Appeals from the United States Patent and Trademark Office,
Patent Trial and Appeal Board in Nos. PGR2016-00011,
C. O'Quinn, Kirkland & Ellis LLP, Washington, DC,
argued for appellant. Also represented by Gregg Locascio,
William H. Burgess, Noah Samuel Frank, Calvin Alexander
J. Feldstein, Finnegan, Washington, DC, argued for appellees.
Also represented by Erin Sommers, Mark D. Sweet.
Newman, Reyna, and Hughes, Circuit Judges.
appeals from a pair of post-grant review proceedings
involving a single Honeywell patent. Following institution,
Honeywell sought authorization from the Board to file a
motion for leave to petition the Patent and Trademark Office
Director for a Certificate of Correction to correct the
challenged patent. Honeywell sought to correct a mistake in
the chain of priority listed on the face of the patent. The
Board rejected Honeywell's request. Because we conclude
that the Board abused its discretion in rejecting
Honeywell's request for authorization to file a motion
for leave, we vacate and remand.
International Inc. ("Honeywell") owns U.S. Patent
No. 9,157,017 ("the '017 patent"), which is
directed to fluoroalkene compounds used in refrigeration
systems and other applications. The '017 patent issued on
October 13, 2015, and recites a chain of priority
applications dating back to 2002, all of which were
incorporated by reference into the '017 patent.
prosecution of the '017 patent, Honeywell filed a
preliminary amendment that cancelled all 20 claims recited in
the original application and added 20 new claims directed to
admittedly different subject matter: automobile air
conditioning systems. In the proceedings below, Honeywell
asserted for the first time that when it made the preliminary
amendment, it inadvertently failed to make corresponding
amendments to the list of priority applications. J.A.
156:10–13 (asserting an "inadvertent error in
failing to make a claim of priority to [certain] sister
chains of cases that we could have made at that time").
As a result, when the '017 patent issued, the list of
priority applications listed on the face of the patent was
materially the same as the initial application.
months after the '017 patent issued, Arkema Inc.
("Arkema") filed two petitions for post-grant
review ("PGR") of the '017 patent with the
Patent Trial and Appeal Board ("Board") of the
Patent and Trademark Office ("PTO"). Both petitions
asserted that the priority applications listed on the face of
the '017 patent did not provide written description
support for the issued claims. As a result, Arkema argued,
the claims of the '017 patent were only entitled to a
priority date of March 26, 2014-the filing date of the
application that led to the '017 patent-rather than the
2002 priority date that would result if the priority chain
adequately supported the claims.
on that contention, Arkema argued that the '017 patent
was eligible for PGR proceedings, which are available only
for patents having at least one claim with an effective
filing date on or after March 16, 2013. Arkema also presented
several prior art references, including work ...