CoolIT Systems, Inc.

Patent Trials and Appeals Board

Aug 21, 2020

IPR2019-00705 (P.T.A.B. Aug. 21, 2020)

Trials@uspto.gov Paper 43
571-272-7822 Date: August 21, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

ASETEK DANMARK A/S,
Petitioner,

v.

COOLIT SYSTEMS, INC.,
Patent Owner.
____________

IPR2019-00705
Patent 9,496,200 B2
____________

Before HUBERT C. LORIN, FRANCES L. IPPOLITO, and
SCOTT C. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

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

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I. INTRODUCTION
Asetek Danmark A/S, Asetek USA, Inc., Asetek A/S, and Asetek
Holdings, Inc., (collectively “Petitioner”) filed a Petition (Paper 2, “Pet.”)
requesting inter partes review of claims 1–21 of U.S. Patent No. 9,496,200
B2 (Ex. 1001, “’200 patent”). Patent Owner, CoolIT Systems, Inc., filed a
Preliminary Response. Paper 6. We authorized (Paper 11), and Petitioner
filed, a Reply to Patent Owner’s Preliminary Response. Paper 12. Patent
Owner also filed a Sur-Reply. Paper 15. We subsequently instituted an
inter partes review as to all asserted grounds and all challenged claims.
Paper 19 (“Decision on Institution” or “DI”).
After institution, Patent Owner filed a Response to the Petition (Paper
24, “Response” or “PO Resp.”), Petitioner filed a Reply (Paper 31, “Reply”),
and Patent Owner filed a Sur-Reply (Paper 38, “Sur-Reply”). A video oral
hearing was held on May 22, 2020, and a transcript of the hearing is in the
record. Paper 41 (“Hearing Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
follow, we determine that Petitioner has not shown by a preponderance of
the evidence that any challenged claim is unpatentable.
A. Related Proceedings
Petitioner indicates that “Petitioner is not aware of any related
matters.” Pet. 65. Patent Owner identifies as a related matter, pending U.S.
Patent Application No. 15/351,362, which claims priority to the application
that matured into the ’200 patent. Paper 5.
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B. The ’200 Patent
The ’200 patent is directed to modular heat-transfer systems, such as
cooling systems configured to cool one or more arrays of independently
operable servers. Ex. 1001, 2:55–60. Embodiments of the invention allow
for adequately cooling of a plurality of rack-mounted servers in a data center
without requiring the data center to provide chilled water at a temperature
below an ambient temperature, eliminating the need for costly and power
consuming chillers. Id. at 3:4–8.
In general, the ’200 patent describes arrays of heat-transfer modules
configured to be combined with a manifold module and/or an environmental
coupler (e.g., a liquid-liquid heat exchange module) to facilitate heat transfer
between an environment and one or more operable elements (e.g., server
components). Id. at 2:65 – 3:3. Each heat-transfer element in the array
corresponds to an operable element, and is configured to transfer heat
between a working fluid and the operable element. Id. at 3:13–21. A
manifold module can have a distribution manifold and a collection manifold.
Id. at 3:21–22. A decoupleable inlet coupler can correspond to each
respective inlet of each respective heat-transfer element in the array. Id. at
3:22–24. Each respective inlet coupler can be configured to fluidicly couple
the distribution manifold to the inlet of the respective heat-transfer element.
Id. at 3:24–27. A decoupleable outlet coupler can correspond to each
respective outlet of each respective heat-transfer element in the array. Id. at
3:27–29. Each respective outlet coupler can be configured to fluidicly
couple the outlet of the respective heat-transfer element to the collection
manifold. Id. at 3:29–31. An environmental coupler can be configured to
receive the working fluid from the collection manifold, to transfer heat to an
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environmental fluid from the working fluid or to transfer heat from an
environmental fluid to the working fluid, and to discharge the working fluid
to the distribution manifold. Id. at 3:32–37.
Figure 2 of the ’200 patent, reproduced below, is an isometric view of
a portion of an embodiment of a modular heat-transfer system.

Figure 2 depicts a chassis or rack 101 that contains a plurality of operable
servers, a manifold 200, and heat-transfer element 110a having a “modular
configuration” including a pair of component heat-transfer modules 120a,
120b configured to cool a corresponding pair of microprocessors or other
server components (not shown). Id. at 7:58–8:20. An inlet to the heat-
transfer element 110a is fluidicly coupled to a distribution manifold 210 and
an outlet of the heat-transfer element 110a is fluidicly coupled to a collection
manifold 220. Id. at 7:64–68.
C. Challenged Claims and Asserted Grounds
Petitioner asserts that claims 1–21 of the ’200 patent are unpatentable
pursuant to 35 U.S.C. § 103 based on two different grounds.
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Challenged claims 1 and 17 are independent. Claim 1, reproduced
below, is illustrative of the claimed subject matter.
1. A modular heat-transfer system comprising:
an array having a plurality of heat-transfer elements, each
defining an inlet and an outlet and having at least one
component heat-exchange module in thermal contact
with a corresponding operable element to provide
conduction heat-transfer between the at least one
component heat-exchange module and the corresponding
operable element, wherein the at least one component
heat-exchange module is configured to transfer heat to a
working fluid from the operable element, or to transfer
heat from the working fluid to the operable element,
wherein the at least one component heat exchange
module comprises a pump positioned in the at least one
component heat-exchange module and being configured
to urge the working fluid through the respective heat-
transfer element;
a manifold module having a distribution manifold and a
collection manifold,
a decoupleable inlet coupler corresponding to each
respective inlet of each respective heat-transfer element
in the array, wherein the respective inlet coupler is
configured to fluidicly couple the distribution manifold to
the inlet of the respective heat-transfer element;
a decoupleable outlet coupler corresponding to each
respective outlet of each respective heat-transfer element
in the array, wherein the respective outlet coupler is
configured to fluidicly couple the outlet of the respective
heat-transfer element to the collection manifold; and
an environmental coupler configured to receive the working
fluid from the collection manifold, to transfer heat to an
environmental fluid from the working fluid or to transfer
heat from an environmental fluid to the working fluid,
and to discharge the working fluid to the distribution
manifold, wherein no pumps other than the pumps in the
component heat-exchange modules circulate the working
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fluid among the plurality of heat transfer elements, the
manifold module, and the environmental coupler.
Ex. 1001, 25:37–26:8.
Petitioner asserts the following grounds of unpatentability, each based
on 35 U.S.C. § 103(a):
Ground Reference(s) Statutory
Basis1
Challenged
Claim(s)
1 Ota2 and Cheon3 § 103 1–16
2 Ota, Cheon, and Eriksen4 § 103 17–21
Pet. 9, 52.
Petitioner also relies on the Declaration of Dr. Donald E. Tilton (Ex.
1003, “Tilton Declaration”) and the Declaration of Steven B. Branton (Ex.
1007, “Branton Declaration”). Pet. 9–65. Patent Owner relies on the
Declaration of Dr. Himanshu Pokharna (Ex. 2007, “Pokharna Declaration”).
PO Resp. 4.

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the effective
filing date of the ’200 patent is before March 16, 2013 (the effective date of
the relevant amendment), the pre-AIA version of § 103 applies. See Ex.
1001, codes (22), (60), (63).
2 U.S. Patent No. 7,318,322 B2, issued Jan. 15, 2008 (Ex. 1004).
3 U.S. Patent Publication No. 2004/0008483 Al, published Jan. 15, 2004 (Ex.
1006).
4 U.S. Patent Publication No. US 2009/0218072 A1, published Sept. 3, 2009
(Ex. 1005).
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II. ANALYSIS
A. Obviousness under 35 U.S.C. § 103
1. Principles of Law
An invention is not patentable under 35 U.S.C. § 103 “if the
differences between the subject matter sought to be patented 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.” 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) where in
evidence, so-called secondary considerations, including commercial success,
long-felt but unsolved needs, and failure of others. Graham v. John Deere
Co., 383 U.S. 1, 17−18 (1966).
When evaluating a combination of teachings, we also “determine
whether there was an apparent reason to combine the known elements in the
fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (citing In re Kahn, 441, F.3d 977, 988 (Fed. Cir.
2006)).
2. Level of Skill in the Art
Petitioner asserts that a person of ordinary skill in the art to which the
’200 patent pertains would have had “(i) completed college level course
work in thermodynamics, fluid mechanics, and heat transfer, and (ii) attained
two or more years of experience in designing liquid cooling systems for
computers, servers, or other electronic devices.” Pet. 6–7 (citing Ex. 1003,
¶ 14). Patent Owner asserts that such a person “would have at least two
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years of graduate-level study in fluid mechanics and heat transfer, or a
related field (such as mechanical or aerospace engineering), or a bachelor’s
degree in mechanical engineering (or equivalent degree) and three or more
years of experience working with or researching liquid-cooling techniques
for electronics.” PO Resp. 5.
We adopt and apply Petitioner’s proposed formulation regarding the
level of ordinary skill in the art, which we find is consistent with the level of
skill reflected by the cited prior art references. See Okajima v. Bourdeau,
261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our ultimate
determinations would have been the same had we applied Patent Owner’s
proposed formulation. Indeed, both parties agree that none of the issues
before the Board turns on which formulation we adopt. See Hearing Tr.
13:5–14, 18:4–11.
3. Claim Construction
For inter partes reviews filed on or after November 13, 2018, we
apply the same claim construction standard used by Article III federal courts
set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
banc), and its progeny. See Changes to the Claim Construction Standard for
Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
Board, 83 Fed. Reg. 51340, 51,340, 51,358 (Oct. 11, 2018) (amending
37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37
C.F.R. § 42.100(b) (2019)). Because the instant Petition was filed on March
4, 2019, the Phillips standard applies here. Accordingly, we construe each
challenged claim of the ’200 patent to generally have “the ordinary and
customary meaning of such claim as understood by one of ordinary skill in
the art and the prosecution history pertaining to the patent.” 37 C.F.R. §
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42.100(b). Any special definition for a claim term must be set forth in the
specification with reasonable clarity, deliberateness, and precision. See In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
definition, limitations are not to be read from the specification into the
claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Only terms that are in controversy need to be construed, and then 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); Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(applying Vivid Techs. in the context of an inter partes review).
Petitioner asks us to construe the claim terms “decouplable inlet
coupler” and “decouplable outlet coupler.” Pet. 7–9. Patent Owner requests
that we construe the claim term “a pump positioned in the . . . component
heat-exchange module.” PO Resp. 18–24.
We determine that it is not necessary to explicitly construe any claim
term in order to resolve the issues presently before us. Accordingly, we
decline to provide explicit constructions of any claim terms. See Vivid
Techs., 200 F.3d at 803.
4. Secondary Considerations
Patent Owner’s Response does not direct us to secondary
considerations that allegedly bear on the patentability of the challenged
claims. Accordingly, any such arguments are waived. See Scheduling
Order, Paper 20, 7.
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5. Scope and Content of Prior Art; Differences between
Claimed Subject Matter and Prior Art
a. Ground 1, Claim 1
Ota discloses “a cooling method for a rack-mount server system” and,
more particularly, a “liquid cooling system in which a coolant is circulated.”
Ex. 1004, 1:6–10. Ota discloses that coolant “is supplied to each of the
devices of the server modules through the coolant circulation path,” and the
coolant is then drained from each of the devices and transferred to “a cooling
unit mounted in the rack cabinet.” Id. at 2:55–61. Ota discloses that “the
pipe serving as the coolant circulation path to circulate the coolant through
the rack cabinet is arranged vertically along the post of the rack cabinet” and
“the pump functioning as coolant circulation means and the cooling section
for cooling the coolant by using an heat exchanger are provided as the
cooling unit on the upper side or the lower side of the rack cabinet.” Id. at
2:65–3:1.
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Below is a marked-up version of Ota’s Figure 4 that is reproduced
from the Petition, which illustrates some of Petitioner’s contentions
concerning Ota. See Pet. 24.

In this marked-up version of Figure 4, which depicts a schematic block
diagram of an embodiment of Ota’ system that includes a bypass route (Ex.
1004, 4:24–26), Petitioner identifies with red highlighting, black arrows, and
labels, the structures that allegedly correspond to the “array having a
plurality of heat-transfer elements” limitation of claim 1 (i.e., Ota’s server
modules 62). See Pet. 23–24. Petitioner also identifies with black arrows
and labels the structures that allegedly correspond to the “inlet” and “outlet”
limitations of claim 1. Id.
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Below is a marked-up version of Ota’s Figure 5 that is reproduced
from the Petition, which illustrates some of Petitioner’s other contentions
concerning Ota. See Pet. 25.

In this marked-up version of Figure 5, which depicts an embodiment of
Ota’s system in which server modules are mounted in a rack cabinet (Ex.
1004, 4:27–29), Petitioner identifies with blue boxes the components that
allegedly correspond to the “component heat-exchange module[s]” of claim
1. Pet. 25–26. In particular, Petitioner alleges that “[i]nternal pump 23 and
a heat receiver 21 together form a ‘component heat-exchange module”’ of
the type recited in claim 1. Id. at 26 (citing Ex. 1003 ¶ 37). Petitioner
further contends that “[i]nternal pump 23” is “a pump positioned in the at
least one component heat-exchange module,” as recited in claim 1. Id.
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Petitioner further asserts that Ota’s main circulation pipe 34, which
includes upstream pipe 31 and downstream pipe 31, corresponds to the
“manifold module” of claim 1, and that Ota’s supply tubes 26 and drain
tubes 27 correspond, respectively, to the recited “decouplable inlet coupler”
and “decouplable outlet coupler.” Pet. 27–29. Petitioner contends that Ota’s
rack-level cooling unit 52 includes tank 42, an “environmental coupler” of
the type recited in claim 1. Pet. 29–31.
Claim 1 additionally requires a system wherein “no pumps other than
the pumps in the component heat-exchange modules circulate the working
fluid among the plurality of heat-transfer elements, the manifold module,
and the environmental coupler” (hereinafter, the “no other pumps
limitation”). As Petitioner acknowledges, Ota’s system does not rely solely
on “internal pumps 23” that are allegedly located within Ota’s component
heat-exchange modules. Pet. 31. Ota’s system additionally includes main
circulation pump 41 (which Petitioner refers to as the “central pump”) that is
located outside of the component heat-exchange modules. See Id.; Ex. 1004,
7:20–31. Main circulation pump 41 circulates coolant through Ota’s main
circulation pipe 34 (the Petitioner-identified “manifold module”), server
modules 62 (the Petitioner-identified “plurality of heat-transfer elements”),
and heat exchanger 50 (part of cooling unit 52, the Petitioner-identified
“environmental coupler”). Ex. 1004, 7:20–31.
Petitioner concedes that Ota does not teach an embodiment in which
“no pumps other than the pumps in the component heat-exchange modules
circulate the working fluid,” but asserts that such an embodiment would
have been obvious in view of Cheon’s “suggestion of a decentralized
pumping system.” See Pet. 31; Pet. 15 (citing Ex. 1006 ¶ 60). Petitioner
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contends that one of ordinary skill would have realized that such a
modification advantageously would have reduced the cost of Ota’s system,
and allowed Ota’s cooling unit 52 to be reduced in size leaving space for
additional server rack modules. See Pet. 31 (citing Ex. 1003 ¶¶ 47–48); Pet.
16–22 (citing Ex. 1003 ¶¶ 18, 24–31; Ex. 1007 ¶¶ 10–12).
Cheon discloses “a water cooling type cooling system for an
electronic device having a plurality of coolant circulation units and coolant
supply units separable from each other and configured such that the plurality
of coolant circulation units and coolant supply units are interconnected in
series or parallel.” Ex. 1006, ¶ 1.
Figure 9 of Cheon is reproduced below.

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Figure 9 depicts an embodiment in which coolant supply unit 20 is used to
cool a rack-type computer docking station. See Ex. 1006, ¶ 56. This
embodiment contains two types of pumps: the “circulation pumps of the
coolant supply unit 20” (i.e., “circulation pumps 23”) (not shown in the
figure), and “intermediate circulation pumps 33 installed in the respective
racks of the docking station 32 [that] preferably adjust an intermediate
pressure of the coolant.” See Id. ¶¶ 43 (referring to Fig. 1), 60. Paragraph
60 of Cheon discloses an additional advantage of using intermediate
circulation pumps 33 in addition to the circulation pumps 23 of coolant
supply unit 20: “[E]ven if the pumps of the coolant supply unit 20 are out of
order, it is possible to prevent all the electronic devices 1 from being
interrupted.” Id.
Petitioner contends that Paragraph 60 of Cheon “suggests a fully
decentralized pumping system where the device-level intermediate pumps
33 are the only pumps that circulate coolant through the entire cooling
system.” Pet. 15 (citing Ex. 1006 ¶ 60; Ex. 1003 ¶ 23; Ex. 1002, 203).
“Specifically, Cheon discusses that even if circulation pumps 23 are ‘out of
order,’ the cooling system will not be interrupted because intermediate
pumps 33 can continue to pump coolant through the system.” Pet. 15–16
(citing Ex. 1006 ¶ 60; Ex. 1003 ¶ 23). Petitioner further contends that one of
ordinary skill in the art would have been led by this disclosure to modify
Ota’s system “to eliminate central pump 41 (and retain internal pumps 23).”
Pet. 17 (citing Ex. 1003 ¶ 26). According to Petitioner, such a modification
advantageously would have reduced the cost of Ota’s system, and allowed
Ota’s cooling unit 52 to be reduced in size leaving space for additional
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server rack modules. See Pet. 31 (citing Ex. 1003 ¶¶ 47–48); Pet. 16–22
(citing Ex. 1003 ¶¶ 18, 24–31; Ex. 1007 ¶¶ 10–12).
Patent Owner argues in its Response that “Ota’s system requires a
central pump to function.” PO Resp. 40–41 (citing Ex. 2007 ¶¶ 69–76.) The
Response illustrates this second contention with a marked-up version of
Ota’s Figure 4, which is reproduced below.

Resp. 51. This marked up version of Figure 4, depicting an embodiment of
Ota’s system that includes a bypass route (Ex. 1004, 4:24–26), illustrates
with red arrows how Patent Owner contends coolant would flow in Ota’s
system if main circulation pump 41 were removed. Id. 50–51. Specifically,
Patent Owner contends that the flow path through upstream pipe 31 and
coolant tank 42 (highlighted in green) would have a higher flow resistance
than the bypass path (highlighted with the left-facing red arrow) at the
bottom of the figure. Id. (citing Ex. 1007 ¶ 73). Accordingly, if Ota’s main
circulation pump 41 were removed, most coolant fluid would flow
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backwards through the bypass path and little coolant fluid would pass
through cooling section 43, resulting in degraded fluid performance. Id. at
50–52 (citing Ex. 1007 ¶¶ 72–74).
Patent Owner also attacks the rationales offered by Petitioner. Patent
Owner argues that the last sentence of Cheon’s Paragraph 60 “does not teach
or suggest removing the central pump entirely.” PO Resp. 41 (citing Ex.
2007 ¶¶ 98–104). Patent Owner argues that Petitioner relies on
impermissible hindsight when it contends that one of skill in the art would
have realized that removing Ota’s main circulation pump 41 advantageously
would have reduced the cost of Ota’s system, and reduced the size of Ota’s
cooling unit so as to create space for additional servers. PO Resp. 43–44.
In its Reply, Petitioner does not directly dispute Patent Owner’s
assertion that, if Ota’s main circulation pump 41 were removed and further
modifications were not made, most of the cooling fluid would flow back
through Ota’s bypass path, rather than through cooling section 43. See
Reply 16. Instead, Petitioner argues that one of ordinary skill in the art
would have known to make an additional modification: disconnecting Ota’s
bypass path. Id. Petitioner illustrates this additional modification with a
marked-up version of Ota’s Figure 4, reproduced below.
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Reply 17. In the above version of Figure 4, depicting an embodiment of
Ota’s system that includes a bypass route (Ex. 1004, 4:24–26), figure, a red
X mark over main circulation pump 41 indicates that this component has
been eliminated. See id. Five additional red X marks along the bottom of
the figure indicate that the bypass path also has been disconnected. See id.
Thus, it is clear from the Reply that Petitioner is now asserting that one of
ordinary skill in the art would have been motivated to make two separate
modifications to Ota’s system.
Patent Owner argues in its Sur-Reply that neither the Petition nor Dr.
Tilton’s supporting declaration contends that one of ordinary skill in the art
would have known to remove Ota’s bypass path in addition to removing
Ota’s main circulation pump. Sur-Reply 2. Patent Owner contends that
raising this new argument in the Reply is improper. Id.
Having considered all of the evidence and arguments of the parties,
we agree that modifying Ota in the manner described in the Petition—i.e.,
removing main circulation pump 41 but not making any other changes—
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would have rendered Ota’s system inoperable for its intended purpose. On
this record, we find that if Ota’s main circulation pump 41 were eliminated
or disconnected in the manner described in the Petition (see Pet. 17, 20, 31–
32), leaving “only server-level pumps 23 to circulate the coolant” (id. at 20),
most of Ota’s coolant would flow backwards through Ota’s bypass pathway
(where fluid resistance would be relatively low) and relatively little coolant
fluid would pass through cooling section 43 (where fluid resistance would be
relatively high), degrading cooling performance and rendering the system
unable to function for its intended purpose. See PO Resp. at 50–52 (citing
Ex. 2007 ¶¶ 72–74); see also Ex. 2007 ¶¶ 81–90 (also explaining why
eliminating Ota’s main circulation pump 41 would render Ota’s system
inoperable). We credit Dr. Pokharna’s testimony in this regard because it is
well-reasoned and consistent with Ota’s disclosure. See Ex. 2007 ¶¶ 72–74;
81–90. For example, Ota discloses that the bypass path has a relatively large
diameter, resulting in “low flow resistance.” See Ex. 1004, 6:3–5, 6:60–61.
We also agree that cooling section 43 would necessarily contain conduits
with a relatively small diameter, resulting in increased flow resistance. See
Ex. 2007 ¶ 73. Accordingly, Petitioner has failed to demonstrate by a
preponderance of the evidence that claim 1 is unpatentable over Ota and
Cheon based on the contentions set forth in the Petition.
As discussed above, Petitioner does not directly dispute Dr.
Pokharna’s testimony that Ota’s system would fail to perform for its
intended purpose if modified in the manner set forth in the Petition by
removing main circulation pump 41 but leaving the bypass path in place.
See Reply 16. Petitioner instead argues in its Reply that one or of ordinary
skill also would have disconnected the bypass path. See id. But if
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Petitioner’s unpatentability grounds depended on demonstrating that a
skilled artisan would have had reason to remove or disconnect both Ota’s
main circulation pump 41 and Ota’s bypass path, Petitioner was required to
state both contentions in the Petition.
“Unlike district court litigation—where parties have greater freedom
to revise and develop their arguments over time and in response to newly
discovered material—the expedited nature of IPRs bring with it an
obligation for petitioners to make their case in their petition to institute.”
Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369
(Fed. Cir. 2016). 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). Thus, although “the introduction of new evidence in the course
of the trial is to be expected in inter partes review trial proceedings,”
Genzyme Therapeutic Prods. LP v. Biomarin Pharm. Inc., 825 F.3d 1360,
1366 (Fed. Cir. 2016), the shifting of arguments is not, Wasica Fin. GmbH
v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017).
For the above reasons, removing or disconnecting Ota’s main
circulation pump 41 would have resulted in a system unsuitable for its
intended purpose unless Ota’s bypass path also were removed or
disconnected. Thus, to make out a prima facie case of unpatentability,
Petitioner was required to identify both of these modifications “in writing
and with particularity” in the Petition. See 35 U.S.C. § 312(a)(3); see also
PTAB Consolidated Trial Practice Guide 73 (Nov. 2019), available at
https://www.uspto.gov/TrialPracticeGuideConsolidated (“Petitioner may not
submit new evidence or argument in reply that it could have presented
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earlier, e.g., to make out a prima facie case of unpatentability.”) Having
failed to do so, Petitioner cannot cure this deficiency by proposing the
second modification in its Reply. Accordingly, Petitioner has failed to
demonstrate by a preponderance of the evidence that claim 1 is unpatentable
over Ota and Cheon based in whole or in part on its argument that one of
ordinary skill in the art would have had reason to remove or disconnect
Ota’s bypass path.
Even assuming arguendo that Petitioner were permitted to propose an
additional modification to Ota in its Reply, this would not change the
ultimate result. On this record, and weighing all of the evidence and
argument submitted by both parties (including the new theory and arguments
submitted in the Reply), we are not persuaded by a preponderance of the
evidence that one of ordinary skill in the art would have had sufficient
reason to modify Ota’s system by removing or disconnecting both main
circulation pump 41 and Ota’s bypass path.
As discussed above, Petitioner’s primary rationale for modifying Ota
comes from Paragraph 60 of Cheon. In particular, Petitioner contends that
the last sentence of Paragraph 60 “suggests a fully decentralized pumping
system where the device-level intermediate pumps 33 are the only pumps
that circulate coolant,” and that one of ordinary skill in the art “would have
been led by this disclosure to modify Ota’s system to eliminate central pump
41 (and retain internal pumps 23).” Pet. 15, 17 (citing Ex. 1006 ¶ 60; Ex.
1003 ¶¶ 23, 26, Ex. 1002, 203); see also Ex. 2016, 62:1–63:1 (Petitioner’s
declarant testifying that he relied on the final sentence of Paragraph 60 of
Cheon to supply a rationale for obviousness); Id. at 81:14–20 (Petitioner’s
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declarant admitting that Ota does not describe an embodiment without a
central pump).
Paragraph 60 of Cheon is reproduced below in its entirety, with
underscoring used to identify the text that Petitioner contends suggests a
“fully decentralized pumping system”:
[0060] Here, the coolant supplied to all electronic devices can
be made to flow simultaneously by increasing the capacity of
circulation pumps of the coolant supply unit 20. However, the
intermediate circulation pumps 33 installed in the respective
racks of the docking station 32 preferably adjust an
intermediate pressure of the coolant. Thus, even if a plurality of
coolant circulation units 10 are provided inside the plurality of
electronic devices 1, coolant circulation in each rack can be
smoothly performed without applying any tension to the
circulation pumps of the coolant supply unit 20. Also, even if
the pumps of the coolant supply unit 20 are out of order, it is
possible to prevent all the electronic devices 1 from being
interrupted.
Ex. 1006, ¶ 60 (emphasis added). We agree with Patent Owner that this
disclosure does not teach or suggest removing Cheon’s main circulation
pump in order to obtain what Petitioner calls a “fully decentralized pumping
system.”5 See PO Resp. 42 (citing Ex. 2007 ¶¶ 98–104). Paragraph 60
indicates that it might be possible to operate Cheon’s system without the
main circulation pump, but nothing in Paragraph 60 suggests that it would be
advisable or advantageous to do so. To the contrary, Paragraph 60, when
read in its entirety, suggests that it would be advantageous to employ both
intermediate circulation pumps and one or more main circulation pumps
(i.e., the pumps located in coolant supply unit 20). In other words,

5 To be consistent with the Petition, we use the term “fully decentralized
pumping system” to refer to a system that does not employ a central pump.
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Paragraph 60 suggests that it would be disadvantageous to eliminate
Cheon’s main circulation pump. See Ex. 2007 ¶¶ 94–98.
In addition, as Patent Owner points out, Ota also suggests that main
circulation pump 41 is necessary for Ota’s system to operate as intended.
See PO Resp. 48–49; Ex. 2007 ¶ 70. In particular, Ota explicitly states that
in the embodiment depicted in Figure 4 (the embodiment Petitioner proposes
to modify), “it is necessary that the flow quantity Q through the main
circulation pipe 34 is larger than the sum of the flow quantities q through
each of the server modules 62.” Ex. 1004, 7:44–47; see also id. at 9:47–49
(“[I]t is necessary that the flow quantity through the main circulation pipe 34
is larger than the sum of the flow quantities through each of the server
modules 62”), id. at 12:44–48 (“[T]he flow quantity of the coolant passing
through each of the devices can be kept uniform as long as the flow quantity
through the main circulation pipe 34 is larger than the sum of the flow
quantities through the mounted devices.”) Flow quantity Q is the flow that
exits main circulation pump 41, and flow quantities q are the quantities that
travel through each internal pump 23. See Ex. 1004, Fig. 4. Accordingly,
these portions of Ota teach that it is necessary to employ a main circulation
pump 41 having a capacity greater than the sum of the capacities of internal
pumps 23. See Ex. 1004, 7:44–47, 9:47–49, 12:44–48, Fig. 4; Ex. 2007 ¶
70. We find that these portions of Ota would have suggested to one of
ordinary skill in the art that it would have been disadvantageous to remove
or disconnect Ota’s main circulation pump 41. See Ex. 2007 ¶¶ 70, 77–80.
The additional arguments that Petitioner offers do not persuade us that
one of ordinary skill in the art would have found it obvious to modify Ota to
eliminate both main circulation pump 41 and the bypass path.
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Petitioner begins its motivation to combine discussion with an
assertion that it was well known as of July 2011 (the filing date of the
application that issued as the ’705 Patent) that “decentralized pumping”
systems could operate without centralized pumps. See Pet. 16–17 (citing Ex.
1003 ¶¶ 18, 24; Ex. 2007 ¶¶ 10–12; Ex. 1002, 203). This assertion is the
premise for the specific rationales set forth on pages 17–22 of the Petition
and reiterated at pages 14–16 of the Reply. But Petitioner offers no
persuasive evidence that fully decentralized pumping systems were known
in the art as of this date.
As discussed above, both Ota and Cheon employ central pumps.
Thus, neither reference discloses a fully decentralized pumping system of
the type required by claim 1. The cited paragraphs of the Tilton Declaration
also are conclusory in nature, and do not cite any evidence that fully
decentralized pumping systems were known in the art. See Ex. 1003 ¶¶ 18,
24 (failing to cite any prior art patents or printed publications that disclose or
discuss fully decentralized pumping systems). The cited portions of the
Branton Declaration also are conclusory in nature. It also appears that Mr.
Branton is an interested witness. See Ex. 1007 ¶¶ 1, 4 (stating that Mr.
Branton has been employed with Petitioner for ten years), 10–12 (failing to
cite any prior art patents or printed publications that disclose or discuss fully
decentralized pumping systems). The deposition testimony from Mr.
Branton that Petitioner cites in its Reply (see citing Ex. 2017, 82:3–82:7,
cited at Reply 22) merely indicates that a particular product was in “early
development” during 2009 and 2010. Even assuming arguendo that this
under-development product did employ a fully decentralized pumping
system, this deposition testimony would not demonstrate that an ordinarily
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skilled artisan would have had knowledge of this product as of July 2011.
Accordingly, we accord the testimony of Dr. Tilton and Mr. Branton little
weight.
In contrast, Patent Owner’s declarant, Dr. Pokharna, has cited ample
evidence that supports his opinions that fully decentralized pumping systems
were not well known in the art as of July 2011. See Ex. 2007 ¶¶ 20–29
(citing Ex. 2010 (a May, 2008 paper), Ex. 2009 (a July 2011 presentation),
Ex. 2014 (a 2006 paper), Ex. 2019 (a March, 2011 paper)). On this record,
we find Dr. Pokharna’s testimony to be more persuasive than the testimony
of Dr. Branton and Mr. Tilton.
Petitioner’s argument regarding the prosecution history of the ’705
Patent (see Pet. 16–17, citing Ex. 1002, 203) also is unpersuasive.
Specifically, Petitioner contends that the Examiner found in an office action
that it would have been obvious in view of paragraph 60 of Cheon to
eliminate Cheon’s circulation pumps 23. See id. Petitioner’s argument here,
however, is different than any determinations the Examiner made in the
cited office action, and any such determinations would have been based on a
different record than the evidentiary record before us. Moreover, the
applicant responded to the cited office action by distinguishing Cheon (see
Ex. 1002, 171–72), and the Examiner subsequently allowed the relevant
claims (see id. at 121–126). It is not clear whether the Examiner maintained
the view that it would have been obvious to eliminate Cheon’s circulation
pumps 23. See id. In any event, Petitioner contends in this proceeding that
one of ordinary skill in the art would have found it obvious to modify Ota’s
system, not Cheon’s system. See Pet. 17. Thus, the Examiner’s findings
relate to an issue that is not presently in dispute.
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On this record and for the reasons set forth above, we are not
persuaded that one of ordinary skill in the art would have known of fully
decentralized pumping systems of the type required by claim 1, or of the
supposed advantages Petitioner contends such systems would have had.
These arguments are not supported by persuasive testimony or evidence, and
appear to be the product of improper hindsight. See Ex. 2007 ¶¶ 20–29.
The four rationales that Petitioner sets forth on pages 17–21 of the
Petition are each unpersuasive because they rely on unfounded assertions
regarding what an ordinarily skilled artisan would have known, and for
additional reasons.
Regarding Petitioner’s first rationale (see Pet. 17–18), we agree with
Petitioner that Ota’s internal pumps 23 help regulate the flow of coolant into
heat receivers. See id. at 17 (citing Ex. 1004, 9:37–46). But Petitioner does
not adequately explain why this fact would have lead an ordinarily skilled
artisan to eliminate main circulation pump 41. See Pet. 17–18. The cited
portion of the Tilton Declaration (Ex. 1003 ¶ 26.a) is conclusory in nature,
and assumes that one of ordinary skill in the art would have been aware of
the supposed advantages and disadvantages of fully decentralized cooling
systems vis-à-vis centralized cooling systems. For the reasons discussed
above, we are not persuaded that one of ordinary skill in the art would have
had such knowledge. See Ex. 2007 ¶¶ 20–29.
Petitioner’s second, third, and fourth rationales (see Pet. 18–21) are
based almost entirely on supposed advantages of fully decentralized
pumping systems vis-à-vis centralized pumping systems. The cited portions
of the Tilton and Branton declarations are conclusory in nature and do not
cite any supporting evidence. See Ex. 1003 ¶¶ 26.b–d; Ex. 1007 ¶¶ 10–11.
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As discussed above, we are not persuaded that one of ordinary skill in the art
would have been aware of these supposed advantages and disadvantages of
fully decentralized pumping systems. See Ex. 2007 ¶¶ 20–29. Accordingly,
these rationales lack sufficient support.
Petitioner’s “obvious to try” contentions (see Pet. 21–22, Reply 22–
23) are unpersuasive for similar reasons. Petitioner contends that one of
ordinary skill in the art in July 2011 would have faced “the choice of
whether to use decentralized pumping, centralized, pumping, or a
combination of the two.” Pet. 22. As discussed above, however, we are not
persuaded that such a person would have been aware of fully decentralized
pumping systems, or of the alleged advantages of such systems. See Ex.
2007 ¶¶ 20–29. Accordingly, we are not persuaded that such a person would
have found it obvious to try to modify Ota by removing main circulation
pump 41 and the bypass path in order to implement a fully decentralized
pumping system. On this record, we are not persuaded that one of ordinary
skill in the art in July 2011 would have known, or had reason to pursue, a
fully decentralized pumping configuration.
For each of the foregoing reasons, having considered the arguments of
the parties and the evidence of record, we determine that Petitioner has not
demonstrated by a preponderance of the evidence that claim 1 would have
been unpatentable under 35 U.S.C. § 103(a) over Ota and Cheon.
b. Ground 1, Claims 2–16
Claims 2–16 depend from, and incorporate the limitations of, claim 1.
Petitioner’s contentions regarding claims 2–16 all depend on Petitioner’s
contention that claim 1 would have been unpatentable over Ota and Cheon.
Pet. 32–52. Accordingly for the same reasons discussed above, Petitioner
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has not demonstrated by a preponderance of the evidence that claims 2–16
would have been unpatentable under 35 U.S.C. § 103(a) over Ota and
Cheon.
c. Ground 2, Claim 17
Independent claim 17 recites “wherein no pump other than the pump
corresponding to the respective component heat-exchange modules circulate
the working fluid among the plurality of heat-transfer elements, the
distribution and collection manifolds, and the environmental coupler.” This
language is substantively the same as the no other pumps limitation of claim
1, and Petitioner’s contentions regarding this limitation are the same as its
contentions regarding the no other pumps limitation of claim 1. See Pet. 52
(citing Sections V.A.2 and V.A.3 of the Petition, i.e., Petitioner’s arguments
that Cheon teaches or suggests decentralized pumping, and that an ordinarily
skill artisan would have had reason to combine Cheon and Ota); Pet. 60
(contending that the above-quoted limitation of claim 17 is satisfied for the
same reasons as the no other pumps limitation of claim 1). Petitioner does
not contend that Eriksen cures the deficiencies discussed above in
Petitioner’s contentions regarding claim 1.
Having considered the arguments of the parties and the evidence of
record, and for the same reasons discussed above with respect to claim 1, we
determine that Petitioner has not demonstrated by a preponderance of the
evidence that claim 17 would have been unpatentable under 35 U.S.C.
§ 103(a) over Ota, Cheon, and Eriksen.
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d. Ground 2, Claims 18–21
Claims 18–21 depend from, and incorporate the limitations of, claim
17. Petitioner’s contentions regarding claims 18–21 all depend on
Petitioner’s contention that claim 17 would have been unpatentable over Ota
Cheon, and Eriksen. Pet. 32–52. Accordingly for the same reasons
discussed above, Petitioner has not demonstrated by a preponderance of the
evidence that claims 18–21 would have been unpatentable under 35 U.S.C.
§ 103(a) over Ota, Cheon, and Eriksen.
III. CONCLUSION
For the foregoing reasons, we determine that Petitioner has not shown
by a preponderance of the evidence that any challenged claim of the ’200
patent is unpatentable.
In summary,
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–16 103(a) Ota, Cheon 1–16
17–21 103(a) Ota, Cheon, Eriksen
17–21

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–21 of U.S. Patent 9,496,200 B2 have not
been shown to be unpatentable; and
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FURTHER ORDERED that because this is a final written decision,
parties to the proceeding seeking judicial review of this decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Eric Raciti
Arpita Bhattacharyya
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
eric.raciti@finnegan.com
arpita.bhattacharyya@finnegan.com

For PATENT OWNER:

Lloyd Pollard
GANZ POLLARD LLC
lloyd@ganzlaw.com

Heidi Keefe
Daniel Knauss
Reuben Chen
Lan Nguyen
COOLEY LLP
hkeefe@cooley.com
dknaus@cooley.com
rchen@cooley.com
lnguyen@cooley.com