ASETEK Danmark A/S v. CMI USA, Inc.
100 F. Supp. 3d 871
N.D. Cal.2015Background
- Asetek sued CMI (Cooler Master products) for infringement of U.S. Patent Nos. 8,245,764 (’764) and 8,240,362 (’362); a jury in Dec. 2014 found infringement and awarded damages.
- The patents claim a closed-loop liquid-cooling pump head having a single reservoir divided into an upper (pump) chamber and a lower (thermal-exchange) chamber bounded by a removable cold plate.
- CMI argued invalidity at various stages (anticipation, obviousness, indefiniteness, lack of written description) relying on prior art Koga, Ryu, and Laing; it moved for summary judgment on anticipation/obviousness (denied) but did not pursue written-description/indefiniteness at trial.
- At trial each side presented one expert (Asetek’s Dr. Tilton, CMI’s Dr. Carman); the jury credited Asetek on prior-art scope and found the prior art did not disclose a dual-chamber single reservoir and found objective indicia of non-obviousness.
- Post-trial, CMI sought to pursue written-description and indefiniteness arguments focused on the term “substantially circular.” The court held CMI waived those defenses by failing to present evidence at trial and by removing jury instructions/verdict questions, and alternatively found CMI failed to meet its burden on the merits.
Issues
| Issue | Plaintiff's Argument (Asetek) | Defendant's Argument (CMI) | Held |
|---|---|---|---|
| Obviousness of asserted claims (’764 and ’362) | Prior art does not disclose a single reservoir with distinct upper (pump) and lower (thermal) chambers; secondary considerations (commercial success, copying, praise) support non-obviousness | Combination of Koga, Ryu, and Laing would render claims obvious; motivation to combine existed | Court: Claims not obvious — CMI failed to prove by clear and convincing evidence that prior art disclosed/suggested all claim limitations; jury findings and objective indicia support non-obviousness |
| Anticipation (related to ’764) | Prior art (Koga) is single-chambered and does not disclose separate thermal-exchange chamber | Koga anticipates claimed structures (including sucking channel as thermal exchange) | Court: Koga does not disclose required dual-chamber reservoir or thermal-exchange chamber; anticipation not proven |
| Written-description adequacy (term “substantially circular”) | Specification and prosecution history, plus expert testimony, support that POSITA would understand the term and the claimed invention | Specification fails to describe “substantially circular”; patents thus lack adequate written description | Court: Waived — CMI withdrew objection at trial and presented no evidence; court declines to reach substance; alternatively, CMI failed to carry burden |
| Indefiniteness (term “substantially circular”) | Claims read with specification are sufficiently certain to a POSITA | Term is indefinite under 35 U.S.C. § 112(b) and Nautilus standard | Court: Waived for failure to present at trial; alternatively, no clear-and-convincing proof of indefiniteness absent expert evidence and jury factfinding |
Key Cases Cited
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (framework and caution against hindsight in obviousness analysis)
- Graham v. John Deere Co., 383 U.S. 1 (1966) (Graham factual inquiries for obviousness)
- Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (written-description legal standard)
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) (indefiniteness requires claims inform with reasonable certainty)
- Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358 (Fed. Cir. 2008) (importance of objective indicia as probative evidence in obviousness analysis)