamble of independent claim 5 recites “[a]n integrated circuit
chip cooling structure comprising . . . .” Ex. 1101, 6:43. Morikawa
discloses a heat pipe (Ex. 1103, 1:28–32), and Petitioner notes that
Morikawa explains that “[a] heat pipe is widely used as a means of releasing
heat from an internal component of a computer,” (Pet. 29 (quoting Ex. 1103,
1:32–33)). Petitioner, relying on Dr. Pokharna’s testimony, maintains that a
person of ordinary skill in the art “would have understood and found it
obvious that ‘an internal component of a computer’ includes integrated
circuit chips, which is further confirmed by Morikawa’s additional
disclosure of a heat pipe cooling a ‘transistor element’ as shown in Figure 3.
Pet. 29–30 (citing Ex.1103, 3:32–35, Fig. 3; Ex. 1102 ¶ 53). We find that
Morikawa discloses an integrated circuit chip cooling structure.
b. “a top plate having an edge lip that bounds a top
surface and a bottom surface; a bottom plate having an
edge lip that bounds a top surface and a bottom
surface, said edge lips of said top and bottom 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. 30–44
(incorporating the analysis in Sections IX.B.2 and IX.B.3; collectively citing
Ex. 1102 ¶¶ 54–61). Petitioner contends that the proposed combination
yields a structure formed from two plates with the recited edge lips, which
are 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
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combination lacks the recited top and bottom plates, edge lips, and a vapor
chamber. PO Resp. 45–50.
1. Two Plates with Edge Lips Bonded Together
Petitioner contends that Morikawa discloses a structure including a
top plate and a bottom second plate. Pet. 30–31, 22, 32–33. Petitioner
provides the following annotated versions of Morikawa’s Figures 2 and 3.

Id. at 31, 39. Above are Petitioner’s annotated versions of a partially cut-out
explanatory perspective view illustrating a top plate of Morikawa’s heat pipe
and an explanatory cross-sectional view illustrating a bottom plate of
Morikawa’s heat pipe. Id.; Ex. 1103, 4:49–55.
Petitioner contends that Takahashi also discloses a heat pipe with two
plates and with each having the recited edge lip (i.e., Takahashi’s flanges
(17)), and further contends that it would have been obvious to combine
Takahashi’s flanges with Morikawa’s heat pipe in a manner resulting in each
plate of the modified Morikawa heat pipe having an edge lip that bounds a
top surface and a bottom surface and which are bonded together so as to
define a vapor chamber. Id. at 33–38, 40, 43–44. Petitioner utilizes
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annotated versions of Takahashi’s Figures 5 and 6, including the one shown
below, in explaining its contentions.

Pet. 33. The above figures depict cross-sectional views of a heat pipe of
Takahashi with Petitioner’s annotations identifying “an edge lip bounding a
top surface and a bottom surface” of “a top plate.” Pet. 33; Ex. 1105, 8:12–
15; see also Pet. 40 (annotated figures identifying an edge lip on the bottom
plate), 43 (annotated figures identifying bonded-together edge lips).
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.” Id. at 34. 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. 1102 ¶ 56).
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
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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. 35–36 (citing Ex. 1102 ¶ 57). 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 36 (citing Ex. 1102 ¶ 57). 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. This is because these “flanges
(17) and (17)” are protruding and exposed outwardly, and thus
are easier to be pressed and clamped together while being
heated to make them bond and seal together during the
manufacturing processes. (Pokharna, ¶57.) . . . Because the
“flanges (17) and (17)” structures and the associated
manufacturing processes in Takahashi were well-known at the
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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 37–38 (citing Ex. 1102 ¶ 57).
Patent Owner argues that “Morikawa . . . does not teach (or even
contemplate) the concept of constructing a heat pipe using two ‘plates.’” PO
Resp. 41 (citing Ex. 2102 ¶ 129); see also id. at 46–47 (“Petitioner and
Petitioner’s expert fail to identify any rationale or motivation to modify
Morikawa or combine it with Takahashi to provide a ‘top plate’ and ‘bottom
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 41 (citing Ex. 2102
¶¶ 130). Patent Owner argues that a person of ordinary skill in the art would
have understood that Morikawa’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. 2102 ¶ 130).
Petitioner argues that Morikawa’s Figures 2B and 3 clearly show two
different plates. Pet. Reply 23–24 (citing Ex. 1132 ¶¶ 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. 1132 ¶ 40. Dr. Pokharna criticizes
Dr. Faghri’s testimony for failing to address this Figure, which Dr. Pokharna
pointed to in his prior Declarations as support for first and second plates.
Id. (citing Ex. 1002 in related cases IPR2019-00144 and IPR2019-00337);
see Ex. 1102 ¶¶ 54, 58.
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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 13.
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. at 13–14. 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. 2102 ¶¶ 65, 66, 129–131).
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. 31, 39, 46;
Ex. 1102 ¶¶ 54, 58, 58. 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
appropriate end caps.” Ex. 2102 ¶ 130. This testimony is premised on
Dr. Faghri’s statement that “[t]his was the conventional way that heat pipes
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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. 42.
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. 2102 ¶ 131; Ex. 1103, 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. 1103, 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. 42 (citing Ex. 2102 ¶ 131; Ex. 1103,
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. 2102 ¶ 131). Neither Patent Owner nor Dr. Faghri explain
adequately why, even assuming that the approach would “not be necessary”
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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. 1103 at 4:28–29, 4:36–37) and ‘upper and lower inner surfaces of the
panel’ (Ex. 1103 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 14. 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. 1103, 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
Morikawa’s construction, one having ordinary skill in the art would have
understood Morikawa’s heat pipe to be made using two plates. Ex. 1132
¶¶ 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.
Ex. 1132 ¶¶ 44‒45 (citing Exs. 1036, 1037, which we understand to be a
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typographical error and referring Exs. 1136 and 1137)). 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 Morikawa 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 “edge lips.” See PO Resp. 48–
50. 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 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.2102 ¶145.
. . .
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.2102 ¶146.
PO Resp. 48–49.
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. 2102 ¶¶ 145–146. As discussed above, Morikawa discloses
a heat pipe formed of two plates. See Ex. 1103, Figs. 2(A), 2(B), 3.
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. 37–38 (citing Ex. 1102 ¶ 57). For instance, we credit
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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. 1102 ¶ 57.
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. 2102 ¶ 146. However, as Dr. Pokharna
opines (Ex. 1132 ¶ 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. 2102 ¶ 146. 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. 1101, 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
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
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the resulting modification would result in a structure having two plates with
the recited “edge lips” bonded together.
Patent Owner contends that the recited “edge lip that bounds a top
surface and a bottom surface” requires a lip that is “extending around a
perimeter of the plate.” PO Resp. 44. We understand Patent Owner to
contend that the recited “edge lip” must extend entirely around the heat pipe.
See id. (Patent Owner arguing that Morikawa’s heat pipe would be formed
from a single plate and, thus, would require end caps and, thus, would not
have an edge lip “extending around a perimeter of the plate.”); PO Sur-
Reply 19 (“Takahashi’s flanges extend only along the lateral sides of
Takahashi’s container.”).6 Patent Owner contests Petitioner’s assertion that
Takahashi’s flanges extend about the entire circumference or periphery of
each plate and of the overall container. See PO Resp. 48; cf. id. at 49
(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. 2102 ¶ 146)).
We understand Takahashi’s embodiments 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. 1105, 5:12‒20,

6 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, which clearly show
that the flange of each of the two plates bounds a top surface and a bottom
surface of that plate, and the two flanges are bonded together to seal about
the container’s entire periphery/circumference/outer perimeter” (id. at 26–
27). We agree that no explicit construction of “edge lip” is necessary to
resolve the parties’ disputes here.
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6:4‒22, 8:7‒16 (discussing the flange-less embodiment (a) shown in
Figures 1‒4). 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. 1132 ¶ 65). As explained by Dr.
Pokharna, “implementing a flange about the entire perimeter of those
devices would help to ensure . . . that those devices are vacuum sealed and
operate correctly.” Ex. 1132 ¶ 65.
2. Vapor Chamber
In independent claim 5, the phrase “so as to define a vapor chamber”
comes at the end of the limitations:
a top plate having an edge lip that bounds a top surface and a
bottom surface . . . [and] a bottom plate having an edge lip that
bounds a top surface and a bottom surface, said edge lips of
said top and bottom plates being bonded together so as to define
a vapor chamber.
Ex. 1101, 6:44–49. 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. 43–44.
Patent Owner contends that Morikawa does not disclose a “vapor
chamber.” PO Resp. 46 (incorporating the analysis in Section VI.B on PO
Resp. 39–41). 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 39–41, 46. As discussed
above, we adopt the aspect of Petitioner’s proposed construction of “vapor
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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. 33 (citing Ex. 1105, 6:14‒22), id. at 41–42 (citing
Ex. 1103, 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. 17) and a vacuum sealed
chamber (PO Resp. 15). Ex. 1103, 1:36–41; Ex. 1102 ¶ 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. 1103, 1:36–2:7;
Ex. 1102 ¶ 67.
Patent Owner argues that Morikawa teaches “one-dimensional heat
flow.” PO Resp. 39–40 (citing Ex. 2102 ¶¶ 67, 122–124, 127–128). Patent
Owner provides an illustration, reproduced below, for purposes of
explanation.
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PO Resp. 40. 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. 2102 ¶ 124).
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. 1132 ¶¶ 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. 1132 ¶ 27–28. 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. 1132 ¶ 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. 1132 ¶¶ 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 top plate having an edge lip that bounds a top surface and a
bottom surface; a bottom plate having an edge lip that bounds a top surface
and a bottom surface, said edge lips of said top and bottom plates being
bonded together so as to define a vapor chamber.”
c. “a capillary wick provided within said vapor chamber”
Petitioner contends that Morikawa discloses a capillary wick within a
vapor chamber. Pet. 44 (quoting Ex. 1103, 1:36–39). As Petitioner notes,
id., Morikawa states that “[t]he heat pipe has a wick exhibiting a capillary
action coated on an inner peripheral wall of an enclosure of an airtight
structure.” Ex. 1103, 1:36–39. Petitioner has provided adequate evidence to
show that Morikawa discloses the recited “capillary wick within a vapor
chamber.”
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d. “wherein said top plate and said bottom plate each
define at least one opening such that the at least one
opening of said top plate and the at least one opening
of said bottom plate are vertically aligned” and “at
least one hollow column extending between said top
plate and said bottom plate, said at least one hollow
column having a top end sealed to a periphery of said
opening defined in said top plate and a bottom end
sealed to a periphery of said opening defined in said
bottom plate, said at least one hollow column having a
central passageway sized to receive a fastener”
Claim 5 calls for the two plates to each have an opening and a hollow
column extending between and sealed to the periphery of those openings.
Ex. 1101, 6:52–62.
Petitioner, relying on the testimony of Dr. Pokharna, contends that
Morikawa discloses, or renders obvious, top and bottom plates having
openings that are vertically aligned with each other, a hollow column
extending between the plates and being sealed to the openings in each plate
at the column’s ends, and a central passageway in the hollow column for a
fastener. Pet. 44–54 (citing Ex. 1102 ¶¶ 63–70). Specifically, Petitioner
contends that Morikawa discloses welding a metal pipe 11a to the upper and
lower surfaces (the plates) “so the metal pipe is communicated to holes
provided in advance in upper and lower surfaces of the panel.” Id. at 44–46
(quoting Ex. 1103, 4:25–29; internal quotations omitted).
Petitioner further contends that Morikawa teaches another
embodiment that also discloses or renders obvious these aspects of claim 5.
See id. at 46–49 (quoting Ex. 1103, 4:25–41). Morikawa states:
[T]he through path 11 of the present invention . . . may
also be formed by the following method. That is, the through
path may be formed by welding and fixing a metal column to
upper and lower inner surfaces of the panel like a conventional
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spacer to form the enclosure and afterward opening a hole in
the panel walls and this metal column by a drill. In this
situation, the holes may be formed in advance in the upper and
lower surfaces of the panel, the holes may be closed from the
inside by welding a metal column of a cross-sectional area
sufficient to block these holes, and the metal column may
afterward be drilled from the panel hole to bore the through
path.
Ex. 1103, 4:25–41.
Petitioner further contends that a person of ordinary skill in the art
would have recognized that the through path in the metal pipe is for passage
of a bolt that is used to fix a component to the heat pipe. Pet. 54 (citing
Ex. 1102 ¶ 70; Ex. 1103, 3:12–14, 5:3–4, Fig. 3). We agree.
Petitioner has presented adequate evidence and reasoning to show that
Morikawa discloses these aspects of claim 5.
e. Conclusion as to Ground 2, Independent Claim 5
Based on the foregoing, Petitioner has established that independent
claim 5 is unpatentable over the combination of Morikawa and Takahashi.
3. The Alleged Obviousness of Dependent Claim 8 over Morikawa
and Takahashi (Ground 2)
Claim 8 depends directly from independent claim 5 and calls for the
hollow column to have “a top shoulder disposed near a top end and bonded
to a bottom surface of said top plate around one opening.” Ex. 1101, 7:8–
11. For both Grounds 1 and 2, Petitioner argues that, “[a]s can be seen
below in excerpted and annotated Figure 2 [on page 56 of the Petition],
Morikawa’s ‘metal pipe 11a’ (indicated in light yellow) corresponds to
’680’s ‘said at least one hollow column’ and has a ‘top shoulder’ (indicated
in cyan).” Pet. 54–56 (citing Ex. 1102 ¶ 71). Petitioner, on page 57 of the
Petition, provides another annotated drawing depicting a purported
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alternative embodiment of Morikawa, and argues similarly that, “as can be
seen below, Morikawa’s alternative ‘metal pipe’ (indicated in light yellow)
corresponds to ’680’s ‘said at least one hollow column’ and has a ‘top
shoulder’ (indicated in cyan).” Id. at 57 (citing Ex. 1102 ¶ 72).
In the Institution Decision, we determined that Petitioner had not
demonstrated a likelihood of prevailing as to dependent claim 8. Dec. to
Inst. 19–20. We stated:
We fail to discern, in the relied upon figures, any
structure in the form of a shoulder, notwithstanding Petitioner’s
addition of cyan lines. We also note that the second annotated
figure (on Pet. 57) identifies, via red circles at added cyan lines,
“sealed” areas that appear to be some distance from the
purported metal pipe (light yellow); this suggests that Petitioner
is relying on its own added cyan line as disclosure of a shoulder
on a hollow column. See id. at 57.
Dec. to Inst. 20. Petitioner did not offer, in the Petition, a proposed
construction for the term “top shoulder.”
In its Reply, Petitioner, relying on new testimony from Dr. Pokharna,
asserts that “[t]he term ‘shoulder’ does not appear in the text of the subject
patent’s specification, so the only possible written description support for
claim 8 is in the figures.” Pet. Reply 28–29 (citing Ex. 1132 ¶¶71–75).
Petitioner provides an annotated version of Figure 2 of the ’680 patent,
circling the area where a column 44 is bonded directly to cover plate 20, and
argues that “Morikawa discloses this same arrangement” where metal
pipe 11a is bonded directly to the top plate. Id. (citing Ex. 1102 ¶¶ 71–72;
Ex. 1132 ¶¶ 76–77; Pet. 56). Petitioner, also in the Reply, provides an
annotated version of Morikawa’s Figure 2(B) circling the area of the
purported “same arrangement”; this version does not include cyan
annotations. Pet. Reply 29 (figure on the left). The Petition did not include
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this annotated figure in Petitioner’s challenge to claim 8. See Pet. 54–58.
This is a new theory as the Petition relied upon the cyan shoulder drawn by
Petitioner onto Morikawa’s Figure 2(B). See id. at 56; cf. PO Sur-Reply 20
(“Petitioner attempts to present new expert testimony on this issue in reply,
which should not be permitted.”). We again note that the annotated figure in
the Petition (Pet. 56) identifies the sealed (i.e. the claimed “bonded”) area
located some distance away from the top end of the metal pipe 11a, and not
bonded at the top end of the metal pipe itself, which Petitioner now contends
is the “shoulder.”
Furthermore, even were it not a new argument, we do not find
persuasive this “same arrangement” theory. Petitioner’s implied
construction is that the claimed “shoulder” is the top end of a column. This
is inconsistent with the claim language which recites that the “hollow
column . . . has a top shoulder disposed near a top end” thus indicating that
the top shoulder is not merely the top end of the column but a structure
“near” and discernable from the top end of the hollow column.
At most, Petitioner’s new argument is that Morikawa’s bonding
arrangement performs the same function as that shown in one embodiment
in the ’680 patent (i.e. the function of bonding a column to a plate). This,
however, is not an adequate explanation as to how the specific “shoulder”
structure of claim 8 is disclosed in Morikawa and, effectively, reads out the
claim’s requirement of a “shoulder.”
Petitioner has not demonstrated that Morikawa discloses the recited
“top shoulder disposed near a top end and bonded to a bottom surface of said
top plate around one opening” as recited in claim 8. Accordingly, Petitioner
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has not demonstrated that claim 8 would have been obvious over Morikawa
and Takahashi.
F. The Alleged Obviousness of Claims 5 and 8 over Morikawa,
Takahashi, and Nakamura (Ground 3)
Petitioner alleges that independent claim 5 and its dependent claim 8
would have been obvious over Morikawa, Takahashi, and Nakamura.7 See
Pet. 60–85; Pet. Reply 30–34. Patent Owner argues that Petitioner’s
proposed combination lacks the “hollow column” recited in independent
claim 5. PO Resp. 51–54; PO Sur-Reply 20–22. For the reasons given
below, we determine that Petitioner has not demonstrated that independent
claim 5 or its dependent claim 8 would have been obvious over Morikawa,
Takahashi, and Nakamura.
4. Overview of Nakamura (Ex. 1104)
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. 1104, 4.8 See also Ex. 2112, 5 (describing a sealed container made of
“sheet metal,” a coolant in the sealed container, recessed portions in the

7 Because we determine that Petitioner’s challenge fails on the merits, we
need not and do not reach Patent Owner’s argument that Nakamura is not a
prior art printed publication. See PO Resp. 29.
8 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
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upper and lower faces of the sealed container, and holes in the recess joint
surfaces). Figures 3 and 4 are reproduced below:

Figures 3 and 4 illustrate examples of a heat pipe of Nakamura’s invention,
with Figure 3 being a perspective view and Figure 4 being a partial
cross-sectional view of Figure 3 at cutting plane line IV–IV. Ex. 1104, 4, 7;
Ex. 2112, 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. 2112, 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

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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provided via pressing or the like in a state of the thin plate prior
to being assembled into the sealed configuration. A concavity
joining surface 9a of the concavity 9 is finished flat after
pressing is completed and is applied in advance to preliminary
soldering. The concavity joining surfaces 9a can then be
readily and [reliably] adhered by being pressurized and heated
before and after work of forming the sealed container 7 by
soldering or the like. Then, after air inside the sealed container
7 is extracted, a refrigerant is enclosed in an interior hollow
portion.
Ex. 1104, 6; see also Ex. 2112, 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. 1104, 6–7; see also
Ex. 2112, 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. 1104, 7; see also Ex. 2112, 7 (similar translation).
5. The Alleged Obviousness of Claim 5 over Morikawa,
Takahashi, and Nakamura
Independent claim 5 recites “at least one hollow column extending
between said top plate and said bottom plate.” Ex. 1101, 6:56–57. For this
feature, Petitioner’s proposed combination substitutes Nakamura’s
concavities for the metal pipes in Morikawa. See Pet. 61–65, 72–73; cf. id.
at 72 (“Nakamura discloses the ‘at least one hollow column extending
between said top plate and said bottom plate’ as follows.”). 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.
Id. at 61.
Patent Owner argues that Nakamura’s Figures 3 and 4 show
concavities but “do[] not disclose a ‘hollow column’ as claimed.” PO
Resp. 51–52 (citing Ex. 2102 ¶¶ 140, 142–143).
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. 63 (citing Ex. 1102 ¶ 80). Petitioner contends that
concavity 9 in Nakamura’s top plate constitutes the hollow column. See,
e.g., id. at 63 (“[T]he upper plate in Nakamura can form ‘a columnar
structure defining an unfilled or empty space’ to meet the ‘hollow column’
limitation.”). Petitioner also contends that two opposing and joined
concavities in Nakamura correspond to the recited “hollow column.” Id.
at 72.9 Some of Petitioner’s contentions are explained via the annotated
figures reproduced below.

9 Petitioner, in its Reply and in the context of this Ground 3, refers to
Morikawa’s drilled-through metal columns (metal pipes) as hollow columns.
See Pet. Reply 30–31, 33–34. To the extent that Petitioner is merging its
“hollow column” arguments in Ground 2 (where it relies on Morikawa for
the feature) and in Ground 3 (where it relies on Nakamura for the feature),
we agree with Patent Owner that this is an inappropriate new theory, and we
do not consider it. See PO Sur-Reply 21.
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Pet. 73. The figures above are an enlarged and annotated portion of
Nakamura’s Figures 3 and 4, and depict two concavities 9 formed in the top
and bottom plates with each having a depth of one-half the thickness of the
overall container 7. Ex. 1104, 5; Ex. 2112, 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. 1104, 5‒6; Ex. 2112, 6‒
7. Petitioner contends, as indicated in the annotated figure, that:
Nakamura’s bowl-shaped structures defining the concavity 9
opening upwardly and concavity opening 9 downwardly, joined
at the concavity joining surface 9a, together form a structure
with an H-shaped cross-section. This structure is “a cylindrical
structure” (indicated in green) surrounding “a void or cavity”
(indicated in grey), which meets Petitioner’s construction for
“hollow column.” Similarly, this structure is also “a columnar
structure” (indicated in green) defining “an unfilled or empty
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space” (indicated in grey), which meets Patent Owner’s
construction for “hollow column.” That is, this structure with
an H-shaped cross-section (indicated in green) corresponds to a
“hollow column” under both sides’ constructions.
Pet. 72.
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. 1101,
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. 61–62 (quoting Ex. 1101, 4:26–30). 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, or a structure
comprising two opposing concavities, which are two depression-like
structures. See id. at 80 (annotated Figure 4 of Nakamura). Accordingly,
Petitioner has not demonstrated a likelihood of prevailing in this challenge to
claim 5. 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 of the opposite concavity 9 formed in the opposite plate.
Ex. 1104, Fig. 4; Ex. 2112, 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
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renders independent claim 5 or its dependent claim 8 unpatentable under 35
U.S.C. § 103(a).
G. The Alleged Obviousness of Claims 6 and 7 over Morikawa,
Takahashi, Nakamura, and Yamamoto (Ground 4)
Claims 6 and 7 depend from independent claim 5 and pertain to a heat
sink attached to the integrated circuit chip cooling structure of claim 5.
Ex. 1101, 6:63–7:7. Petitioner relies on Yamamoto for the teaching of a
heat sink. See, e.g., Pet. 86. Petitioner’s articulated combination builds
upon the combination of Ground 3 and is premised on the assertion that
Nakamura’s concavities constitute the “hollow column” of claim 5. See id.
at 91 (demonstrative figure); Pet. Reply 35. For the reasons discussed
above, we find that underlying premise flawed. Petitioner’s articulation of
this Ground 4 that includes Yamamoto does not cure the underlying flaw.
Accordingly, Petitioner has failed to show by a preponderance of the
evidence that the combination of Morikawa, Takahashi, Nakamura, and
Yamamoto renders dependent claims 6 and 7 unpatentable under 35 U.S.C.
§ 103(a).
III. PATENT OWNER’S MOTION TO EXCLUDE
Patent Owner moves to exclude Exhibits 1104, 1140, and 1141, as
well as exhibits 3 and 4 and attachment 3a to Exhibit 1139. PO Mot.
Excl. 1–2. Petitioner opposes. See, e.g., Pet. Opp. Mot. Excl. 1–2.
Patent Owner contends that “Exhibit 1104 [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 1104 to be
relevant, Petitioner was required to introduce sufficient proof that
Exhibit 1104 was publicly accessible such that it qualifies as a prior art
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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 1104, is relevant as to
whether Nakamura is a printed publication. Accordingly, we deny Patent
Owner’s motion to exclude Nakamura (Ex. 1104).
We dismiss Patent Owner’s remaining requests as moot, because we
do not address in this Decision the substance of any version of Exhibit 1140,
Exhibit 1141, Exhibits 3 and 4 and Attachment 3a to Exhibit 1139.
IV. CONCLUSION10
Petitioner has shown by a preponderance of the evidence that claim 5
of the ’680 patent would have been obvious over Morikawa and Takahashi.

10 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
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Petitioner has not shown by a preponderance of the evidence that claims 6,
7, and 8 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:

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, claims 6, 7, and 8 of the ’680 patent have not been
proven to be unpatentable;
FURTHER ORDERED that claim 5 of the ’680 patent has been
proven to be unpatentable;

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
5, 8 103(a) Morikawa 5, 8
5, 8 103(a) Morikawa,
Takahashi
5 8
5, 8 103(a) Morikawa,
Takahashi,
Nakamura
5, 8
6, 7 103(a) Morikawa,
Takahashi,
Nakamura,
Yamamoto
6, 7
Overall
Outcome
5 6, 7, 8
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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.

IPR2019-00338
Patent 7,100,680 B2

56
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