Director's Finding of Error Results in Board Reanalysis and (Second) Institution Denial

Holding

In Mahle Behr Charleston Inc. v. Frank Amidio Catalano, the Board again denied institution on remand despite the Director determining the Board erred in its initial denial. On remand, the Board addressed the Director’s instructions to construe the relevant limitation and found that the petitioner’s inherency arguments based on prior art figures were unlikely to prevail in establishing prior disclosure of a certain dimension-based claim limitation.

Background

Mahle filed an IPR petition challenging Catalano’s claims 12, 15-17, 19-29, 31-40, and 42-47 of U.S. Patent No. RE47,494 based on anticipation and obviousness grounds. Catalano’s claims required “placing a sacrificial anode within 10 inches of a hot liquid inlet to a radiator,”[1] which Mahle argued was disclosed or suggested based on figures within the prior art references, Godefroy and Hanazaki ’196. In denying institution, the Board relied on a Federal Circuit decision, Hockerson-Halberstadt Inc. v. Avia Group Int’l, Inc., which held that “patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”[2]

However, after reviewing the Board’s denial, the Director vacated and remanded for further analysis. The Director concluded that the Board erred in applying Hockerson-Halberstadt because expert testimony stated that “at least an upstream edge of the sacrificial anode 14 is explicitly shown at the inlet” of Figure 1 in Godefroy, and that a drawing may be relied upon for what it clearly demonstrates. The Director instructed the Board to reconsider whether the claimed dimensions were discernable from the prior art drawings in light of Mahle’s expert testimony. In addition, the Director suggested that the Board first define its interpretation of the claim limitation and use that to consider how this decision could impact other asserted grounds.

Analysis

On remand, the Board reevaluated the prior art grounds by first addressing the issue of claim construction. The Board construed the limitation of “within 10-inches of a hot liquid inlet” to mean “within 10 inches of the center axis of a hot liquid inlet to the radiator” based on intrinsic evidence and Mahle’s expert testimony. However, the Board again rejected each of Mahle’s arguments as failing to establish that the cited figures disclosed or suggested that the sacrificial anode be placed within 10 inches of the center axis of the hot liquid inlet. In re-analyzing the prior art figures, the Board emphasized that Godefroy is silent on the dimensions of the relevant components and the expert testimony lacked sufficient reasoning to provide such details. Thus, the Board again denied institution because Mahle failed to show that the cited references would prevail in rendering Catalano’s claims unpatentable.

Takeaways

This decision highlights the difficulty of relying on patent drawings to invalidate dimension-based claim limitations. Petitioners should carefully consider the strength of their prior art mappings against such dimension-based limitations and whether additional references are required to establish that a prior art drawing meets the dimension-based limitation. Patent Owners should consider arguments attacking prior art references that are silent on dimension-based limitations and expert testimony that fails to provide sufficient reasoning to render such limitations obvious.

Endnotes

[1] IPR2023-00861, Paper 18 (May 24, 2024).

[2] See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951,956 (Fed. Cir. 2000).