Asetek Danmark A/S v. CMI USA Inc.
852 F.3d 1352
| Fed. Cir. | 2017Background
- Asetek sued Cooler Master Co., Ltd. (Taiwan) and Cooler Master USA, Inc. (CMI) asserting infringement of U.S. Patents 8,240,362 and 8,245,764 directed to integrated liquid‑cooling pump/reservoir/heat‑exchanger assemblies. Cooler Master (Taiwan) was dismissed with prejudice pre‑trial; CMI remained and was tried.
- The jury found CMI directly and contributorily liable for infringement, rejected invalidity defenses, and awarded $404,941 based on a 14.5% reasonable royalty. The district court denied post‑trial JMOL/new‑trial motions.
- The district court entered a permanent injunction covering specified Cooler Master‑branded products, and that injunction named both CMI and Cooler Master (the latter not adjudicated liable). Paragraphs required notice to affiliates, inclusion of the order in shipping/boxes, and barred making/importing/selling the listed products.
- Cooler Master (which later intervened) and CMI appealed liability, obviousness, damages, and the injunction’s scope as to Cooler Master. The Ninth Circuit affirmed liability, obviousness rulings, and damages.
- The Ninth Circuit vacated and remanded only the portion of the injunction that reaches Cooler Master’s conduct not amounting to abetting new violations by CMI, directing further fact‑finding on whether Cooler Master may be “legally identified” with or in active concert/participation with CMI under Rule 65(d).
Issues
| Issue | Plaintiff's Argument (Asetek) | Defendant's Argument (CMI / Cooler Master) | Held |
|---|---|---|---|
| Whether accused products infringe '362 ("removably attached" heat‑exchanging interface) | The interfaces are removable (screws) and thus meet ordinary meaning of "removably attached" | Removal would damage/unit become nonfunctional; screws not intended to be removed, so no removable coupling | Affirmed infringement; substantial evidence supports jury that interfaces were removable despite leakage or lack of intended removal |
| Whether asserted claims of '764 are obvious over Koga (is Koga’s "sucking channel" a "thermal exchange chamber") | Claimed chamber differs in purpose/structure; Koga’s channel not a thermal exchange chamber | Koga’s sucking channel exchanges heat and so anticipates/teaches the claim element | Affirmed district court; fact findings supported that Koga’s channel is not a "thermal exchange chamber" and appellants’ broad theory was rejected |
| Whether 14.5% reasonable royalty/damages verdict was supported | Royalty based on hypothetical negotiation considering Asetek’s profit history (Corsair license), market, scope, and other factors | Using Asetek’s per‑unit profit and Corsair deal (max 7%) was improper/predominant and undercuts verdict | Affirmed; use of patentee profit as a factor in hypothetical negotiation is permissible and jury had substantial evidence for 14.5% rate |
| Whether injunction may bind Cooler Master (non‑adjudicated party) and scope given Cooler Master’s pretrial dismissal with prejudice | Injunction valid as entered; Cooler Master’s commercial relationship with CMI justifies injunctive obligations | Dismissal with prejudice precludes imposing injunctional obligations for Cooler Master’s future conduct; injunction improper to the extent it reaches Cooler Master’s independent conduct not abetting CMI | Rejected dismissal‑based bar (future conduct is a different claim), but vacated/remanded the injunction only insofar as it reaches Cooler Master’s conduct that does not abet new CMI violations; further fact‑finding required under Rule 65(d) standards |
Key Cases Cited
- Golden State Bottling Co. v. NLRB, 414 U.S. 168 (U.S. 1973) (Rule 65(d) allows binding of successors when dependence/continuity justifies applying predecessor’s obligation)
- Regal Knitwear Co. v. NLRB, 324 U.S. 9 (U.S. 1945) (injunctions cannot punish independent actors; non‑liable parties may be bound when not acting independently)
- Aevoe Corp. v. AE Tech Co., Ltd., 727 F.3d 1375 (Fed. Cir. 2013) (Rule 65(d) covers aiders/abettors and privies; instructive on enjoining non‑liable related entities)
- Additive Controls & Measurement Sys., Inc. v. Flowdata, Inc., 96 F.3d 1390 (Fed. Cir. 1996) (successor/privity tests and substantial‑continuity factors for binding non‑parties under Rule 65(d))
- Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (framework for hypothetical‑negotiation reasonable‑royalty analysis)
- Rite‑Hite Corp. v. Kelley Co., 56 F.3d 1538 (Fed. Cir. 1995) (patentee’s profits are a proper factor in a hypothetical negotiation for reasonable royalty)