Asetek Holdings, Inc et al v. Coolit Systems Inc

Filing 156

ORDER Re Claim Construction for CoolIT's Patent. Signed by Judge Edward M. Chen on 12/3/2013. (emcsec, COURT STAFF) (Filed on 12/3/2013)

1
2
3
4
5

UNITED STATES DISTRICT COURT

6

NORTHERN DISTRICT OF CALIFORNIA

7
8

ASETEK HOLDINGS, INC., et al.,

9

Plaintiffs,
ORDER RE CLAIM CONSTRUCTION
FOR COOLIT’S PATENT

v.

11
For the Northern District of California

United States District Court

10

No. C-12-4498 EMC

COOLIT SYSTEMS, INC.,

12

Defendant.
___________________________________/

13
14
15

CoolIT is the owner of the ‘456 patent. It has accused Asetek of patent infringement. This

16

order addresses claim construction for the ‘456 patent. A separate order provides the claim

17

construction on Asetek’s patent (the ‘362 and ‘764 patents).

18
19

I.

LEGAL STANDARD

Claim construction is a question of law to be determined by the Court. See Markman v.

20

Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (“hold[ing] that in a case tried to a

21

jury, the court has the power and obligation to construe as a matter of law the meaning of language

22

used in the patent claim”). “The purpose of claim construction is to ‘determin[e] the meaning and

23

scope of the patent claims asserted to be infringed.’” O2 Micro Int’l Ltd. v. Beyond Innovation

24

Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008).

25
26
27
28

Words of a claim are generally given their ordinary and customary
meaning, which is the meaning a term would have to a person of
ordinary skill in the art after reviewing the intrinsic record at the time
of the invention. “In some cases, the ordinary meaning of claim
language . . . may be readily apparent even to lay judges, and claim
construction in such cases involves little more than the application of
the widely accepted meaning of commonly understood words.”

1

However, in many cases, the meaning of a claim term as understood
by persons of skill in the art is not readily apparent.

2
3

Id.

4

Because the meaning of a claim term as understood by persons of skill
in the art is often not immediately apparent, and because patentees
frequently use terms idiosyncratically, the court looks to “those
sources available to the public that show what a person of skill in the
art would have understood disputed claim language to mean.” Those
sources include “the words of the claims themselves, the remainder of
the specification, the prosecution history, and extrinsic evidence
concerning relevant scientific principles, the meaning of technical
terms, and the state of the art.”

5
6
7
8
9

Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). As a general matter, extrinsic
evidence such as dictionaries and expert testimony is considered less reliable than intrinsic evidence

11
For the Northern District of California

United States District Court

10

(i.e., the patent and its prosecution history). See id. at 1317-19 (noting that “extrinsic evidence may

12

be useful to the court, but it is unlikely to result in a reliable interpretation of patent claim scope

13

unless considered in the context of the intrinsic evidence”).

14

II.

15

REPRESENTATIVE CLAIM

As noted above, the only patent at issue here is the ‘456 patent. Claim 1 is a representative

16

claim. Its text is provided below (with claims to be construed in bold).

17

///

18

///

19

///

20

///

21

///

22

///

23

///

24

///

25

///

26

///

27

///

28

///

2

1

1.

2

A computer cooling system comprising:

a heat exchanger and a pump circuit configured to provide a
liquid coolant to the heat exchanger, the pump circuit including:

3
a pump including a housing defining therein an inner chamber
having a fixed volume, the inner chamber including at least an
impeller chamber and a reservoir, the impeller chamber and the
reservoir being positioned directly adjacent to each other in the pump
housing, separated from each other by a wall and in fluid
communication with each other through a port in the wall;

4
5
6
7

an inlet through the housing opening to the reservoir, apart
from the port;

8
an outlet through the housing opening from the impeller
chamber, apart from the port;

10

a pumping mechanism in the impeller chamber;

11
For the Northern District of California

United States District Court

9

a resiliently compressible member in the reservoir
accommodating a portion of the fixed volume of the inner chamber,
wherein the resiliently compressible member is compressible in
response to expansion of the liquid coolant;

12
13

a retainer positioned in the inner chamber and configured to
hold the resiliently compressible member in a position away from
moving out of the inner chamber or into a position blocking fluid flow
through the pump, wherein the retainer and the wall separating the
impeller chamber and the reservoir are integrally formed to define a
unitary construction;

14
15
16
17

a separable cap, apart from the resiliently compressible
member, defining a recessed inner wall in fluid communication with
the reservoir;

18
19

a pump discharge tubing extending between the pump outlet
and the heat exchanger; and

20
a pump return tubing extending between the heat exchanger
and the pump inlet, the pump circuit providing the liquid coolant to the
heat exchanger in a closed loop drive by the pumping mechanism
including a flow path through the pump inlet into the reservoir,
past the resiliently compressible member and out the port into the
impeller chamber.

21
22
23
24

///

25

///

26

///

27

///

28

///

3

1
2
3
4

III.
A.

“heat exchanger”

CoolIT

Asetek

Court

plain and ordinary meaning

a liquid cooled device in
thermal contact with a heat
source that transfers heat from
the heat source to a liquid

liquid-cooled heat exchanger

5
6
7

DISCUSSION

The basic dispute here is whether (1) a heat exchanger is something that can only absorb heat

8

(i.e., a liquid-cooled heat exchanger) or (2) a heat exchanger can be something that can absorb heat

9

or that can dissipate heat (e.g., a heat sink). Asetek advocates for the former position, and CoolIT

11
For the Northern District of California

United States District Court

10

12
13
14
15

the latter.
CoolIT’s position has some support. For example, the specification indicates that a heat
exchanger can in fact be a heat sink:
With reference to FIG. 4, a pump 110 . . . may be used to move fluid
through a pump circuit. For example, pump 110 may be used in a
liquid cooled computer 138 to drive liquid coolant between heat
exchangers [plural] such as a heat exchanger 139 in thermal
communication with a heat source 140 and a heat sink 142.”

16

‘456 patent, col. 2:61-67 (emphasis added). Also, the fact that the specification makes multiple

17

references to a “liquid cooled heat exchanger,” see, e.g., ‘456 patent, col. 1:32, 45 (emphasis added),

18

suggests that the term “heat exchanger” without any modifier should be construed more broadly.

19

See Phillips, 415 F.3d at 1314 (noting that “the context in which a term is used in the asserted claim

20

can be highly instructive – e.g., the use of the term “steel baffles” “strongly implies that the term

21

‘baffles’ does not inherently mean objects made of steel”).

22

However, the Court ultimately agrees with Asetek that the term “heat exchanger” as used in

23

the claims (see, e.g., claims 1 and 17, referring to a “heat exchanger” without any modifier of

24

“liquid-cooled”) implicitly means a liquid-cooled heat exchanger. For example, in the ‘456 patent’s

25

“Summary of the Invention,” there are repeated references to the “present invention” – and not just a

26

preferred embodiment – consisting of, inter alia, a “liquid cooled heat exchanger.” See American

27

Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1366 (Fed. Cir. 2010) (noting that “we have

28

repeatedly held that ‘the use of the words “the present invention” can be read to limit the invention

4

1

to what is described as such’”); Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed.

2

Cir. 2006) (noting that “a fuel filter was not merely discussed as a preferred embodiment”; rather,

3

“[o]n at least four occasions, the written description refers to the fuel filter as ‘this invention’ or ‘the

4

present invention’”).

5

Also, the prosecution history repeatedly reflects the applicant’s understanding that the heat

6

exchanger as claimed in the invention was a liquid-cooled heat exchanged. As Asetek points out,

7

“for more than four-and-a-half years, from his filing of his patent application in May 2007 through a

8

Notice of Allowance mailed on December 26, 2012, the inventor always described and limited his

9

claimed ‘heat exchanger’ as ‘a liquid cooled heat exchanger.’” Docket No. 138 (Resp. Br. at 4)
(emphasis in original). For example, in October 2012, the applicant submitted an amendment and

11
For the Northern District of California

United States District Court

10

response to an Office Action in which:

12

(1)

then-claim 34 (eventually claim 1 in the ‘456 patent) described the invention as “[a]

13

computer cooling system comprising: [inter alia] a liquid cooled heat exchanger and a pump

14

circuit configured to provide a liquid coolant to the liquid cooled heat exchanger,” and

15

(2)

then-claim 57 (eventually claim 17 in the ‘456 patent) described the invention as “[a] cooling

16

system for a computer, wherein the cooling system comprises: [inter alia] a liquid cooled

17

heat exchanger and a pump.”

18

Docket No. 138-6, at 3, 5 (Smyth Decl., Ex. E) (applicant’s amendment and response to Office

19

Action) (emphasis added). It would be inherently inconsistent to construe “heat exchanger” as

20

including a heat sink which only dissipates heat and have it be “liquid cooled.” If anything, a heat

21

sink (or radiator) is liquid heated.

22

It is true that, after the Notice of Allowance in December 26, 2012, a change was made to

23

then-claim 34 and then-claim 57 – i.e., the modifier “liquid cooled” was dropped from the claims.

24

Thus, claims and 17 as eventually issued simply referred to a “heat exchanger” without any modifier

25

of “liquid cooled.” See ‘456 patent, claims 1, 17. The prosecution history reflects that, during an

26

interview in January 2013 (i.e., approximately four months after Asetek filed suit against CoolIT),

27

the patent applicant asked for the modifier “liquid cooled” to be deleted from then-claim 34 and

28

then-claim 57, and the examiner agreed. See generally Docket No. 138-10 (Smyth Decl., Ex. I)

5

1

(applicant-initiated interview summary). Unfortunately, no explanation for the desired amendment

2

was provided, nor was there any indication why the examiner agreed to the amendment.

3

However, it makes sense that “liquid cooled” could be easily deleted from then-claim 34

4

without changing the scope of the claim. As noted above, then-claim 34 described the invention as

5

“[a] computer cooling system comprising: [inter alia] a liquid cooled heat exchanger and a pump

6

circuit configured to provide a liquid coolant to the liquid cooled heat exchanger.” Docket No. 138-

7

6, at 3 (Smyth Decl., Ex. E) (emphasis added). It was not necessary to refer to a “liquid cooled heat

8

exchanger” because the surrounding language in the claim already made clear that liquid coolant

9

was being provided to the heat exchanger.
Admittedly, the same rationale cannot be applied to then-claim 57 – i.e., there is no

11
For the Northern District of California

United States District Court

10

surrounding claim language that makes the “liquid cooled” modifier surplusage. However, here,

12

Asetek makes a convincing argument that, if CoolIT meant to broaden the scope of the claim, then it

13

should have provided an explanation for the amendment. Section 714.16 of the Manual of Patent

14

Examining Procedure specifies that, after a notice of allowance has issued (as here), a patent

15

applicant may not amend as a matter of right but rather must get approval of the PTO,1 and that, if

16

the amendment affects the scope of any claim,

17

the remarks accompanying the amendment must fully and clearly state
the reasons on which reliance is placed to show:

18
(A)

why the amendment is needed;

(B)

why the proposed amended or new claims require no additional
search or examination;

21

(C)

why the claims are patentable; and

22

(D)

why they were not presented earlier.

19
20

23
24
25
26
27
28

1

See also 37 C.F.R. § 1.312 (providing that “[n]o amendment may be made as a matter of
right in an application after the mailing of the notice of allowance[;] [a]ny amendment filed pursuant
to this section must be filed before or with the payment of the issue fee, and may be entered on the
recommendation of the primary examiner, approved by the Director, without withdrawing the
application from issue”).

6

1

Docket No. 138-11 (Smyth Decl., Ex. J) (MPEP § 714.16).2 While the Manual is not binding

2

authority, a court may take judicial notice of a provision from the Manual. See In re Hubbell, 709

3

F.3d 1140, 1146 (Fed. Cir. 2013) (stating that, “[a]lthough the MPEP is not binding on this court, we

4

can take judicial notice of this provision to the extent it does not conflict with statutory text”).

5

Moreover, in Genzyme Corp. v. Transkaryotic Therapies, Inc., 346 F.3d 1094 (Fed. Cir.

6

2003), the Federal Circuit held that a patent applicant cannot broaden a claim through a last-minute

7

amendment after final action by the PTO where the applicant failed to provide an explanation for the

8

amendment in the prosecution history. In Genzyme, Genzyme accused TKT of infringing the ‘804

9

patent, for which Genzyme was the exclusive licensee. “The ‘804 patent claim[ed] a method of
producing [a human enzyme known as] human alpha-galactosidase A (alpha-Gal A) and cells

11
For the Northern District of California

United States District Court

10

engineered to express and secrete active human alpha-Gal-A. Administration of the alpha-Gal A

12

protein treats patients suffering from Fabry disease, a condition triggered by a deficiency in this

13

enzyme.” Id. at 1096. “TKT’s allegedly infringing product involve[d] a technique known as gene

14

activation. Under this technique, a DNA sequence acting as a promoter is inserted into a human host

15

cell, whereupon the endogenous human cellular gene encoding a-Gal A is activated to express the

16

endogenous human a-Gal A protein.” Id. (emphasis added). It was not disputed that “TKT’s

17

technique does not introduce an exogenous a-Gal A gene into human host cells.” Id. (emphasis

18

added). After the district court construed the term “chromosomally integrated” to require an

19

exogenously introduced gene sequence, Genzyme conceded that it could not prevail on infringement

20

and so the district court entered summary judgment in TKT’s favor. See id. at 1097.

21
22
23
24
25
26
27
28

2

Section 714.16 also indicates that, after a notice of allowance has issued, the patent
application is technically no longer under the jurisdiction of the
primary examiner. He or she can, however, make examiner’s
amendments (see MPEP § 1302.04) and has authority to enter
amendments submitted after Notice of Allowance of an application
which embody merely the correction of formal matters in the
specification or drawing, or formal matters in a claim without
changing the scope thereof, or the cancellation of claims from the
application, without forwarding to the supervisory patent examiner for
approval.

Docket No. 138-11 (Smyth Decl., Ex. J) (MPEP § 714.16) (emphasis added).

7

1

The Federal Circuit upheld the district court’s decision. The court noted first that the patent

2

specification supported the exogenous limitation. See, e.g., id. at 1099 (noting that “[t]he term ‘host

3

cell’ means that the cell ‘hosts’ or ‘receives’ genetic material other than its own to perform its

4

service”). It then went on to state that the prosecution history did not “permit a broad interpretation

5

of the claim term ‘chromosomally integrated.’” Id. at 1101. As one example, the court noted that,

6

after the examiner issued a final rejection of the patent application, the patent applicant submitted a

7

supplemental amendment under 37 C.F.R. § 1.116, in which it replaced

8
9

11
For the Northern District of California

United States District Court

10

12
13
14
15
16
17
18
19
20
21
22
23
24
25

the phrase “transformed with a recombinant vector which includes a
nucleotide sequence encoding alpha-galactosidase A” with the phrase
“chromosomally integrated nucleotide sequence encoding human
alpha-galactosidase A.” The examiner and applicant agreed on this
language during an after-final rejection examiner interview. The
record does not explain the reasons the examiner finally accepted this
language.
Contrary to Genzyme’s position, this eleventh-hour
amendment did not operate to broaden the claims to eliminate the
requirement of insertion of an exogenous gene into a host cell. In the
first place, the deposit requirement, the specification, the applicant’s
arguments to distinguish prior art, the examiner’s responses, and Dr.
Mellman’s declaration [expert declaration submitted by Genzyme]
repeatedly stressed that the invention envisioned insertion of an
exogenous gene sequence into a host cell. A clarifying amendment at
the last moment could not negate that extensive public record.
More important, the examiner could not accept a second
(supplemental) after-final amendment broadening the scope of the
rejected claims without formal comment from the applicant. Under
the applicable Patent Office rules, amendments to patent claims after
final rejection cannot alter the substantive scope of the claims without
explanation about the necessity of the amendment and without reasons
for the delay in proposing the change. See 37 C.F.R. § 1.116(b)
(1992) (“If amendments touching the merits of the application . . . are
presented after final rejection . . . they may be admitted upon showing
of good and sufficient reasons why they are necessary and were not
presented earlier.”). If this amendment markedly broadened the
claims, it satisfied neither of those requirements. The record supplies
no explanation from the applicant or the examiner that these changes
were both “necessary” and justifiably “not earlier presented.” Thus,
according to PTO rules, the examiner could not have allowed this
amendment if it changed at all the scope of the claims set forth in the
deposit requirement, the specification, the arguments of the applicant,
and Dr. Mellman’s declaration.

26
27
28

The record instead suggests that the examiner felt this lastminute change did not alter the scope of the claims. The examiner’s
comments did not distinguish these newly amended claims from the
prior art, but simply noted that the claims hd to recite that the alpha-

8

1
2
3
4
5

Gal A was overexpressed and secreted. Likewise, the applicant did
not address any change in the scope of the claims. In any event, the
examiner could not have permitted any Rule 116 amendment that
expanded the claims to make the introduction of exogeneous DNA
into a host cell optional.
Id. at 1103-04 (emphasis added).
There are differences, of course, between the instant case and Genzyme. In Genzyme, the

6

final office action prior to amendment was a rejection of the application, whereas here the final

7

office action prior to amendment was a notice of allowance. See Docket No. 146 (Reply at 4)

8

(CoolIT arguing that Genzyme is distinguishable because, there, the amendment was made “solely in

9

order to secure patentability” and, “[b]y contrast, CoolIT’s claim amendment, which was accepted
by the PTO, was made after allowance and not in order to secure patentability”). Also, in Genzyme,

11
For the Northern District of California

United States District Court

10

there was a federal regulation that required an explanation for the amendment, whereas here there is

12

only a provision in the Manual that requires an explanation for the amendment. Nevertheless, these

13

differences are not material – i.e., the broader point to be gleaned from Genzyme is that a last-minute

14

amendment after final office action cannot be said to broaden the scope of a claim absent an

15

explanation by the applicant and/or examiner. Whether the office action is rejection or allowance,

16

the post-action amendment such as the one here has a material impact on the scope of the patent

17

which is inconsistent with the prosecution history available to the public. As the Manual and

18

Genzyme suggest, such an amendment to be effective requires more than an unexplained acceptance

19

by the examiner.

20

Accordingly, the Court concludes that Asetek’s position is, in general, the more reasonable

21

one. While the specification does indicate that a heat exchanger can be a heat sink, it also reflects

22

that the invention claimed (the “present invention”) must involve a liquid-cooled heat exchanger,

23

and thus the use of the term “heat exchanger” in claims and 17 implicitly refers to a liquid-cooled

24

heat exchanger, as supported by the prosecution history up through the Notice of Allowance, mailed

25

on December 26, 2012. The last-minute amendment made by the applicant after the Notice of

26

Allowance shall not be given any weight because, if it was intended to broaden the scope of the

27

claims, there was no explanation for it, either by the applicant or the examiner.

28

9

1

The Court, however, shall not adopt Asetek’s construction and, instead, shall limit its

2

construction of the term “heat exchanger” to “liquid-cooled heat exchanger,” as that is what is

3

consistent with the specification and prosecution history. The Court acknowledges Asetek’s concern

4

that CoolIT might try to argue that a heat sink is liquid cooled when, in actuality, it is liquid heated,

5

but Asetek is free to make the argument to the jury that a heat sink is liquid heated rather than liquid

6

cooled.

7

B.

8
9

“inlet through the housing opening to the reservoir”

CoolIT

Asetek

Court

plain and ordinary meaning

inlet from outside the housing
allowing coolant to flow
directly into the reservoir

plain and ordinary meaning

11
For the Northern District of California

United States District Court

10

12

CoolIT objects to Asetek’s construction because it includes inappropriate limitations –

13

namely, requiring that “the inlet be ‘from outside’ the housing and that it ‘allow[] coolant to flow

14

directly into the reservoir.” Docket No. 125 (Op. Br. at 9). In response, Asetek argues that this

15

interpretation is what the patent applicant offered during prosecution.

16

The prosecution history, however, does little more than regurgitate what the claim term “inlet

17

through the housing opening into the reservoir” already says on its face. For example, the patent

18

applicant stated as follows with respect to an amendment of then-claim 34:

19
20
21
22
23
24
25
26
27

Independent claim 34 has been amended to clarify that the
coolant circuit defines a coolant flow path through the reservoir: in
through an inlet, past the member and out through a port, which is
separate from the inlet. This provides the benefit that coolant flows
directly through the reservoir and into contact with the compressible
member on every circuit. For example, any bubbles that become
entrained in the coolant are moved directly with the coolant flow into
the reservoir, where they can be retained. Further, in such a system,
the reservoir containing the compressible member cannot become
isolated from the pump circuit.
Docket No. 138-4 (Smyth Decl., Ex. C) (Resp. at 5).
The Court therefore declines to provide any construction of the term other than plain and
ordinary meaning.

28

10

1
2
3

C.

“retainer”

CoolIT

Asetek

Court

plain and ordinary meaning

governed by 35 U.S.C. § 112,
¶ 6;

not governed by 35 U.S.C. §
112, ¶ 6;

claimed function in claim 1 –
configured to hold the
resiliently compressible
member in a position away
from moving out of the inner
chamber or into a position
blocking fluid flow through
the pump;

plain and ordinary meaning

4
5
6
7
8
9

claimed function in claim 17 –
configured to prevent the
resiliently compressible
member from blocking a fluid
flow through the port in the
housing wall;

11
For the Northern District of California

United States District Court

10

12

structure corresponding to the
function – standoffs (ridges
“52” of FIGS. 1 and 3)

13
14
15
16
17
18

Title 35 U.S.C. § 112(f) provides that
[a]n element in a claim for a combination may be expressed as a
means or step for performing a specified function without the recital of
structure, material, or acts in support thereof, and such claim shall be
construed to cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.

19

35 U.S.C. § 112(f) (emphasis added). As the Federal Circuit has noted, “[m]eans-plus-function

20

claiming applies only to purely functional limitations that do not provide the structure that performs

21

the recited function.” Phillips, 415 F.3d at 1311. Here, the parties’ dispute centers on whether the

22

“retainer” limitation in the claims of the ‘456 patent is a means-plus-function limitation. Asetek

23

argues that it is a means-plus-function limitation; CoolIT argues to the contrary. If Asetek is correct,

24

then it maintains that the structure corresponding to the function is “standoffs (ridges ‘52’ of FIGS. 1

25

and 3),” while CoolIT argues that the corresponding structure is “protrusions.” For the reasons

26

discussed below, the Court agrees with CoolIT that the “retainer” limitation is not in fact a means-

27

plus-function limitation.

28

11

1

First, as CoolIT points out, where a claim limitation actually uses the word “means,” that

2

“will invoke a rebuttable presumption that § 112 ¶ 6 applies”; but, if a claim term does not use

3

“means,” that “will trigger the rebuttable presumption that § 112 ¶ 6 does not apply.” CCS Fitness

4

v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002). Here, the “retainer” limitation does not

5

phrase the limitation in means-plus-function language, and therefore, there is a rebuttable

6

presumption that § 112 ¶ 6 (now § 112(f)) does not govern.

7

Second, Asetek is correct that the presumption can be rebutted, but “the presumption flowing

8

from the absence of the term ‘means’ is a strong one that is not readily overcome.” Lighting World,

9

Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004); see also Flo Healthcare
Solns., LLC v. Kappos, 697 F.3d 1367, 1374 (Fed. Cir. 2012) (stating that, “[w]hen the claim drafter

11
For the Northern District of California

United States District Court

10

has not signaled his intent to invoke § 112, ¶ 6 by using the term ‘means,’ we are unwilling to apply

12

that provision without a showing that the limitation is devoid of anything that can be construed as

13

structure”). The party seeking to rebut the presumption must “demonstrate[] that the claim term

14

[here, ‘retainer’] fails to ‘recite sufficiently definite structure’ or else recites a ‘function without

15

reciting sufficient structure for performing that function.’” CCS Fitness, 288 F.3d at 1369. “This

16

burden must be met by a preponderance of the evidence.” Apex Inc. v. Raritan Comp., Inc., 325

17

F.3d 1364, 1372 (Fed. Cir. 2003).

18
19
20
21
22
23
24
25
26

Notably,
[i]n considering whether a claim term recites sufficient structure to
avoid application of section 112 ¶ 6, [the Federal Circuit has] not
required the claim term to denote a specific structure. Instead, [the
court has] held that it is sufficient if the claim term is used in common
parlance or by persons of skill in the pertinent art to designate
structure, even if the term covers a broad class of structures and even
if the term identifies the structures by their function.
Lighting World, 382 F.3d at 1359-60. The court has further noted that, even where a term
does not bring to mind a particular structure, that point is not
dispositive. What is important is whether the term is one that is
understood to describe structure, as opposed to a term that is simply a
nonce word or a verbal construct that is not recognized as the name of
structure and is simply a substitute for the term “means for.”

27

Id. at 1360. For example, “generic terms [such as] ‘mechanism,’ ‘means,’ ‘element,’ and ‘device’

28

typically do not connote sufficiently definite structure.” MIT v. Abacus Software, 462 F.3d 1344,

12

1

1354 (Fed. Cir. 2006).3 Finally, the Federal Circuit has noted that it can be helpful to “look[] to the

2

dictionary to determine if a disputed term has achieved recognition as a noun denoting structure,

3

even if the noun is derived from the function performed.” Lighting World, 382 F.3d at 1360.

4

In the case at bar, the claim term “retainer” is far from being a nonce word, a verbal

5

construct not recognized as the name of structure, or a generic term. Indeed, there is a dictionary

6

definition for the word “retainer” – i.e., “a device or structure that holds something in place.”

7

http://www.merriam-webster.com/dictionary/retainer (last visited November 27, 2013). Thus, the

8

term “retainer” does in fact recite sufficiently definite structure.

based on (1) an expert declaration4 and (2) a Federal Circuit case involving a similar claim term.

11
For the Northern District of California

In its papers, Asetek protests that the term does not connote sufficiently definite structure

10

United States District Court

9

Neither argument is availing.

12

First, Asetek has submitted a declaration from Dr. Donald E. Tilton, in which he states that,

13

“[i]n the field of mechanical engineering, the term ‘retainer’ could mean any one of a great

14

multitude of possible structures or mechanisms for retaining something in place. A ‘retainer’

15

without further description or explanation, does not connote any particular structure or class of

16

structures.” Docket No. 138-16 (Tilton Decl. ¶ 11). The Court, however, shall not entertain the

17

Tilton declaration because Asetek failed to identify Dr. Tilton as a witness in the parties’ Joint

18

Claim Construction and Prehearing Statement. See Pat. L.R. 4-3(e) (requiring parties to provide

19

information as to “[w]hether any party proposes to call one or more witnesses at the Claim

20

Construction Hearing, the identity of each such witness, and for each witness, a summary of his or

21

her testimony, including for any expert, each opinion to be offered related to claim construction”).

22
23
24
25
26

3

But see Flo Healthcare, 697 F.3d at 1374 (noting that “the generic term ‘mechanism’
standing alone may connote no more structure than the term ‘means’” but that “surrounding claim
language further defining the mechanism can add sufficient structure to avoid a § 112 ¶ 6
construction”).
4

27
28

See Lighting World, 382 F.3d at 1358 (noting that “[t]he task of determining whether the
limitation in question should be regarded as a means-plus-function limitation, like all claim
construction issues, is a question of law for the court, even though it is a question on which evidence
from experts may be relevant”).

13

1

Even if the Court were to consider the Tilton declaration, it still would not dictate a

2

conclusion that the “retainer” limitation is a means-plus-function limitation for two reasons:

3

(1)

Under Federal Circuit case law, a claim term denotes sufficiently specific structure not only

4

if the term is used by persons of skill in the pertinent art to designate structure but also if the

5

term is used in common parlance, see Lighting World, 382 F.3d at 1359-60, and here

6

“retainer” is used in common parlance as indicated by the above dictionary definition; and

7

(2)

Dr. Tilton’s declaration seems premised on an incorrect understanding of Federal Circuit

8

law. Cf. id. at 1359, 1363 (criticizing expert opinion for applying an unduly restrictive

9

standard).
Second, Asetek relies on Aspex Eyewear, Inc. v. Altair Eyewear, Inc., 288 Fed. Appx. 697

11
For the Northern District of California

United States District Court

10

(Fed. Cir. 2008), to support its contention that the “retainer” limitation in the case at bar should be

12

deemed a means-plus-function limitation. But Aspex is distinguishable from the instant case. In

13

Aspex, the issue was whether the claim term “retaining mechanism” was a means-plus-function

14

limitation. Clearly, the term “retaining mechanism” is not one that appears in a dictionary (as

15

opposed to “retainer”). And the fact that the generic term “mechanism” was part of the claim term –

16

indeed, it was the subject noun – was an important factor in the court’s decision to construe the

17

claim term as a means-plus-function limitation: “Here, ‘mechanism’ is a generic term, and its

18

modifier, ‘retaining,’ is also quite broad, meaning ‘to hold back, keep, restrain.’” Id. at 703.

19

Compare Greenberg v. Ethicon Edon-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996) (holding that §

20

112 ¶ 6 did not apply to the claim limitation “detent mechanism” because dictionary definitions

21

established that “the noun ‘detent’ denotes a type of device with a generally understood meaning in

22

the mechanical arts”).

23

Moreover, Aspex is an unpublished case, and therefore is not binding precedent. Indeed,

24

more recent Federal Circuit authority suggests that Aspex should be limited to its facts. In Flo

25

Healthcare, the court considered whether the claim term “height adjustment mechanism” should be

26

deemed a means-plus-function limitation. “Mechanism” is clearly a generic term and “adjustment”

27

seems just as broad a term as “retaining.” Nevertheless, the Federal Circuit held that the claim term

28

“height adjustment mechanism” was not a means-plus-function limitation. “Dictionary definitions .

14

1

. . show that the noun ‘adjustment,’ which modifies ‘mechanism’ here, has a reasonably well

2

understood meaning as a name for a structure.” Flo Healthcare, 697 F.3d at 1374 (citing the

3

Random House Unabridged Dictionary).

4

To the extent Asetek relies on Federal Circuit cases other than Aspex, those cases are not of

5

any real substantive support. See Docket No. 16 (Resp. Br. at 16) (citing Mas-Hamilton Group v.

6

LaGard, Inc., 156 F.3d 1206 (Fed. Cir. 1998), and MIT, 462 F.3d at 1344). Notably, those cases

7

involved claims terms that incorporated generic terms – “element” in Mas-Hamilton and

8

“mechanism” in MIT. Furthermore, the Federal Circuit has expressly deemed Mas-Hamilton an

9

“exceptional case.” Lighting World, 382 F.3d at 1362 (emphasizing how “unusual the
circumstances” were in Mas-Hamilton).

11
For the Northern District of California

United States District Court

10

Finally, it is worth noting (as CoolIT points out) that, in a post-Aspex decision, Judge

12

Seeborg of this District found that the claim term “retainer device” was not a means-plus-function

13

limitation. See Aqua-Lung Am., Inc. v. American Underwater Prods., Inc., No. C 07-2346 RS, 2009

14

U.S. Dist. LEXIS 18172, at *19-23 (N.D. Cal. Feb. 26, 2009).

15

Accordingly, the Court rejects Asetek’s contention that the “retainer” limitation is a means-

16

plus-function limitation. The Court also declines to construe the term further than its plain and

17

ordinary meaning.

18

D.

19
20
21
22
23
24

“flow path through the pump inlet into the reservoir, past the resiliently compressible
member and out the port into the impeller chamber”

CoolIT

Asetek

Court

plain and ordinary meaning

a flow path in which coolant
flows through the pump inlet
first into the reservoir,
contacts the resiliently
compressible member, and
then flows out the port into the
impeller chamber

plain and ordinary meaning

25
26
27

CoolIT objects to Asetek’s proposed construction on the ground that it imposes a limitation –
i.e., a specific sequence or order – that is not suggested by the claim language. See Docket No. 146

28

15

1

(Reply at 8) (asserting that the “claim language merely sets forth three activities”). According to

2

Asetek, its construction is supported by the prosecution history, but that argument is not persuasive.

3

The history on which Asetek relies is the same as that referenced in Part III.D, supra. More

4

specifically, in a response to an office action from the PTO, the patent applicant amended then-claim

5

34, stating as follows:

6

Independent claim 34 has been amended to clarify that the
coolant circuit defines a coolant flow path through the reservoir: in
through an inlet, past the member and out through a port, which is
separate from the inlet. This provides the benefit that coolant flows
directly through the reservoir and into contact with the compressible
member on every circuit. For example, any bubbles that become
entrained in the coolant are moved directly with the coolant flow into
the reservoir, where they can be retained. Further, in such a system,
the reservoir containing the compressible member cannot become
isolated from the pump circuit.

7
8
9

11
For the Northern District of California

United States District Court

10

12

Docket No. 138-4, at 6 (Smyth Decl., Ex. C) (response). The above language does not necessarily

13

require a specific flow sequence as limited by Asetek’s construction. For example, under Asetek’s

14

construction, coolant would first come in through an inlet and only thereafter contact the resiliently

15

compressible member; but based on the prosecution history (as well as the claim language), it is not

16

clear that coolant coming through an inlet could not at the same time contact the compressible

17

member as it enters the reservoir. The plain language of the claim already describes a flow path;

18

nothing more is needed.

19

The Court therefore declines to construe the term any further other than its plain and ordinary

20

meaning.

21

///

22

///

23

///

24

///

25

///

26

///

27

///

28

///

16

1
2
3
4
5
6
7
8
9

E.

“reservoir”

CoolIT

Asetek

Court

region of the integrated
element/housing not in normal
fluid flow and available to
accommodate fluid expansion;

a fluid compartment within the
inner chamber that contains
the resiliently compressible
member

a receptacle or chamber for
holding a liquid or fluid

or, alternatively,
fluid containing portion of the
device that includes a region
not in the normal fluid flow
and available to accommodate
fluid expansion
For the term “reservoir,” both parties have submitted somewhat problematic constructions.

11
For the Northern District of California

United States District Court

10

For example, Asetek’s construction is problematic largely because it replicates surrounding claim

12

language. For example, claim 1 of the ‘456 patent makes clear that a reservoir is within the inner

13

chamber and contains the resiliently compressible member. See ‘456 patent, claim 1 (describing a

14

“computer cooling system comprising,” inter alia, “a pump including a housing defining therein an

15

inner chamber . . . , the inner chamber including at least an impeller chamber and a reservoir” and “a

16

resiliently compressible member in the reservoir”). CoolIT’s construction also contains a

17

redundancy to the extent it refers to accommodation of fluid expansion. See ‘456 patent, claim 1

18

(providing that the resiliently compressible member in the reservoir “is compressible in response to

19

expansion of the liquid coolant”).

20

To the extent CoolIT argues that a construction of “reservoir” should at the very least include

21

a “not in normal fluid flow” limitation, the Court is not persuaded. In its papers, CoolIT failed to

22

point to any intrinsic record support, including the specification, for this limitation. The Court

23

acknowledges that, at the hearing, CoolIT suggested for the first time that the part of the reservoir

24

not in normal fluid flow is the space occupied by the resiliently compressible member. But, notably,

25

CoolIT did not foreclose the possibility that a resiliently compressible member could be a porous

26

sponge5 in which case the area occupied by the member could be a part of the fluid flow. And in

27
5

28

CoolIT simply stated that the preferred embodiment for the compressible member was a
closed cell foam.

17

1

any event, the construction that the Court adopts does not foreclose CoolIT from arguing that the

2

space occupied by the resiliently compressible member may in certain embodiments have no fluid

3

flow. There is no need to so define “reservoir” as incorporating that particular embodiment.

4

The Court adopts the dictionary definition of the term “reservoir”; although it is extrinsic

5

evidence, it is entirely compatible with the intrinsic evidence of record. See, e.g., ‘456 patent, col.

6

1:5-7 (stating that “an expansion/reservoir vessel is used to store the pump fluid”). Furthermore,

7

CoolIT indicated at the hearing that it would not object to this construction, and the dictionary

8

definition is also consistent with Asetek’s construction.

9

F.

11
For the Northern District of California

United States District Court

10

12
13

“loose in the inner chamber”

CoolIT

Asetek

Court

not adhered to the inner
chamber

not tightly fitted in the inner
chamber

not secured in the inner
chamber

The term “loose in the inner chamber” appears in claim 7 of the ‘456 patent: “7. The

14

computer cooling system of claim 1 wherein the resiliently compressible member is loose in the

15

inner chamber.”

16
17
18
19
20
21
22
23
24
25
26

CoolIT’s construction is closer to the mark rather than Asetek’s, though not perfect. The
specification provides in relevant part as follows:
Member 20 may be secured to the housing or may be loose in a
chamber in the pump circuit. However, it is desired that the member
remain substantially in position without blocking fluid flow through
the pump circuit or the chamber in which it is positioned. Thus, in one
embodiment member 20 may be secured to the housing inner walls
defining the inner chamber. For example, the member may be
fastened directly to the housing inner walls by adhesive 50 applied at
interfacing surfaces, interlock, fasteners, etc. Alternately or in
addition, a retainer may be formed or positioned within the chamber to
hold the member in a positing away from moving out of the chamber
or into a blocking position against the fluid ports. For example, in the
illustrated embodiment, protrusions such as ridges 52 and spacer are
positioned to retain member in a spaced relation from inlet 14 and
port 28, even if member 20 is or becomes loose in the reservoir
chamber. In addition, or alternately, member 20 may be selected to be
large enough, such as by forming as one piece and/or with
consideration as to the sizes of any ports to the chamber in which it is
positioned, such that it cannot pass through any ports.

27
28

18

1

‘456 patent, col. 3:48-67 (emphasis added). The first sentence above reflects that the resiliently

2

compressible member is loose when it is not secured. CoolIT uses the term “not adhered” rather

3

than “not secured,” but that is too narrow given that, as reflected by the excerpt above, using an

4

adhesive is only one example of how the member may be secured to the housing walls.

5

Asetek’s proposed construction is largely dependent on what it claims is the commonly

6

understood meaning of loose. But notably, even the dictionary definition it provides has as the first

7

definition of loose “not rigidly fastened or securely attached.” Docket No. 138-15 (Smyth Decl., Ex.

8

M). Also, Asetek admits in its brief that loose can also mean “having relative freedom of

9

movement” and not just “not tight fitting.” Docket No. 138 (Resp. Br. at 23). And in any event, a
dictionary definition – because extrinsic evidence – should not take precedence over the

11
For the Northern District of California

United States District Court

10

specification which is intrinsic evidence.

12

G.

13
14

“urge against”

CoolIT

Asetek

Court

touching

pushes against

press against

15
16

The term “urge against” appears in claim 14 of the ‘456 patent: “14. The computer cooling

17

system of claim 1 wherein the resiliently compressible member and the retainer urge against each

18

other regardless of a degree of expansion or contraction of the cooling liquid.” It appears that

19

“urge” is not used anywhere in the specification – i.e., the term shows up only in claim 14.

20

Here, CoolIT takes the position that “urge against” should simply be construed as touching

21

because “[t]he purpose of the retainer, as described in the specification, is to secure the resiliently

22

compressible member in the inner chamber to avoid the resiliently compressible member [from]

23

interfering with fluid flow or blocking the ports.” Docket No. 125 (Op. Br. at 13-14). Asetek in

24

turn contends that “the term ‘urge’ requires more than mere touching; it requires force.” Docket No.

25

138 (Resp. Br. at 24). According to Asetek, this is consistent with the dictionary definition of the

26

word “urge”; furthermore, mere touching is not enough for the retainer to hold the resiliently

27

compressible member in place.

28

19

1

The Court concludes that Asetek has the better position. First, the dictionary definition does

force or impel in an indicated direction or into motion or greater speed”). Although CoolIT

4

contends that the dictionary definition should be given little to no weight because it is extrinsic

5

evidence, such a definition is consistent with the language of the claims themselves, and nothing

6

suggests one practiced in the art would have interpreted the term in a manner not consistent with

7

common parlance. Furthermore, if “urge against” simply meant touch, then it would be odd not to

8

use language similar to that in claim 1, which describes a “retainer . . . configured to hold the

9

resiliently compressible member in a position away from moving out of the inner chamber or into a

10

position blocking fluid flow through the pump.” ‘456 patent, claim 1 (emphasis added). By using

11
For the Northern District of California

support Asetek. See Docket No. 138-15 (Smyth Decl., Ex. M) (defining “urge” as, inter alia, “to

3

United States District Court

2

“urge” instead of “hold” or “touch,” there is a suggestion that there is more than mere touching.

12

However, “push” – as suggested by Asetek – appears extreme. A better term that conveys the same

13

overall meaning consistent with both intrinsic and extrinsic evidence is “press.”

14

IV.

15

CONCLUSION

The disputed claim terms of the patents-in-suit are hereby construed as set forth above.

16
17

IT IS SO ORDERED.

18
19

Dated: December 3, 2013

20

_________________________
EDWARD M. CHEN
United States District Judge

21
22
23
24
25
26
27
28

20