Coolit Systems, Inc. v. Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
COOLIT SYSTEMS, INC.,
Appellant
v.
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2022-1221
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2020-
00747, IPR2020-00825.
______________________
Decided: March 7, 2024
______________________
REUBEN H. CHEN, Cooley LLP, Palo Alto, CA, argued
for appellant. Also represented by HEIDI L YN K EEFE ;
D USTIN K NIGHT , Washington, DC; LLOYD L. P OLLARD, II,
Workman Nydegger, Salt Lake City, UT.
MONICA BARNES L ATEEF , Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
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COOLIT SYSTEMS, INC. v. VIDAL 2
argued for intervenor. Also represented by P ETER J. AYERS ,
MAI-T RANG D UC D ANG, F ARHEENA YASMEEN RASHEED.
______________________
Before L OURIE, BRYSON, and STARK, Circuit Judges.
L OURIE, Circuit Judge.
CoolIT Systems, Inc. (“CoolIT”) appeals from a final
written decision of the United States Patent and Trade-
mark Office (“PTO”) Patent Trial and Appeal Board (“the
Board”) holding claims 1–3, 5, 7, and 25 of U.S. Patent
9,057,567 (the “’567 patent”) unpatentable. Asetek Dan-
mark A/S v. CoolIT Sys., Inc., IPR2020-00747, 2021 WL
4861000 (P.T.A.B. Sept. 30, 2021) (“Decision”). For the fol-
lowing reasons we vacate and remand.
BACKGROUND
The challenged patent claims priority from two provi-
sional applications, Provisional Application 61/512,379
(the “2011 Provisional”) and Provisional Application
60/954,987 (the “2007 Provisional”). It is directed to a sys-
tem for fluid heat transfer to cool electronic devices. ’567
patent, Abstract. Representative claim 1 is reproduced be-
low.
1. A heat exchange system comprising:
a heat sink having a plurality of juxtaposed fins
defining a corresponding plurality of microchan-
nels between adjacent fins, wherein the heat sink
defines a recessed groove extending transversely
relative to the fins;
a housing member defining a first side and a sec-
ond side, wherein the second side defines a re-
cessed region;
a compliant member matingly engaged with the
second side of the housing member, wherein the
compliant member at least partially defines an
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COOLIT SYSTEMS, INC. v. VIDAL 3
opening positioned over the groove, wherein the
compliant member and the groove together de-
fine a portion of an inlet manifold configured to
hydraulically couple in parallel each of the micro-
channels to at least one other of the microchan-
nels, and wherein the housing member further
defines a portion of an inlet plenum,
wherein the inlet plenum and the inlet manifold
are together configured to convey a fluid in a di-
rection generally transverse to the fins and
thereby to distribute the fluid among the plural-
ity of microchannels and to convey the fluid into
the plurality of microchannels in a direction gen-
erally parallel to the fins,
wherein a portion of the compliant member occu-
pies a portion of the recessed region defined by the
second side of the housing member and urges
against a corresponding wall of the recessed re-
gion while leaving a portion of the recessed re-
gion defined by the second side of the housing
member unoccupied to define first and second ex-
haust manifold regions positioned opposite to
each other relative to the recessed groove and
opening from end regions of the microchannels.
’567 patent, col. 19 ll. 16–46 (emphases added).
The term “matingly engaged” appeared for the first
time in the 2011 Provisional. See Appellant’s Br. at 5–10.
According to CoolIT, such a connection is depicted in Fig-
ures 7–12 of the ’567 patent, which also first appeared in
the 2011 Provisional. Id. According to CoolIT, Figures 2–6
of the ’567 patent purportedly show an alternative means
of connection, i.e., fusing, that was disclosed in the 2007
Provisional. Id. In another, now-final inter partes review
(“IPR”) decision from the same panel as on review here, the
Board found that the 2007 Provisional disclosed only a sin-
gle approach for connecting the housing with the plate and
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COOLIT SYSTEMS, INC. v. VIDAL 4
seal: by fusing. Asetek Danmark A/S v. CoolIT Sys., Inc.,
IPR2020-00825, 2021 WL 4868406 at *10 (P.T.A.B. Oct. 12,
2021) (“[T]his language only describes one method of con-
necting components—overall fusing techniques. It does not
follow from this language that the inventor envisioned a
second method of connecting components in which compli-
ant surfaces would have been desirable.”).
Asetek Danmark A/S (“Asetek”) petitioned for IPR of
the ’567 patent, asserting anticipation based on Bezama1
and obviousness based on Lyon2 in combination with
Bezama. Decision at *3. Lyon has the same inventor as
the ’567 patent and also claims priority from the 2007 Pro-
visional, but not from the 2011 Provisional. In its petition,
Asetek argued that the challenged claims of the ’567 patent
were not entitled to a priority date earlier than the filing of
the 2011 Provisional, which CoolIT did not dispute. Inter-
venor’s Br. at 5 n.6; see also Decision at *3 n.3.
The parties disputed the meaning of the term “mat-
ingly engaged.” CoolIT argued that it should be construed
as “mechanically joined or fitted together to interlock.” Id.
at *6. Asetek initially proposed no construction, but then
argued in its reply brief that “matingly engaged” should be
construed as “joined or fitted together to make contact,” en-
compassing “[a]ll methods of joining or fixing two surfaces.”
Id. CoolIT responded that Asetek’s construction requiring
mere contact read “matingly” out of the limitation, as parts
that are joined or fitted together would always “make con-
tact” with one another. Id. at *7. CoolIT further argued
that, regardless of the construction, neither Lyon nor
Bezama disclosed that limitation because its components
1 U.S. Patent Application Publication 2010/0012294,
published Jan. 21, 2010 (“Bezama”)
2 U.S. Patent Application Publication 2009/0071625,
published Mar. 19, 2009 (“Lyon”).
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COOLIT SYSTEMS, INC. v. VIDAL 5
were fused together or merely abutting, rather than “fitted
together.” Id. at *11.
The Board found CoolIT’s proposed construction of
“matingly engaged” to be too narrow and Asetek’s to be too
broad. Decision at *7–8. It did not determine the meaning
or precise metes and bounds of “matingly engaged,” but
“partial[ly] constru[ed]” the term as at least being satisfied
“when at least a portion of the recited compliant member is
fitted within the recessed region defined by the second side
of the housing member.” Id. at *9 (“This partial construc-
tion is sufficient to resolve the issues in dispute.”). The
Board acknowledged that both parties agreed that the term
encompasses parts that are “joined or fitted together” in
some fashion, as the parties agreed that the term “mate”
meant “join or fit together,” but disagreed on the term “en-
gage.” Id. at *7. The Board found that the term was not
“so broad as to encompass any method of joining or [fitting]
surfaces,” but did not reach the question whether or not
“matingly engaged” could encompass other forms of en-
gagement besides fitting. Id. at *8. It rejected CoolIT’s use
of the word “interlock” because, in part, it believed that
CoolIT was arguing without evidentiary support that such
construction would require a connection that would take
force to break. Id. at *6−8.
Applying its partial construction, the Board found that
Lyon disclosed a compliant member that is “matingly en-
gaged” with the bottom side of the housing. Decision at
*11. The Board determined that Lyon “teaches or at least
suggests” a plate that is “fitted to the recessed region on
the bottom of Lyon’s housing.” Id. The Board found that it
was of no consequence that “the term ‘matingly engaged’
was first added in the 2011 Provisional, and is not used in
Lyon,” because Lyon still “teaches or at least suggests mat-
ing engagement of the type required by claim 1.” Id. at *12.
It also explained that CoolIT’s argument that Lyon’s fusing
of its plate/seal to its cover would not constitute mating en-
gagement was “not persuasive” because its decision did
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COOLIT SYSTEMS, INC. v. VIDAL 6
“not rely on Lyon’s teaching that the [parts] may be fused
together.” Id. The Board therefore found that the chal-
lenged claims were unpatentable as obvious based on Lyon
in combination with Bezama. Id. For that reason, it did
not reach the ground of anticipation based on Bezama. Id.
at *13.
CoolIT timely appealed. Asetek filed a responsive brief
and separately cross-appealed from the final written deci-
sion in IPR2020-00825, which was consolidated with this
appeal. However, Asetek has since moved to voluntarily
dismiss the cross-appeal and withdraw from the case upon
privately settling its dispute with CoolIT. Both motions
were granted. The PTO intervened and filed its own re-
sponsive brief.
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
CoolIT argues that the Board erred in construing the
term “matingly engaged,” and that, under either its pro-
posed construction or the Board’s construction, Lyon fails
to satisfy the “matingly engaged” limitation. We address
each argument in turn.
I
We review a Board’s construction of a claim term, and
any supporting determinations made based on the intrinsic
record, de novo. Personalized Media Commc’ns, LLC v. Ap-
ple Inc., 952 F.3d 1336, 1339 (Fed. Cir. 2020). Any factual
findings the Board made regarding extrinsic evidence are
reviewed for substantial evidence. Id.
CoolIT argues that the term “matingly engaged” should
be construed as “mechanically joined or fitted together to
interlock” (or, alternatively, “mesh” or “otherwise engage”).
Appellant’s Br. at 32. Relying first on intrinsic evidence, it
asserts that its proposed construction properly accounts for
the differences between the 2007 Provisional and the 2011
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COOLIT SYSTEMS, INC. v. VIDAL 7
Provisional, in that the latter allegedly provides an im-
provement over the former: components that are matingly
engaged, rather than fused. Id. at 25–33. It further points
to the purpose of the invention, and argues that the lan-
guage of claim 1 requires a specific type of joining or fitting
between the compliant member and the housing to force
the coolant into the restrictive microchannels, rather than
allowing it to flow past them. Id. at 23–25. In CoolIT’s
view, to work properly, the compliant member of claim 1
must partition features that convey coolant to the micro-
channels (e.g., an “inlet manifold”) and features that re-
ceive coolant from the microchannels (e.g., an “exhaust
manifold region”). Id. CoolIT also supports its proposed
construction with extrinsic evidence: (1) expert testimony,
(2) other tribunals’ constructions of “engage,” and (3) dic-
tionary definitions of “engage.” Id. at 33–35; see also J.A.
3846 (defining “engage” as including “interlocking”); Lisle
Corp. v. A.J. Mfg. Co., 398 F.3d 1306, 1314 (Fed. Cir. 2005)
(construing “engaged” as “interlocked”).
The PTO responds that CoolIT’s proposed construction
improperly reads a limitation from the specification into
the claim, effectively restricting “matingly engaged” to only
the interlocking of complementary contoured features to
the exclusion of other forms of engagement. Intervenor’s
Br. at 24–26. It argues that neither the claims nor the
specification uses the word “interlock,” and that the speci-
fication makes clear that Figures 7–12 are merely exem-
plary embodiments. Id. at 25–27. It also disputes CoolIT’s
contention that the 2007 Provisional only shows fusion,
contending that its Figure 3 shows plate 102 and seal 130
fitted within the recessed region of the housing such that
they are matingly engaged. Id. at 21–22. The PTO argues
that there was no clear and unambiguous disavowal or nar-
rowing of claim scope. Id. at 26–29. However, notably, the
PTO does not propose a construction of “matingly engaged”
aside from defending the Board’s partial construction.
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COOLIT SYSTEMS, INC. v. VIDAL 8
It is clear that the term requires more than mere abut-
ment. And as the Board found, “mating engagement” does
not encompass “contact between two flat surfaces, or the
joining together of two flat surfaces.” Decision at *9. Nor
does it “merely require contact or attachment.” Id. The
Board correctly found that “[c]laim 1 does not encompass”
all “type[s] of engagement. It requires a specific type of en-
gagement: mating engagement.” Id. But from there, the
Board’s analysis went awry.
As an initial matter, the Board’s partial construction
largely renders superfluous other portions of the claim.
The Board’s partial construction found that “matingly en-
gaged” includes when “at least a portion of the recited com-
pliant member is fitted within the recessed region defined
by the second side of the housing member.” Decision at *9.
However, the claim elsewhere requires “wherein a portion
of the compliant member occupies a portion of the recessed
region defined by the second side of the housing member
and urges against a corresponding wall of the recessed re-
gion while leaving a portion of the recessed region defined
by the second side of the housing member unoccupied.”
’567 patent, col. 19 ll. 38–43. Although these are not an
exact match, it is the differences that are almost more trou-
bling. For if the compliant member must be fitted within
the recessed region, of what significance is the later re-
quirement that a portion of the compliant member occupy
a portion of the same recessed region? Even if “fitted
within” was interpreted as narrower than “occupy,” the
rest of the limitation requires that the portion of the com-
pliant member also “urges against” a portion of the hous-
ing. Taken together, those two limitations seem akin to
“fitted within.”
The only explanation that the PTO seems to provide for
the apparent redundancy is that the “occupies” language
defines how the manifold is formed, and not how the com-
pliant member and the housing are fitted together. See
Oral Arg. at 20:28–21:08 available at
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COOLIT SYSTEMS, INC. v. VIDAL 9
https://cafc.uscourts.gov/home/oral-argument/listen-to-
oral-arguments/. We disagree.
Both portions of the claim plainly refer to the place-
ment of the same compliant member in relation to the same
second side of the housing. And when asked to define “fit-
ted within,” the PTO fared no better, explaining only that
the compliant member “has to be fitted within such that
the coolant can’t escape out of the inlet and the outlet.” Id.
at 18:38–45; see also id. at 17:49–18:13. As we pointed out
at oral argument, that is a functional description and pro-
vides little insight. The PTO has thus failed to explain how
“fitted within the recessed region,” Decision at *9, is differ-
ent from “occupies a portion of the recessed region . . . and
urges against [a portion of it],” ’567 patent, col. 19 ll. 38–41
(emphasis added). We are therefore persuaded that “mat-
ingly engaged” must carry greater meaning than “fitted
within.”
As the Board acknowledged, the parties do not appear
to dispute that mating engagement requires “joining or fit-
ting together” in some fashion. Decision at *7; see also J.A.
3847 (defining “mate” as “to join or fit together”). Indeed,
the Board found that “nothing in [Asetek’s expert declara-
tions] adequately justifies a plain and ordinary meaning-
based construction that would encompass parts that are
not, at the very least, fitted together.” Decision at *8. It
also found that the intrinsic evidence was consistent with
the expert testimony that “matingly engaged” “refers to
parts that are fit together.” Id. But notably, the Board’s
partial construction does not use the phrase “join or fit to-
gether.” Id. at *9. We find that to be error. Although the
Board’s partial construction does use the phrase “fitted
within,” we find that that phrase does not necessarily have
the same meaning. Moreover, at one point the Board uses
the phrase “fitted to,” which also carries yet another dis-
tinct meaning. Id. at *11 (“Lyon teaches or at least sug-
gests a distribution/collection plate that is fitted to the
recessed region on the bottom of Lyon’s housing” (emphasis
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COOLIT SYSTEMS, INC. v. VIDAL 10
added)). The construction should include “joined or fitted
together.”
But something more must also be included in the con-
struction, for we must give weight to both “matingly” and
“engaged.” However, we are not persuaded that “interlock”
is the answer. Although we acknowledge that the diction-
ary definitions show that “engage” can mean to “interlock
with,” “cause (mechanical parts) to mesh,” or “to come to-
gether and interlock (as of machinery parts),” J.A. 3846, we
have concerns that that word choice may cause more con-
fusion than clarity.
Indeed, the Board seemed to misapprehend CoolIT’s
position on what that term meant. It noted that:
Patent Owner further explains that the term “in-
terlock” in its construction requires a Lego ®-like
connection in which two components having com-
plementary shapes are engaged with one another.
During the oral hearing, Patent Owner clarified
that its construction also requires that the compo-
nents with complementary shapes be engaged with
one another in such a manner that it would take
force to separate them.
Decision at *6 (citations omitted). However, the transcript
of the oral hearing before the Board reveals that counsel
for CoolIT had been referring to a specific example of com-
ponents that were matingly engaged, a highlighter and its
cap, when discussing a press fit arrangement, rather than
all forms of mating engagement, J.A. 1651–53 (“I think in
this example it does require force, right.”), and later clari-
fied that point, J.A. 1656–57 (“There has to be at least in
some direction force that’s necessary to pull those two
pieces apart but not necessarily in all directions.”). And at
oral argument, counsel for CoolIT further clarified that it
was only asserting that force in one direction was required.
Oral Arg. at 2:06–2:09 (“I do think that it is, it is interlock-
ing because it cannot move in one particular direction.”).
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COOLIT SYSTEMS, INC. v. VIDAL 11
That is consistent with CoolIT’s position, both before us
and the Board, that a tongue-and-groove connection would
constitute mated engagement. See Appellant’s Br. at 44;
Decision at *7–8.
But even with that misunderstanding resolved, CoolIT
and the PTO still disagree over what the term “interlock”
means. CoolIT seems to assert that complementary con-
toured shapes are not required. Oral Arg. at 6:35–42
(“There are ways to interlock that don’t require comple-
mentary contoured [sic] shapes, like the highlighter exam-
ple.”). Whereas the PTO asserts that they are. Id. at
28:05–10 (“The way I understand [interlock] is that you
have contoured pieces, complementary contoured pieces,
like Legos.”); id. at 28:32–35 (“I literally think there needs
to be contoured complementary pieces that lock together.”).
The term “interlock” would therefore provide little guid-
ance as to what “matingly engaged” means.
In view of the record before us, we conclude that the
correct construction of “matingly engaged” should be “me-
chanically joined or fitted together.” Although that exact
phrasing was not urged by either party or the Board, we
find that it accurately captures the meaning of the term
and various arguments of the parties.
For example, at one point in its decision, the Board con-
templated a “dictionary-based construction” of “mechani-
cally joined or fitted together by overlapping or fitting
together,” which is similar to what we have settled on here.
Decision at *8. The Board found that that construction
would “encompass[] parts that are fit together as well as
parts that are joined by overlapping” without requiring “a
tongue-in-groove or Lego®-like connection accomplished
via complementary, contoured shapes.” Id. Notably, we
review the Board’s evaluation of extrinsic evidence, like
dictionaries, for substantial evidence. Personalized Media,
952 F. 3d at 1339. Substantial evidence, indeed, supports
the Board’s interpretation of the dictionaries. But, as the
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COOLIT SYSTEMS, INC. v. VIDAL 12
Board acknowledged, that dictionary-based construction is
“somewhat-redundant” in its phrasing, and it ultimately
did not use that construction. Decision at *8. “Mechani-
cally joined or fitted together” is consistent with the dic-
tionary definitions (and the Board’s interpretation of them)
but eliminates the redundancy of the Board’s contemplated
construction. It also encompasses parts that are “joined by
overlapping,” as well as parts that are “interlocking” or
with “complementary shapes,” but is not limited to such.
The construction is not unlimited, however, and does
give weight to the term “engaged.” For example, the use of
“mechanically” properly excludes connection via chemical
bonds. CoolIT has stressed that “matingly engaged” is not
the same thing as either (a) sealing, such as through glue,
solder, or another intermediary filler which separates the
components, or (b) welding, which joins two components to
make them one. Appellant’s Reply Br. at 23; Oral Arg. at
10:06–46. Instead, CoolIT alleges, those were examples of
chemically, rather than mechanically, joining components
together, as exemplified by the inability to later decouple
the components. Id.
We agree that those examples are not within the scope
of “matingly engaged” as it is used in the claims. The PTO
does not appear to dispute the exclusion of those scenarios.
See Oral Arg. at 30:07–20 (“Under the partial construction
that is before us today, ‘fitted together,’ [sic] I think sealing
would probably be too far.”); id. at 30:20–23 (agreeing that
“sealing” would not be “fitted together”). The patent also
distinguishes between mating engagement and sealing, as
it describes the connection between the compliant member
and second side of the housing as “sealingly engaged” in
independent claim 28, rather than “matingly engaged” as
in independent claim 1. Compare ’567 patent, col. 22 ll.
11–12 (“a compliant member sealingly engaged with the
second side of the housing member”) with id. col. 19 ll.
23–24 (“a compliant member matingly engaged with the
second side of the housing member”). We believe that the
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COOLIT SYSTEMS, INC. v. VIDAL 13
inclusion of “mechanically” in our construction of “matingly
engaged” therefore properly excludes those scenarios (e.g.,
sealing and welding).3
We therefore reverse the Board’s partial construction
of “matingly engaged” and hold that is properly construed
as “mechanically joined or fitted together.”
II
The Board has not considered whether or not Lyon dis-
closes “a compliant member matingly engaged with the sec-
ond side of the housing member” under our construction of
“matingly engaged.” Nor did it reach Asetek’s second as-
serted ground and consider whether or not Bezema alone
disclosed that feature. We therefore remand to the Board
for consideration of those issues, as necessary, in accord-
ance with our opinion.
CONCLUSION
For the foregoing reasons, the decision of the Board is
vacated and remanded.
VACATED AND REMANDED
COSTS
No costs.
3 We do not reach the issue as to whether “fusing” is
or is not the same as sealing or welding and/or qualifies as
mating engagement under the correct construction of “mat-
ingly engaged.” We believe that requires factual determi-
nations more appropriate for the Board to consider on
remand if necessary.
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