Federal Circuit Reverses PTAB Claim Construction, Reviving Cooling Patent

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday, March 7, vacated a decision of the Patent Trial and Appeal Board (PTAB) that had held unpatentable certain claims to CoolIT Systems, Inc.’s patent.

U.S. Patent 9,057,567 is titled “Fluid Heat Exchange Systems” and is directed to a system for fluid heat transfer to cool electronic devices. On appeal to the CAFC, CoolIT argued that the PTAB erred in construing one of the claim terms, “matingly engaged” and that even under the PTAB’s construction, the asserted prior art did not meet the matingly engaged limitation.

The relevant clause of the representative claim 1 reads:

“A heat exchange system comprising:….

    A housing member defining a first side and a second side, wherein the second
side defines a recessed region;
a compliant member matingly engaged with the second side of the housing
member,…..

CoolIT argued that the term “matingly engaged” should be construed as “mechanically joined or fitted together to interlock.” Asetek argued it should be construed as “joined or fitted together to make contact,” encompassing “[a]ll methods of joining or fixing two surfaces.” The Board ultimately thought CoolIT’s construction was too narrow and Asetek’s too broad, so “‘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,’” according to the CAFC’s opinion.

In it discussion, the court said the PTAB was right that  “[c]laim 1 does not encompass” all “type[s] of engagement. It requires a specific type of engagement: mating engagement.” However, continued the court, “from there, the Board’s analysis went awry.”

Among other issues, the CAFC said the Board’s finding that “nothing in [Asetek’s expert declarations] adequately justifies a plain and ordinary meaning-based construction that would encompass parts that are not, at the very least, fitted together,” “also found that the intrinsic evidence was consistent with the expert testimony that ‘matingly engaged’ ‘refers to parts that are fit together,’” and yet still did not use the phrase “join or fit together” in its ultimate construction. “We find that to be error,” wrote the CAFC.

After detailing how the PTAB erred in its analysis, the court proposed its own construction based on the record before it. “[W]e conclude that the correct construction of ‘matingly engaged’ should be ‘mechanically joined or fitted together,’” said the court. “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.”

The court thus reversed the Board’s construction, vacated its decision and remanded for further proceedings under the CAFC’s construction.

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