Asetek Danmark A/S v. Cmi USA Inc.
842 F.3d 1350
Fed. Cir.2016Background
- Asetek sued Cooler Master Co., Ltd. (Taiwan) and Cooler Master USA, Inc. (CMI) in 2013 for infringement of U.S. Patents Nos. 8,240,362 and 8,245,764 relating to integrated liquid-CPU cooling units with a two-chamber reservoir and removable heat-exchanging interface.
- Cooler Master (Taiwan) was dismissed with prejudice by stipulation shortly before trial; CMI proceeded to trial and was found liable (direct and contributory infringement) and not invalid, with damages of $404,941 based on a 14.5% reasonable royalty.
- The district court entered a permanent injunction covering specified Cooler Master–branded products and named both CMI and Cooler Master (despite Cooler Master’s prior dismissal), plus obligations to notify customers and include notice with sales/shipping.
- CMI and Cooler Master appealed challenges to infringement findings, obviousness, damages, and the injunction’s scope (including whether Cooler Master—never adjudicated infringing—could be enjoined in its own capacity).
- The Federal Circuit affirmed liability, non‑invalidity, and damages, rejected noninfringement and obviousness arguments, but remanded the injunction issue insofar as it restrains Cooler Master’s independent conduct not merely aiding or abetting CMI.
Issues
| Issue | Plaintiff's Argument (Asetek) | Defendant's Argument (CMI / Cooler Master) | Held |
|---|---|---|---|
| Infringement of ’362 ("removably attached") | Asetek: accused heat‑exchanging interfaces are removably attached under ordinary meaning and evidence. | CMI: removal would damage or render products nonfunctional; thus not "removably attached." | Held: Affirmed infringement; substantial evidence supported jury (components removable by unscrewing; functionality after reattachment not required). |
| Obviousness of ’764 over Koga/Ryu | Asetek: claimed thermal-exchange chamber is not taught by Koga. | CMI: Koga's sucking channel exchanges heat and thus meets "thermal exchange chamber." | Held: Affirmed non‑obviousness; district court’s factual finding that Koga does not teach that element is not clearly erroneous. |
| Damages (14.5% royalty) | Asetek: royalty derived from hypothetical negotiation, including Asetek profits and comparable licenses. | CMI: Reliance on Asetek’s per‑unit profit (Corsair deal) was improper; Corsair had 7% max royalty so 14.5% unsupported. | Held: Affirmed. Using patentee profit as factor in reasonable‑royalty is permissible; expert considered other factors and Corsair license produced effective 10–19% range. |
| Injunction reach to non‑party Cooler Master | Asetek: injunction should bind Cooler Master based on relationship with CMI (exclusive distribution, joint development). | Cooler Master: dismissed with prejudice pretrial so cannot be enjoined for independent future conduct; injunction overreaches under Rule 65(d). | Held: Remanded. Affirmed injunction insofar as it bars CMI and those acting "in active concert or participation"; remanded for further fact‑specific findings before sustaining injunction provisions that restrain Cooler Master’s independent, non‑abetting conduct. |
Key Cases Cited
- Pavao v. Pagay, 307 F.3d 915 (9th Cir.) (standard for JMOL review)
- Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314 (Fed. Cir.) (jury instructions and ordinary-meaning claim application)
- Dorel Juvenile Group, Inc. v. Graco Children’s Products, Inc., 429 F.3d 1043 (Fed. Cir.) (interpretation of “removably attached” in context)
- Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir.) (hypothetical negotiation framework for reasonable royalty)
- Rite‑Hite Corp. v. Kelley Co., 56 F.3d 1538 (Fed. Cir.) (patentee profits as factor in royalty)
- Regal Knitwear Co. v. NLRB, 324 U.S. 9 (1945) (limits on injunctive reach to non‑parties)
- Golden State Bottling Co. v. NLRB, 414 U.S. 168 (1973) (successor/privity and Rule 65(d) context)
- Additive Controls & Measurement Sys., Inc. v. Flowdata, Inc., 96 F.3d 1390 (Fed. Cir.) (non‑party injunctions; limits on enjoining nonparties in their separate capacity)
- Aevoe Corp. v. AE Tech Co., 727 F.3d 1375 (Fed. Cir.) (modifying injunction to reach nonparty in concert with enjoined party)
- Taylor v. Sturgell, 553 U.S. 880 (2008) (preclusion principles and exceptions relevant to "day in court" concerns)