Thermalloy Inc. v. Aavid Eng. CV-93-16-JD 03/15/96 P UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

Thermalloy Incorporated

v. Civil No. 93-16-JD

Aavid Engineering, Inc.

O R D E R

The plaintiff, Thermalloy Incorporated ("Thermalloy")a

brings this patent action alleging that the defendant, Aavid

Engineering, Inc. ("Aavid"), infringed Letters Patent No.

4,884,331, Method for Manufacturing Heat Sink Apparatus ("the

'331 patent"). Before the court is the defendant's motion for

summary judgment based on the invalidity of the patent and for

attorney fees under

(document no. 47).

Background1

Thermalloy is a Nevada corporation with its headguarters in

Dallas, Texas. Thermalloy develops, manufactures, and sells

thermal management devices for use in electronic eguipment.

During the mid-1980's Howard Hinshaw, a Thermalloy employee,

developed a commercially practical method of manufacturing heat

1The court's recitation of the facts relevant to the instant motion are either not in dispute or have been alleged by the plaintiff. sink devices. The devices dissipate heat using multiple closely

or densely spaced pins extending from the base of the device.

Hinshaw, with Thermalloy as assignee, filed an application for a

letters patent for the method of manufacturing heat sink devices

in April 1987.

On December 5, 1989, the United States Patent Office granted

Hinshaw Patent No. 4,884,331, Method of Manufacturing Heat Sink

Apparatus. Since issuance, Thermalloy has been the sole and

exclusive owner of all rights, title, and interest in the patent.

Using the method claimed in the patent, Thermalloy began to

manufacture and sell heat sinks with densely spaced pins,

commonly known in the industry as "pin fin" heat sinks. Sometime

thereafter, Aavid, one of Thermalloy's competitors, also began

selling pin fin heat sinks. Thermalloy believed that Aavid was

unlawfully using the process described in the '331 patent to make

its pin fin heat sinks.

On August 7, 1992, Thermalloy filed a patent infringement

complaint in the United States District Court for the Northern

District of Texas. Following transfer to this court, Aavid

answered the complaint and filed a counterclaim against

Thermalloy seeking a declaratory judgment concerning the validity

and scope of the claims of the '331 patent and a declaratory

judgment that Aavid had not infringed the '331 patent.

2 In response to a discovery request, Aavid produced two

documents which it alleged constituted "prior art" that would

render the claims of the '331 patent invalid under

Neither document produced by Aavid had been reviewed by

the Patent and Trademark Office ("PTO") during its original

examination of Hinshaw's application. Because of the newly

discovered prior art, Thermalloy requested reexamination of the

patent and submitted the publications to the PTO.3 The court

stayed this action pending the outcome of the reexamination

proceeding.

In its request for reexamination of the '331 patent,

Thermalloy informed the PTO that the patent was the subject of

provides, in pertinent part, A person shall be entitled to a patent unless -- (a) the invention was . . . patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country . . . more than one year prior to the date of application for patent in the United States.

provides, in pertinent part:

Any person at any time may cite to the Office in writing prior art consisting of patents or printed publications which that person believes to have bearing on the patentability of any claim of a particular patent.

3 this infringement action and that Aavid had discovered the two

"prior art" references and asserted that they rendered the patent

invalid. The Commissioner of Patents determined that the new

references raised a "substantial new question of patentability"

of the subject matter of the '331 patent within the meaning of

(a) and, in turn, ordered reexamination of the '331

patent as provided by

. Upon reexamination, the

patent examiner concluded that "[c]laims 2-4, and 14-21 are

patentable over the art of record." Aavid's Memorandum in

Support of Summary Judgment, Exhibit E, Reasons for

Patentability/Confirmation.

During the reexamination, the patent examiner cancelled

claim 1 of the original '331 patent. Claim 1 was the only

independent claim of the original patent. The examiner further

required that the patentee amend claim 2 to form an independent

claim. The patentee also amended claims 3 and 4 to depend

properly from the new independent claim 2. The patentee added

claims 14-21 during the reexamination proceeding, and these

claims were renumbered and appear as claims 5-12 in the

reexamination certificate issued by the PTO on May 3, 1994.

4 The instant motion for summary judgment followed, alleging

that Thermalloy impermissibly broadened the claims of the '331

patent during reexamination.

Discussion

The court may only grant a motion for summary judgment where

the "pleadings, depositions, answers to interrogatories, and

admissions on file, together with the affidavits, if any, show

that there is no genuine issue of material fact and that the

moving party is entitled to a judgment as a matter of law." Fed.

R. Civ. P. 56(c). Summary judgment is appropriate in a patent

case where no genuine issue of material fact exists and the

movant is entitled to judgment as a matter of law. See Conroy v.

Reebok Int'l, Ltd.,

(Fed. Cir. 1994); Paragon

Podiatry Lab., Inc. v. KLM Labs., Inc.,

(Fed.

Cir. 1993); Becton Dickinson and Company v. C.R. Bard, Inc.,

(Fed. Cir. 1990); Barmag Barmer Maschinenfabrik AG

v. Murata Machinery, Ltd.,

(Fed. Cir. 1984).

The party seeking summary judgment bears the initial burden

of establishing the lack of a genuine issue of material fact.

Celotex Corp. v. Catrett,

(1986). However,

once the defendant has submitted a properly supported motion for

summary judgment, the plaintiff "may not rest upon mere

5 allegation or denials of [the defendant's] pleading, but must set

forth specific facts showing that there is a genuine issue for

trial." Anderson v. Liberty Lobby, Inc.,

(1986) (citing Fed. R. Civ. P. 56(e)). Where there is no issue

of material fact in dispute, the district court may take

undisputed evidence into consideration in reaching legal

conclusions. See Barmag Barmer Maschinenfabrik A G ,

. In such situations, "[n]o purpose would be served by a

trial since only the correctness of the legal conclusion is being

attacked."

Patents are presumed valid, and the party asserting

invalidity bears the burden of rebutting this presumption,

(West 1984 & Supp. 1995), and must do so by clear

evidence. American Hoist & Derrick Co. v. Sowa & Sons,

(Fed. Cir.), cert, denied,

(1984). The

court considers all evidence bearing on the validity of the

patent, regardless of whether it was considered by the PTO in

issuing the patent. Id. Where the patent in suit has been

reexamined by the PTO under

, "the

presumption of validity remains unaltered," and the challenger

must ultimately prove facts under a clear and convincing standard

to support the conclusion that the reexamined patent is invalid.

6 Kaufman Co., Inc. v. Lantech, Inc.,

(Fed.

Cir. 198 6).

The central issue before the court is the defendant's claim

that the '331 patent is invalid under

. Section

305 provides, in pertinent part, that "[n]o proposed amended or

new claim enlarging the scope of a claim of the patent will be

permitted in a reexamination proceeding under this chapter."

(West 1984 & Supp. 1995). The Federal Circuit

recently recognized that a defendant in an infringement action

may assert that a violation of

renders the claims

of a patent invalid and, therefore, unenforceable. Quantum Corp.

v. Rodime PLC,

(Fed. Cir. 1995). The

determination of whether claims have been enlarged is a matter of

claim construction and is treated as a guestion of law.

at

1580 .

The test to determine if a claim has been impermissibly

broadened during reexamination is the same as that used to

determine whether a claim has been impermissibly broadened during

reissue.

at 1582 n.4. An amendment made during

reexamination enlarges the scope of the claim if resultant

changes are "substantive so that the scope of the claims is no

longer substantially identical to the originally issued claims."

Quantum Corp. v. Rodime PLC,

(D. Minn.

7 1994) (citing Slimfold Mfg. Co. v. Kinkead Indus.,

(Fed. Cir. 1987)). "An amended or new claim is enlarged if it

includes within its scope any subject matter that would not have

infringed the original patent." Quantum,

(citing

In re Freeman,

(Fed. Cir. 1994)).

The court determines which inventions are covered by the

claims of a patent. Markman v. Westview Instruments, Inc.,

(Fed. Cir.), cert, granted (1995). When

determining the meaning of the disputed claims, the court must

consider the claims, the specification, and the prosecution

history of the patent. Quantum,

(citing Carroll

Touch, Inc. v. Electro Mechanical Svs., Inc.,

(Fed. Cir. 1993)). The claim language will be given its ordinary

meaning to one of skill in the art unless the inventor "appeared

to use [the claim language] differently."

(citing Hoqanas AB

v. Dresser Indus., Inc.,

(Fed. Cir. 1983)).

Aavid asserts that Thermalloy removed critical limitations

from the original claims, resulting in reexamination claims that

were broader than the original claims of the '331 patent.4 The

4Claim 1 of the original patent, which was cancelled during reexamination, claimed:

1. The method of forming a unitary heat sink metal body for use in removal of heat from a heat generating electronic device package comprising the step of aana sawing a first claim changes in question involve (1) the removal of the

limitation that the fins are formed so that the ratio of the

height of the parallel fins to the width of the parallel grooves

is at least six to one, and (2) the forming, rather than the gang

sawing, of a predetermined number of parallel grooves of a

predetermined height and width.

predetermined number of parallel grooves having a first predetermined width and a first predetermined depth into a first surface of a metal body of heat conducting material along a first dimension thereof to form a predetermined number of parallel fins of a predetermined height and width, whereby the ratio of the height of said parallel fins to the width of said parallel grooves is at least six to one and the width of said fins is no greater than the width of said grooves.

Claim 2 of the reexamined patent claims:

2. The method of making a unitary heat sink metal body for use in removal of heat from a heat generating electronic device package comprising the steps of forming a first predetermined number of deep parallel grooves having a first predetermined width and depth in a first surface of a metal body of heat conducting material along a first dimension thereof to produce a predetermined number of thin parallel fins of predetermined height and width unsupported and separated only by said deep grooves wherein the width of said fins is no greater than the width of said deep grooves; and, while said fins are unsupported and separated only by said deep grooves, gang sawing a second predetermined number of parallel grooves having a second predetermined depth and a second predetermined width across and through said predetermined number of parallel fins to form pins. 1. The Whereby Clauses

The first disputed claim change is the removal of the

limitation of the fin height to groove width ratio which appeared

in original claim 1, but did not appear in reexamined claim 2.

In Texas Instruments v. U.S. Int'l Trade Comm'n, the Federal

Circuit made clear that " [a] whereby clause that merely states

the result of the limitations in the claim adds nothing to the

patentability or substance of the claim."

, 1172

(Fed. Cir. 1993). The court noted that the whereby clauses at

issue did not contain any limitations that were not otherwise

inherent in the claims. Id. The terms of the whereby clause

must be regarded as an essential feature of the invention when a

whereby clause is used to distinguish the invention over the

prior art during prosecution of the patent. Eltech Svs. v. PPG

Indus. Inc.,

(W.D. La. 1988), aff'd

(Fed. Cir. 1990). Terms contained in whereby clauses

can evolve into essential features of the invention during the

prosecution of the patent and, once essential, they constitute

necessary limitations. See

An accused product lacking such

an essential feature does not infringe the patent.

(citing

Aircraftsmen, Inc. v. Aircraft Equip. Co.,

, 47 8

(S.D. Fla. 1965), aff'd

(5th Cir. 1967)).

10 It is clear from the prosecution history that Hinshaw used

the terms of the whereby clause to overcome the prior art. In

particular, on page four of his brief to the Board of Patent

Appeals and Interferences, Hinshaw asserted that "[t]he claim

specifically limits this process to forming parallel grooves and

fins wherein the ratio of height of the fin to the width of the

groove is at least six to one" Aavid's Memorandum in Support of

Summary Judgment, Exhibit I at 4 (emphasis added). Likewise, in

an attempt to overcome another prior art reference, Hinshaw

asserted that the "pillars" described in the prior art "must meet

two further criteria to meet the definition of the [Hinshaw]

claim [1]. The pin height to groove width ratio must be at least

6:1." Id. at 4-5 (emphasis added). Finally, Hinshaw argued at

the time that the prior art references cited by the examiner in

rejecting the claims of his application do not "suggest making

heat sinks with 6:1 fin height to groove width ratios." Id. at

10 .

Because Hinshaw consistently argued during the prosecution

of his patent application that the prior art lacked the six to

one height to width ratio, the court finds that when the patent

containing the whereby clause ultimately issued, the ratio in the

whereby clause was an essential element of the invention. As an

essential element, the terms of the whereby clause are

11 interpreted as a limitation on the scope of the patent that was

granted. Thus, the scope of original claim 1 must be read to

include the six to one fin height to groove width ratio as a

necessary limitation.

The scope of the original claim 1 only included heat sinks

formed using the claimed process with fin height to groove width

ratios equal to or greater than six to one. Heat sinks with fin

height to groove width ratios of less than six to one were not

within the scope of the original claim 1. Significantly, the

claims which issued in the reexamination certificate do not

include any such limitation on the fin height to groove width

ratio. That is, the scope of the reexamined claims includes heat

sinks with fin height to groove width ratios of less than six to

one, a class of heat sink specifically disclaimed in the scope of

original claim 1. Therefore, the court rules as a matter of law

that the undisputed facts demonstrate by clear and convincing

evidence that the scope of the reexamined claims is enlarged over

the scope of the original patent and that the reexamined patent

is invalid under

5The six to one fin height to groove width ratio does not appear in any of the claims added during reexamination, claims 5- 12, either in independent or dependent form. Thus, as a matter of law claims 5-12 cannot survive the reexamination process and are unenforceable. Moreover, to the extent that the plaintiff seeks to recover damages for infringement of the '331 patent for the period

12 2. Gang Sawing v. Forming

The second disputed amendment in the reexamined claims is

the addition of a "forming" step. The original claim 1 claimed a

method with only the single step of "gang sawing a first

predetermined number of parallel grooves having a first

predetermined width and a first predetermined depth into the

first surface of a heat conducting material along a first

dimension thereof." Aavid's Memorandum in Support of Summary

Judgment, Exhibit A, Patent for Method of Manufacturing Heat Sink

Apparatus. Reexamined claim 2 includes gang sawing a predeter­

mined number of parallel grooves similar to the step in original

claim 1 and also includes a predecessor step of forming a

predetermined number of parallel grooves. Aavid argues that the

addition of the predecessor forming step impermissibly broadens

the scope of the claim. Thermalloy responds that the original

claim 1 does not distinguish between gang sawing across a flat

between the issue date of the original patent and the issue date of the reexamination certificate, recovery is barred because the claims of the original patent and the reexamination patent are not legally identical in scope. That is, because the claims in the reexamination certificate are enlarged over the original patent claims, the patentee has no rights to enforce before the date of reexamination certificate because "the original patent was surrendered and is dead." See Kaufman Co., Inc. v. Lantech, Inc.,

; Tennant Co., v. Hako Minuteman, Inc., 878 F .2d 1413, 1417 (Fed. Cir. 1989).

13 surface or across parallel grooves and that the initial formation

of the parallel grooves was implicit in the original claim 1 and

patent specification.

The process of original claim 1 comprises "the step of gang

sawing a first predetermined number of parallel grooves having a

first predetermined width and a first predetermined depth into a

first surface of a metal body." The original claim 1 is not

limited to parallel grooves that are formedsolely by gang

sawing, although some portion of the depth of the parallel

grooves must be formed by gang sawing. Some portion of the

parallel grooves may be formed by some other process, e.g.,

extrusion, before completing the process by gang sawing the

grooves to a predetermined width and depth.

The court reads the claims in light of the specification.

E.g., Raytheon v. Roper Corp.,

(Fed. Cir. 1983)

cert, denied,

(1984); Autogiro Co. of America v.

United States,

(Ct. Cl. 1967) . The

specification of the original patent includes several embodiments

of the invention disclosed by Hinshaw. In one embodiment the

heat sink apparatus comprises a heat sink body formed by

extrusion having a predetermined number of parallel fins which

extend outwardly from the heat sink body. These parallel fins

have a fin height to groove width ratio of approximately four to

14 one. These fins are then sawed to a second predetermined depth

to provide a fin height to groove width ratio of at least six to

one. Aavid's Memorandum in Support of Summary Judgment, Exhibit

A, Patent for Method of Manufacturing Heat Sink Apparatus. This

embodiment plainly involves formation of a first set of parallel

fins using extrusion before completing the process by sawing.

The invention of original claim 1, when read in concert with

the patent specification, includes pin fin heat sinks in which

parallel fins are initially formed by methods other than gang

sawing. The court finds that the addition during reexamination

of the predecessor step of "forming a first predetermined number

of deep parallel grooves" does not result in reexamination claim

2 encompassing any more inventions than encompassed by the

original claim 1.

3. Doctrine of Equivalents

Thermalloy also asserts that the scope of the claims of the

original '331 patent includes all eguivalent inventions under the

doctrine of eguivalents. Based on this reasoning, Thermalloy

concludes that the amendments made during reexamination merely

stated the eguivalents which would have been within the scope of

the original claims.

15 The doctrine of equivalents cannot be used to enlarge the

scope of the claims. Wilson Sporting Goods v. David Geofferv &

Assoc.,

(Fed. Cir.), cert, denied,

(1990). The purpose of the doctrine of equivalents is to

"prevent[] a copyist from evading patent claims with

insubstantial changes." Valmont Indus., Inc. v. Reinke Mfg. Co.

Inc.,

(Fed. Cir. 1993). "[A] patentee should

not be able to obtain, under the doctrine of equivalents,

coverage which he could not lawfully have obtained from the PTO

by literal claims." Wilson Sporting Goods,

.

The doctrine of equivalents is applicable only where there

is an alleged infringing device or process. Wilson Sporting

Goods,

. It is the existence of an allegedly

infringing device or process that allows the court to interpret

the claims "beyond any permissible interpretation of the claim

language" to achieve a fair and just result.

"The claims --

i.e., the scope of the patent protection as defined by the claims

-- remain the same and application of the doctrine of equivalents

expands the right to exclude to 'equivalents' of what is

claimed."

(emphasis in original). By definition, the

doctrine of equivalents does not involve the expansion of the

scope of the claims.

Moreover, the doctrine of equivalents

only expands the right to exclude the equivalents of the patent

16 claim which are actually embodied in an existing device or

process.

If an allegedly infringing process existed after the '331

patent issued but before the reexamination certificate issued,

the doctrine of eguivalents could only have expanded the right of

the patentee to exclude that particular process and no others.

Significantly, the existence of a process found to infringe the

original claims of the '331 patent under the doctrine of

eguivalents would not have expanded the scope of the original

claims. Therefore, the court finds that Thermalloy cannot use

the doctrine of eguivalents to expand the scope of the original

claims of the '331 patent to create the appearance that the

reexamined claim encompasses the same scope as the original

claim.

4. Attorney Fees

Aavid has reguested attorney fees under

,

which provides that "[t]he court in exceptional cases may award

reasonable attorney fees to the prevailing party." An award of

attorney fees is within the discretion of the district court.

Cambridge Products, Ltd. v. Penn Nutrients, Inc.,

(Fed. Cir. 1992). The party seeking attorney fees must

demonstrate by clear and convincing evidence that the nature of

17 the case is "exceptional."

Exceptional cases where the

accused infringer prevails typically arise where the accused

infringer can show bad faith or ineguitable conduct by the

patentee.

. Where a party to a litigation shows that

the opposing party demonstrated bad faith or intentional

misconduct, he may be entitled to attorney fees under

.

Aavid has failed to adduce specific evidence to support its

contention that Thermalloy breached its duty of good faith in the

reexamination proceedings,

(West 1984 & Supp.

1995), or otherwise acted in bad faith. Accordingly, the court

finds that Aavid has failed to demonstrate by clear and

convincing evidence that this is an exceptional case for which

attorney fees should be awarded.

Conclusion

The court finds the '331 patent to be invalid. The

defendant's motion for summary judgment (document no. 47) is

granted. The defendant's reguest for attorney fees under

is denied. This order resolves the dispute pending

18 between the parties. The clerk shall enter final judgment and

close this case.

SO ORDERED.

Joseph A. DiClerico, Jr, Chief Judge March 15, 1996

cc: Jack Alton Kanz, Esquire Charles A. Szypszak, Esquire Allan D. Rosenthal, Esquire John Skenyon, Esquire Michael M. Lonergan, Esquire

19