Aavid Thermalloy LLC

Patent Trials and Appeals Board

Jun 4, 2020

IPR2019-00146 (P.T.A.B. Jun. 4, 2020)

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

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

COOLER MASTERS CO., LTD.,
Petitioner,
v.
AAVID THERMALLOY LLC,
Patent Owner.

IPR2019-00146
Patent 7,100,679 B2

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

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)

Denying and Dismissing-in-Part Patent Owner’s
Motion to Exclude Evidence
37 C.F.R. § 42.64

IPR2019-00146
Patent 7,100,679 B2
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I. INTRODUCTION
This is a Final Written Decision in an inter partes review challenging
the patentability of claims 1, 2, 4, and 5 of U.S. Patent No. 7,100,679 B2
(“the ’679 patent,” Ex. 1001). We have jurisdiction under 35 U.S.C. § 6.
Petitioner has the burden of proving unpatentability of a claim by a
preponderance of the evidence. 35 U.S.C. § 316(e) (2012). Having reviewed
the arguments of the parties and the supporting evidence, we find that
Petitioner has not demonstrated by a preponderance of the evidence that any
of claims 1, 2, 4, and 5 are unpatentable.
A. Procedural History
Cooler Master Co., Ltd. (“Petitioner”)1 filed a Petition for an inter
partes review of claims 1, 2, 4, and 5 of the ’679 patent. Paper 2 (“Pet.”).
Aavid Thermalloy LLC (“Patent Owner”)2 timely filed a Preliminary
Response to the Petition. Paper 8 (“Prelim. Resp.”). Patent Owner also filed
an unopposed “Motion & Certification under 37 C.F.R. § 42.100(b)
Requesting District Court-Type Claim Construction” (Paper 5), which we
granted (Paper 7, 3). In view of the then-available record, we concluded that
Petitioner satisfied the burden, under 35 U.S.C. § 314(a), to show that there
was a reasonable likelihood that Petitioner would prevail with respect to at
least one of the challenged claims. Accordingly, on behalf of the Director
(37 C.F.R. § 42.4(a) (2018)), and in accordance with SAS Inst. Inc. v. Iancu,
138 S. Ct. 1348, 1353 (2018) and the Office’s Guidance on the Impact of

1 Petitioner identifies itself and CMI USA, Inc., as the real parties in interest.
Pet. 1.
2 Patent Owner identifies itself as the real party in interest and states that it 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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SAS on AIA Trial Proceedings (Apr. 26, 2018),3 we instituted an inter
partes review of all the challenged claims, on all the asserted grounds. Paper
9 (“Inst. Dec.”), 21.
After institution, Patent Owner filed a Response. Paper 29 (“PO
Resp.”). Petitioner filed a Reply. Paper 35 (“Reply”). Patent Owner filed a
Sur-reply. Paper 41 (“Sur-reply”). Patent Owner also filed a motion to
exclude Exhibits 1004, 1040, 1041, and certain sections of Exhibit 1039
(Exhibits 3, 4 and attachment 3a). Paper 46. Petitioner opposed that motion
(Paper 48), and Patent Owner filed a Reply (Paper 51).
On March 5, 2020, the parties presented arguments at oral hearing, the
transcript of which is of record. Paper 54 (“Tr.”).
B. Related Proceedings
The ’679 patent is at issue in Aavid Thermalloy LLC v. Cooler Master
Co., Case No. 4:17-cv-05363 (N.D. Cal.). See Paper 2, 1; Paper 4, 2.
Petitioner requested inter partes review of the ’679 patent or related
patents in IPR2019-00144, IPR2019-00145, IPR2019-00147, IPR2019-
00333, IPR2019-00334, IPR2019-00337, and IPR2019-00338. The Board
instituted each of these inter partes reviews, except for IPR2019-00145,
IPR2019-00147, and IPR2019-00333.
C. The ’679 Patent
The ’679 patent, titled “Integrated Circuit Heat Pipe Heat Spreader
with Through Mounting Holes,” is generally directed to “a heat pipe for
cooling an integrated circuit chip” comprising two plates bonded at their
edges to form an internal cavity or vapor chamber. See Ex. 1001, code (54),

3 https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
board/trials/guidance-impact-sas-aia-trial.
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1:13–16, 3:31–34. The disclosed heat pipe “has holes through its body to
facilitate mounting . . . [and] 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
circuit mounting board.” Id. at 1:60–2:1.
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 2:6–14. 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 2:21–24.
The spacers also make it possible to provide holes into and
through the vapor chamber, an apparent inconsistency since a
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.
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Id. at 2:33–43. Figure 1 is reproduced below.
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 3:25–28.
“[H]eat pipe 10 is used to cool an integrated circuit chip (not shown) which
is held against contact plate 18.” Id. at 4:12–13. “Heat pipe 10 is constructed
by forming a boundary structure by sealing together two formed plates,
contact plate 18 and cover plate 20. 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.” Id. at 3:29–33.
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 through holes 12
in heat pipe 10.
Id. at 4:15–20.
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,
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holes 12 passing through the interior of columns 44 have no
affect [sic] on the interior of heat pipe 10.
Id. at 4:22–27.
In addition to this preferred embodiment, the Specification describes
an alternate embodiment. Id. at 2:41–53.
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 2:44–51. The Specification explains that “with the holes located in the
peripheral lips, the heat pipe boundary structure can be any shape.” Id. at
2:51–53.
Figure 2 of the ’679 patent 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
lips 22 and 24 of the heat pipe and hole 50 shown in another sealed
structure, one of the depressions 26.” Id. at 4:39–43. “Of course, the region
of the peripheral edges is also a sealed structure since bonding between lips
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Patent 7,100,679 B2
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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 4:46–50.
D. Challenged Claims
Petitioner challenges claims 1, 2, 4, and 5 of the ’679 patent, of which
only claim 1 is independent. Claim 1 recites:
1. A heat pipe for spreading heat comprising:
a boundary structure including spaced-apart first and second
plates that define an enclosed vapor chamber, and at least one
spacer positioned within said vapor chamber and extending
between and contacting said first and second plates;
a depression formed in said first plate which projects into said
vapor chamber and is bonded to said second plate; and
an opening defined through said depression and said second
plate wherein said opening is isolated from said vapor
chamber.
The remaining claims before us further relate to “a wick” positioned upon a
depression within the vapor chamber (claim 2), a depression having “an
annular outer surface that is bonded to a corresponding annular edge
surface” in the second plate (claim 4), and “a peripheral lip located at an
edge of said boundary structure” (claim 5).
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E. Asserted Grounds of Unpatentability
Petitioner asserts two grounds of unpatentability (Pet. 5):4
Ground Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1 1, 2, 4, 5 103(a)5 Nakamura6
2 1, 2, 4, 5 103(a) Nakamura, Takahashi7
In support of its patentability challenges, Petitioner relies on, inter
alia, the Declaration of Dr. Himanshu Pokharna ( Ex. 1002), the
Supplemental Declaration of Dr. Himanshu Pokharna ( Ex. 1032), the
Declaration of Sylvia D. Hall-Ellis, Ph.D. ( Ex. 1039), and the Declaration
of Takao Miyano ( Ex. 1044).
In opposing these challenges, Patent Owner relies on, inter alia, the
Declaration of Amir Faghri, Ph.D. ( Ex. 2002). Patent Owner also provides
an independent certified translation of Nakamura, a translation of Nakamura
relied on by Petitioner in the related district court litigation, and two
machine translations of Nakamura. Exs. 2012‒2015.

4 Petitioner’s brief reference to Ground 3 appears to be a typographical error.
See Reply 21 n.9.
5 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Because the application from which the ’679 patent issued was filed
before this date, the pre-AIA version of § 103 applies.
6 Japanese Unexamined Utility Model Application S50-55262; Year of
publication: 1975; Inventor: Kazuo Nakamura (as translated). Ex. 1004
(includes the original Japanese-language publication and English-language
translation).
7 Japanese Examined Utility Model Application Publication No. H8-10205;
Published March 27, 1996; Inventors: Tadahito Takahashi, Kaoru
Hasegawa, Muneaki Sokawa (as translated). Ex. 1005.
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II. ANALYSIS
A. Principles of Law
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). This burden of persuasion never
shifts to Patent Owner. See 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); 37 C.F.R. § 42.1(d).
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, if present.8 Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966).

8 The parties have not directed our attention to any objective evidence of
non-obviousness.
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B. Level of Ordinary Skill in the Art
In determining the level of ordinary skill in the art, we consider 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. 1002 ¶¶ 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. 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 ’679 patent as
well as “a large majority of active workers in the field at the time of the
invention.” Id. at 12 (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 ’679 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.” 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. Nonetheless,
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
1. Introduction
“A party may request [in the form of a motion] a district court-type
claim construction approach to be applied if a party certifies that the
involved patent will expire within 18 months from the entry of the Notice of
Filing Date Accorded to Petition.” 37 C.F.R. § 42.100(b) (2018). In this
proceeding, Patent Owner filed such a motion certifying that the ’679 patent
will expire within 18 months from the entry of the Notice of Filing Date
Accorded to Petition, and specifically, no later than May 12, 2019, and
requested a district court-type claim construction. Paper 5. Petitioner did not
oppose Patent Owner’s motion, which we granted. Paper 7, 3.
In applying a district court-type construction, we generally construe a
claim in accordance with the ordinary and customary meaning as understood
by a person of ordinary skill in the art when read in the context of the
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specification and prosecution history. See Phillips v. AWH Corp., 415 F.3d
1303, 1313 (Fed. Cir. 2005) (en banc). Only those claim terms that are in
controversy need to be construed, and only to the extent necessary to resolve
the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad
Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying
Vivid Techs. in the context of an inter partes review).
Petitioner initially proposed claim constructions for “vapor chamber,”
“lip,” and “spacer.” Pet. 13‒28. For the purpose of institution, we
determined that no term required express construction. Inst. Dec. 10.
In its Response, Patent Owner proposes its own definitions for “vapor
chamber,” “lip,” and “spacer. . . extending between and contacting said first
and second plates.” PO Resp. 13‒26. For the purpose of this Decision, we
need only address the meaning of “spacer” as used in the context of
independent claim 1.
2. “spacer . . . extending between and contacting said first and
second plates”
Claim 1, the only independent claim before us, recites “at least one
spacer. . . extending between and contacting said first and second plates.”
Patent Owner construes this term as referring to a “structure separate from
and in contact with the first and second plates and configured to maintain a
space or clearance between the plates.” See PO Resp. 26; Ex. 2002 ¶¶ 113–
118.
Petitioner, however, argues that we should construe “spacer” as used
in claim 1 as an integral or non-integral structure used to maintain a space or
clearance between the plates forming a vapor chamber. Pet. 25–26; Reply
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14–16 (citing Ex. 1032 ¶¶ 35–37). In support, Petitioner points to the
Specification’s teaching that
[t]he 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.
Pet. 26–27 (citing Ex. 1001, 2:6–14); see Reply 16 (citing Ex. 1032 ¶¶ 35–
37). As interpreted by Petitioner’s expert, Dr. Pokharna, the above passage
indicates “that the ‘spacers extending between and contacting the two plates
… prevent the plates from bowing inward, and … can be … embossed
depressions formed in one of the plates ….’” Ex. 1002 ¶ 64 (quoting
Ex. 1001, 2:6–14). Referencing extrinsic evidence, Petitioner further points
to a dictionary definition of spacer as “a device or piece for holding two
members at a given distance from each other” and notes that in the present
context, “the ‘two members’ . . . are the two plates enclosing the vapor
chamber.” Pet. 26 (quoting Ex. 1020; Ex. 1002 ¶ 50).
Petitioner argues that Figures 1 and 2 of the ’679 patent, reproduced
above in section I(C), illustrate that the term “spacer” encompasses
“structure[s] separate from the plates,” i.e., solid columns, as well as
depressions within one (or both) plates. See Reply 14–16. Referencing its
color-coded and annotated version of Figures 1 and 2, Petitioner argues that
they “show both depressions (26-gold) and solid columns (44-red) ‘extend
between and contact’” the plates.” Id. at 15. Petitioner further reasons that
because “the depressions (26-gold) are integral with the first plate, and the
solid columns (44-red) are integral with the second plate, . . . the ‘extending
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between and contacting’ language when read in light of the specification
expressly allows for both integral and non-integral spacers.” Id. at 16 (citing,
e.g., Ex. 1032 ¶¶ 35–36).
As an initial matter, we agree with Petitioner that a “spacer” as used in
the ’679 patent Specification is employed to maintain a space or clearance
between the plates forming a vapor chamber. We further agree with
Petitioner that the Specification uses the term “spacer” to broadly encompass
depressions embossed in and, thus, integral to a plate. However, we do not
agree with Petitioner that the Specification describes such an embossed
depression, even though it may be considered a “spacer,” as “extending
between and contacting” two plates. The following evidence persuades us
that the claim language “at least one spacer. . . extending between and
contacting said first and second plates” does not include embossed
depressions.
First, as Patent Owner points out, in addition to the “spacer . . .
extending between and contacting said first and second plates,” claim 1
separately recites “a depression formed in said first plate,” which projects
into said vapor chamber and is bonded to said second plate. PO Resp. 25–26
(emphasis added) (citing Becton, Dickinson & Co. v. Tyco Healthcare Grp.,
LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements
separately, the clear implication of the claim language is that those elements
are distinct components of the patented invention.”)); see Ex. 2002 ¶ 114.
Whereas claim 1 requires that a spacer contact both the first and second
plates, it makes clear (as do claims 4 and 6) that a depression formed in a
first plate is bonded to only the opposing plate. See Ex. 1001, claim 7
(reciting that a “depression formed in said second plate . . . is in contact with
an inner surface of said first plate”). We, thus, infer from the structure of the
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’679 patent claims alone that the “at least one spacer” and the “depression”
recited in claim 1 are distinct components with distinct properties. In
particular, the claimed “spacer . . . extending between and contacting said
first and second plates” is a distinct element between and in contact with two
plates, whereas the claimed “depression” is a part of one plate that contacts,
or is bonded to, an opposing plate.
We also credit Dr. Faghri’s opinion that one of ordinary skill in the art
would not read column 2, lines 6–14 of the Specification as supporting
Petitioner’s construction. See Ex. 2002 ¶¶ 114–116 (cited at PO Resp. 26).
Referencing Dr. Pokharna’s interpretation of that passage, Dr. Faghri
testifies:
Petitioner’s expert conflates the first sentence of the above-
quoted paragraph with the last sentence, stating that the
challenged patents “acknowledge[] that the ‘spacers extending
between and contacting the two plates . . . prevent the plates from
bowing inward and . . . can be . . . embossed depressions formed
in one of the plates . . . .’” See, e.g., . . . Ex. 1002 (Pokharna
IPR2019-00146 Decl.) ¶¶ 64-65 . . . (ellipses and emphasis in
original).
Id. ¶ 116. Instead, Dr. Faghri reasonably opines, and we agree,
when the last sentence of the above-quoted paragraph states that
“[t]hese spacers can be solid columns, embossed depressions
formed in one of the plates, or a mixture of the two,” it is
referring to the preceding sentence and describing examples of
structure that can be used to “prevent the plates from bowing
inward.” It is not identifying “embossed depressions formed in
one of the plates” as “spacers extending between and contacting
the two plates.” This is at least because a depression would not
be understood to contact the plate in which it is formed;
otherwise, the word “contacting” becomes meaningless.
Id.
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We find persuasive that the Specification indicates that a spacer is
bonded to both the first and second plates, but a depression bonds to, or
contacts, only one opposing plate. The Specification distinguishes between
spacers formed of “solid columns” or “embossed depressions formed in one
of the plates.” Ex. 1001, 2:13–14. According to the Specification, certain
steps in constructing a vapor chamber “[are] 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.” Id. at 2:35-39. Thus, we
agree with Patent Owner’s assertion that only the solid type of spacer
“would have been understood by a [person of ordinary skill in the art] at the
time of the invention as ‘extending between and contacting’ both plates,” as
required by claim 1. PO Resp. 26 (citing Ex. 2002 ¶ 117).
Considering the evidence of record, we agree with Patent Owner that
“the ‘spacer’ limitation of claim 1 cannot be construed to encompass an
‘embossed depression formed in one of the plates’” because “a depression
would not be understood to contact the plate in which it is formed;
otherwise, the word ‘contacting’ becomes meaningless.” Id. (citing Ex. 2002
¶ 116). As an example, although a spacer formed from an embossed
depression in a first plate may contact a second plate, it cannot reasonably
“contact[] said first . . . plate” from which it is formed. We also do not
discern how an embossed depression could “extend[] between . . . said first
and second plates” when it is itself formed from—and contiguous with—one
of the plates that it must extend between. To hold otherwise would render
the word “between” meaningless.
In view of the above, we adopt Patent Owner’s construction of
“spacer . . . extending between and contacting said first and second plates”
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as referring to a “structure separate from and in contact with the first and
second plates and configured to maintain a space or clearance between the
plates.” See PO Resp. 26; Ex. 2002 ¶¶ 113–118.9
With this claim interpretation in mind, we now examine the grounds
asserted in the Petition.
D. Unpatentability over Nakamura Alone (Ground 1) and
Nakamura in Combination with Takahashi (Ground 2)
Petitioner challenges claims 1, 2, 4, and 5 as obvious in view of
Nakamura alone, and in combination with Takahashi. Pet. 5, 28–54. Patent
Owner opposes on the ground that Petitioner has failed to prove Nakamura
is prior art, and on the merits of Petitioner’s obviousness assertions. PO
Resp. 27–56; Sur-reply 8–24.10
We have reviewed the evidence of record including the Petition and
Petitioner’s expert declarations and Patent Owner’s arguments and evidence,
including its experts’ declarations. We address first the threshold issue of
whether Nakamura qualifies as prior art with respect to the ’679 patent.

9 Petitioner addresses arguments regarding the alternative construction
Patent Owner proposed before the district court. See Pet. 26–28 (referencing
Ex. 1019, 5–6); id. at 40–41. Patent Owner does not pursue its earlier
construction here, and it is not germane to our analysis. We also note that
neither party argues or presents evidence that the district court construed the
term ‘spacer’ in the related litigation.
10 Noting in its Reply that “[c]laims 1, 2, and 4 do not recite a ‘lip’
limitation,” Petitioner states that it “no longer relies on Ground 1 relative to
claim 5 for this IPR.” Reply 17–18. But Petitioner does not sufficiently
explain its position 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 otherwise limit the Petition. Accordingly, we
analyze Ground 1 on the full record developed during trial.
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1. Status of Nakamura as Prior Art
The ’679 patent claims priority through a series of continuation
applications first filed on May 12, 1999. Ex. 1001, code (63). 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 S50-55262 [in the Year] (1975)’ that was filed on September 18,
1973 and published in 1975.” Pet. 28; see also id. at iv (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. Prelim. Resp. 13–14. Patent Owner also argued that Nakamura
did not contain indicia, such as INID11 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 6–7, 10‒12. 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

11 “‘INID’ is an acronym for ‘Internationally agreed Numbers for [the]
Identification of (bibliographic) Data.’” Ex. 2001, 1.
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likelihood of prevailing on the issue of whether Nakamura is a printed
publication. See Inst. Dec. 19. 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 13 (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 1970s as applied to
unexamined utility model applications to try to resolve this issue. Id. at 14–
15.
After institution, Patent Owner filed objections to evidence that
included various objections to Nakamura. Paper 16, 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.12 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).

12 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 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. 33–34. 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 appears to
be 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); Tr. 29:4–21. Thus, Patent Owner apparently received a copy of
the condensed version of Nakamura prior to filing its Patent Owner
Response.
Patent Owner, in its Response, argues that Petitioner “fails to present
evidence that Nakamura was a ‘patent or printed publication’ prior to the
’679 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.
27. 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 30. 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. at 30–31.
Patent Owner further asserts that “Nakamura has no INID codes to identify
any relevant bibliographic data.” Id. at 32. 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. In sum, Patent Owner asserts that Petitioner’s
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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. Reply 16–17
(citing Ex. 1044).13 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. 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

13 The Miyano Declaration includes six attachments, labeled Exhibits A
through F, which correspond, respectively, to Exhibits 1045 through 1050.
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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 a
patent owner preliminary 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 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 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. 30 (“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
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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
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. Sur-Reply 10 (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.
Reply 16–17. Petitioner properly refers in its Reply to the Miyano
Declaration as support for these assertions. Id. The Reply also explains how
an interested member of the public would obtain access to the full version of
the publication. Id. Again, Petitioner properly refers in its Reply to
the Miyano Declaration for support. Id. 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.
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Having 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). In 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.
28; Reply 16.
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.
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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
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.”
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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
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
with its Petition. See Ex. 1004, 12.14 The top of the first page is translated as
“Japanese Unexamined Utility Model Application Publication S50–55262
(1975).” Id. at 1; see also Ex. 2012, 1 (same). 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.”
Ex. 1004, 1. 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
’679 patent, i.e., May 12, 1999. PO Resp. 30–31 (“Nakamura includes no
indication that it was abstracted, classified, or indexed in a meaningful

14 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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way.”). Patent Owner also compares Nakamura to Takahashi ( Ex. 1005)
and Morikawa ( Ex. 1023) and notes that, unlike these published Japanese
applications, Nakamura does not include INID codes. Id. at 31. 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 31–32. 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. at 32.
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. 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. 1023) and Takahashi ( Ex. 1005)). We also observe that
although the condensed version of the published application does not appear
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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 sufficient detail of the contents of the application were
provided such that 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. Reply 16–17; 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 ’679 patent.” See Pet. 12, 28; Ex. 1001, code (63). This
evidence includes a copy of the condensed version of Nakamura, which
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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 Japan Patent Office
practice at the time of Nakamura’s publication. Accordingly, Petitioner has
established that Nakamura qualifies as prior art under § 102(b). See Pet. 28.
2. Overview of Nakamura (Exhibit 1004)
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;15 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:

15 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.” Ex. 1004, 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 soldering or the
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like. Then, after air inside the sealed container 7 is extracted, a
refrigerant is enclosed in an interior hollow portion.
Ex. 1004, 5; 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, 5–6; 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, 6; see also Ex. 2012, 7 (similar translation).
3. Overview of Takahashi (Exhibit 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,
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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 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 5:27–38.
Takahashi Figures 5 and 6 are reproduced below.

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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.
4. “at least one spacer extending between and contacting said
first and second plates”
For Grounds 1 and 2, Petitioner relies solely on Nakamura as
disclosing “at least one spacer extending between and contacting said first
and second plates,” as recited in independent claim 1. Pet. 36–41; Reply 21–
22. Patent Owner opposes. PO Resp. 45–47, 53; Sur-reply 14. Because each
of the remaining claims before us, claims 2, 4, and 5, depend from claim 1,
Petitioner’s failure to demonstrate that Nakamura discloses this element, as
discussed in our analysis below, is dispositive.
Petitioner contends that the “spacer” element is disclosed by a set of
opposing concavities 9 formed in the upper and lower plates of Nakamura’s
heat pipe. Pet. 36–38. Petitioner’s argument is predicated on a construction
of “spacer” that “allows for integral or non-integral spacers” and “does not
exclude a situation where a depression extends from one plate and contacts
another.” Reply 22.
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Petitioner illustrates its theory with the following version of
Nakamura’s Figure 4:
Pet. 38. The above figure depicts Nakamura’s Figure 4 along with an
expanded version of a portion of Figure 4 annotated with claim limitations
and colored markings. See id. According to Petitioner, the expanded and
annotated portion of Nakamura’s Figure 4, above, shows two opposing
concavities 9 having “concavity joining surfaces” 9a. Pet. 36. Petitioner
contends that these elements form an “H-shaped structure correspond[ing] to
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the ‘at least one spacer’ limitation under [its] . . . claim construction
proposal[] for ‘spacer.’” Id. at 36–37.16
Referencing its annotations, Petitioner contends that the “H-shaped
structure (indicated in green) . . . is ‘between and contacting said first and
second plates’ (indicated in red and blue, respectively).” Id. at 36.17 Noting
that “Nakamura discloses that ‘the outer wall does not deform’ since the
‘concavity’ created by the ‘pressing’ process and labeled as ‘9’ are
installed,” Petitioner further contends that the illustrated “H-shaped structure
is a ‘structure used to create or maintain space between the plates.’” Pet. 36–
39 (quoting Ex. 1004, 7) (citing Ex. 1002 ¶¶ 63–64). Reflecting the
testimony of Dr. Pokharna, Petitioner further argues that the above-identified
“‘spacer’ is ‘positioned within said vapor chamber’ . . .[b]ecause the ‘spacer
disclosed in Nakamura is surrounded by the ‘vapor chamber,’ i.e., the
‘cavity or space’ inside the ‘sealed container’ disclosed in Nakamura.” Id. at
39–40; Ex. 1002 ¶ 65.
The relevant language of independent claim 1 is not merely “spacer”
but “spacer. . . extending between and contacting said first and second
plates,” which we construe as referring to a “structure separate from and in

16 Petitioner also addresses obviousness under the construction of “spacer”
that Patent Owner proposed before the district court but that we do not adopt
here. See id. at 36–41; section II(C)(2), n.7, above.
17 Petitioner and its expert also reference Nakamura’s Figures 5 and 6, which
show embossed depressions in only one plate. Pet. 39–40; Ex. 1002 ¶ 64.
Nonetheless, we agree with Patent Owner that “Petitioner’s grounds are
based on the concavities 9 described and illustrated with respect to Figure 4
of Nakamura,” and Petitioner’s passing reference to the alternative
embodiment of Nakamura’s Figures 5 and 6 does not substantially affect our
analysis, which focuses on the embodiment of Figure 4. See PO Resp. 46
(citing Inst. Dec. 15–18).
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contact with the first and second plates and configured to maintain a space or
clearance between the plates.” See section II(C)(2), above. Applying this
panel’s construction, we agree with Patent Owner that Petitioner has neither
shown how Nakamura discloses this limitation, nor identified any rationale
or motivation to modify Nakamura to provide a “spacer. . . extending
between and contacting said first and second plates,” as recited in claim 1.
See PO Resp. 46–47. As discussed above, Petitioner seeks to satisfy this
limitation by pointing to the “H-shaped structure” defined by concavities
pressed into opposing plates of the heat pipe illustrated in Nakamura’s
Figure 4. But as Patent Owner points out, “these concavities are integral
with the portions of the container in which they are formed, and a concavity
cannot be said to contact the same plate in which it is formed without
rendering the term ‘contacting’ in claim 1 meaningless.” Id. (citing Ex. 2002
¶¶ 116, 145).
Even were we to apply Petitioner’s proposed construction of “spacer,”
Petitioner arguments would fail because they rely on the same structure to
satisfy both the first plate and the spacer extending between and contacting
the first and second plates. See Ex. 2002 ¶ 145. Although, as noted at page
14 of Patent Owner’s Sur-reply, we identified this defect with respect to
similar language in a related, copending proceeding, Petitioner has not
satisfactory addressed this issue. See IPR2019-000144, Paper 9, 33 (“Cooler
Master has not addressed adequately at this stage how, for example, the
concavity joining surface 9a of the lower plate can serve as both part of the
spacer and as part of the lower plate for purposes of the recitation in claim
11.”).
For the above reasons, Petitioner does not establish that Nakamura
discloses “at least one spacer extending between and contacting said first
IPR2019-00146
Patent 7,100,679 B2
37
and second plates,” as required independent claim 1, as well as claims 2, 4,
and 5, which depend from claim 1. Nor does Petitioner argue that Nakamura,
alone, or in combination with Takahashi renders this element obvious.
Accordingly, Petitioner has failed to carry its burden to establish that claims
1, 2, 4, and 5 would have been obvious under Grounds 1 or 2.
E. Patent Owner’s Motion to Exclude Evidence
Patent Owner moves to exclude Exhibits 1004, 1040, and 1041, as
well as Exhibits 3 and 4 and attachment 3a to Exhibit 1039, pursuant to 37
C.F.R. § 42.64(c). Paper 46; Paper 51. Petitioner opposes the motion. Paper
48.
Patent Owner first requests that we exclude Exhibit 1004 (Nakamura)
as not relevant under FRE 104 on the grounds that Petitioner failed “to
introduce sufficient proof that Exhibit 1004 was publically accessible such
that it qualifies as a prior art printed publication under Unites States law.” Id.
at 3. As set forth in section II(D)(1), above, the evidence of record leads us
to an entirely different conclusion regarding Nakamura’s prior art status.
Because Petitioner persuades us that Nakamura qualifies as a prior art
printed publication as of the earliest possible effective filing date of the
challenged claims of ’679 patent, we deny Patent Owner’s request on its
merits.
Moreover, 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.
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Patent 7,100,679 B2
38
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).
We deny Patent Owner’s remaining requests for the following
reasons.
Exhibit 1040 is a prior art printed publication titled “Countability and
Number in Japanese-to-English Machine Translation” by Francis Bond,
Kentaro Ogura, and Satoru Ikehara, dated August 1994, and published in the
Proceedings of the 15th International Conference on Computational
Linguistics. According to Petitioner’s expert Dr. Hall-Ellis a book copy of
Exhibit 1040 is attached to her declaration as Exhibit 3, and a digital version
of the same conference paper is labeled Attachment 3a. Ex. 1039 ¶¶ 48–49;
see Paper 46, 6. Exhibit 1041 is a prior art printed publication by Murata,
Masaki and Makoto Nagao, titled, “Determination of referential property
and number of nouns in Japanese sentences for machine translation into
English,” and published in Computation and Language on or about May, 19,
1994. According to Dr. Hall-Ellis, a copy of Exhibit 1041 is attached to her
declaration as Exhibit 4. Ex. 1039 ¶ 50; see Paper 46, 6.
In responding to Dr. Faghri’s opinion that the Japanese translations of
Morikawa refer to a single “plate,” Petitioner’s technical expert,
IPR2019-00146
Patent 7,100,679 B2
39
Dr. Pokharna, relies on Exhibits 1040 and 1041 as evidence “that it is well-
known that the Japanese do not differentiate plural nouns from singular, and
it is ‘very difficult’ for human translators to convert Japanese nouns into an
appropriate plural or singular version in English.” Ex. 1032 ¶ 55.18 Patent
Owner now seeks to exclude all versions of Exhibits 1040 and 1041 under
Federal Rules of Evidence 701 and 702 as “contain[ing] opinions based on
scientific, technical, or other specialized knowledge within the scope of FRE
702, for which no proper expert testimony has been provided,” and under
Federal Rule of Evidence 403 “because any probative value is substantially
outweighed by the danger of unfair prejudice.” Paper 46, 2.
FRE 701 and 702 expressly apply to the testimony of a “witness.”
Patent Owner provides no authority for extending these rules to cover
information contained in printed publications. For at least this reason, we do
not find Patent Owner’s argument persuasive.
With respect to FRE 403, we agree with and adopt Petitioner’s
argument that the risks of unfair prejudice are minimal because “[t]he Board
sits as a non-jury tribunal with administrative expertise, and as such is well-
positioned to determine and assign appropriate weight to evidence.” See
Paper 48, 5–6 (citations omitted).
Accordingly, we deny this portion of Patent Owner’s motion on the
merits. In the alternative, because we do not address the substance of any
version of Exhibits 1040 or 1041 in this Decision, we further dismiss Patent
Owner’s request as moot with respect to Exhibits 1040 and 1041.

18 Petitioner, in some places, refers to Dr. Pokharna by his first name. See
Paper 48, 5.
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Patent 7,100,679 B2
40
III. CONCLUSION
Petitioner has not shown by a preponderance of the evidence that the
challenged claims of the ’679 patent are unpatentable, as summarized in the
following table:

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 2, 4, and 5 of U.S. Patent No. 7,100,679 B2
have not been proven to be unpatentable;
FURTHER ORDERED that Patent Owner’s motion to exclude
Exhibits 1004, 1040, 1041, and certain sections of Exhibit 1039 is denied,
and in the alternative, dismissed-in-part as moot with respect to Exhibits
1040 and 1041 only; 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.

Claims

35
U.S.C.
§
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 2, 4, 5 103(a) Nakamura 1, 2, 4, 5
1, 2, 4, 5 103(a) Nakamura,
Takahashi
1, 2, 4, 5
Overall
Outcome 1, 2, 4, 5
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Patent 7,100,679 B2
41
FOR PETITIONER:
Erik B. Milch
Andrew C. Mace
COOLEY LLP
emilch@cooley.com
amace@cooley.com

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