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Honeywell International Inc. v. Arkema Inc.

United States Court of Appeals, Federal Circuit

October 1, 2019

HONEYWELL INTERNATIONAL INC., Appellant
v.
ARKEMA INC., ARKEMA FRANCE, Appellees

          Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. PGR2016-00011, PGR2016-00012.

          John C. O'Quinn, Kirkland & Ellis LLP, Washington, DC, argued for appellant. Also represented by Gregg Locascio, William H. Burgess, Noah Samuel Frank, Calvin Alexander Shank.

          Mark J. Feldstein, Finnegan, Washington, DC, argued for appellees. Also represented by Erin Sommers, Mark D. Sweet.

          Before Newman, Reyna, and Hughes, Circuit Judges.

          Reyna, Circuit Judge.

         Honeywell 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.

         Background

         I. The '017 Patent

         Honeywell 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.

         During 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.

         II. Arkema's

         PGR2016-00012 and PGR2016-00011

         Four 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.

         Based 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 ...


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