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Patent Owner Unable To Dodge PGR Due To Inadequate Written Description – Patent



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U.S. Patent No. 9,157,017 (“the ‘017 Patent”) is
assigned to Honeywell International Inc. (“Honeywell”)
and is titled, “Compositions Containing Fluorine Substituted
Olefins and Methods and Systems Using Same.” The detailed
description indicates that a preferred use of the disclosed
compounds is in refrigeration systems. Each independent claim of
the ‘017 Patent expressly recites the use of the claimed
subject matter in an automobile air conditioning system (AAC), a
discrete technical field within the broader confines of heating and
cooling applications. A priority chain leading to the ‘017
Patent includes a series of divisional applications containing
substantively identical disclosures, the earliest filing date of
which belongs to U.S. Patent Application No. 10/837,525 (“the
‘525 application”), filed April 29, 2004. In September
2016, the PTAB instituted post-grant review of claims 1-20 of the
‘017 Patent in response to dual challenges from French chemical
manufacturer Arkema Inc. and Arkema France (collectively,
“Arkema”). In November 2016, Honeywell requested
authorization to correct the priority date of the ‘017 Patent.
Honeywell had contended that it unintentionally excluded additional
priority applications in the patent’s priority chain. After the
PTAB denied the request and held all claims of the ‘017 Patent
unpatentable, Honeywell appealed the Final Decision to the Federal
Circuit. The Federal Circuit vacated the Final Written Decision,
holding that the PTAB abused its discretion in denying the request
to correct the priority date, as that decision is properly left to
the director. The Federal Circuit remanded and instructed the PTAB
to provide Honeywell an opportunity to seek a Certificate of
Correction.

On remand, Honeywell filed, and the PTAB granted, a Motion for
Leave to Request a Certificate of Correction. But the Petitions
Branch of the Patent Office denied Honeywell’s Request for a
Certificate of Correction, only allowing the possibility of the
‘017 Patent claiming priority to an application formally
specified in the priority chain. A claim to an earlier filing date
could allow Honeywell to elude Arkema’s unpatentability
challenge based on prior public use. Arkema had contended that the
claimed subject matter of the ‘017 Patent was already in public
use prior to the patent’s March 26, 2014 filing date. According
to Arkema, the chemical HFO-1234yf and polyalkylene glycol (PAG)
lubricant recited in the claims was used in four vehicle models
since as early as 2012. Such public use of the claimed invention
would render the patent invalid under 35 U.S.C. § 102(a)(1),
which prohibits patents for inventions that were “in public
use . . . before the effective filing date of the claimed
invention.” At oral argument, Honeywell conceded that the
claims are invalid if the patent has a 2014 filing date.

However, Honeywell asserted that the patent is entitled to the
2004 priority date of the ‘525 application-the first
application in the ‘017 Patent’s priority chain to
explicitly reference AAC. A proper claim of priority to the
‘525 application would allow the claims to predate the public
use by the vehicle models. Furthermore, a 2004 priority date would
result in the ‘017 Patent being ineligible for post-grant
review; only patents with an effective filing date on or after
March 16, 2013 are eligible for such a proceeding.

The parties disputed whether the claims of the ‘017 Patent
were sufficiently supported by the 2004 application to properly
claim priority. To claim priority to an earlier application,
“the claims of the later-filed application must be supported
by the written description in the parent in sufficient detail that
one skilled in the art can clearly conclude that the inventor
invented the claimed invention as of the filing date sought.”
Arkema Inc. & Arkema France v. Honeywell Int’l
Inc.
, PGR2016-00011 & PGR2016-00012, Paper 62, 29 (PTAB
Aug. 25, 2022) (citing Anascape, Ltd. v. Nintendo of Am.
Inc.
, 601 F.3d 1333, 1335 (Fed. Cir. 2010)). Without
sufficient support in the earlier application, the ‘017 Patent
would simply be accorded its actual 2014 filing date. According to
Honeywell, the claims were sufficiently described by the disclosure
of the 2004 application. They noted that the ‘017 Patent
explicitly states that its methods, systems, and compositions are
adaptable for use in AAC systems and devices. Thus, Honeywell
argued, the disclosure “would tell a skilled artisan that the
inventors possessed methods and compositions for automobile air
conditioning.” Id. at 31-32 (citing PGR12 Resp. 26 at
27). However, Arkema asserted that the disclosure was insufficient
to support the ‘017 Patent claims because “[t]his mere
passing reference to AAC lacks disclosure or guidance as to how one
would adapt for use in connection with AAC.” Id. at
31 (citing PGR12 Paper 7, 26).

Ultimately, the PTAB agreed with Arkema that the
claims were not sufficiently supported by the ‘525
application
. The PTAB relied in part on statements made by
Honeywell during prosecution of the application that resulted in
the ‘017 Patent. Specifically, Honeywell had indicated during
prosecution that the field of AAC has “a combination of
stringent and unique technical requirements, including numerous
properties and characteristics that are not predictable.”
Id. (quoting Ex. 1049, 6­­­-7). The PTAB
proceeded to find that “the ‘525 application does not
contain the detailed disclosure needed in this case to reasonably
convey possession of a heat-transfer composition . . . for use in
AAC.” Id. at 37. The PTAB concluded that the ‘017
Patent had an effective filing date of March 26, 2014 and was thus
eligible for post-grant review. The PTAB then addressed
Arkema’s unpatentability contentions and found that claims 1-20
were unpatentable for anticipation under 35 U.S.C. §
102(a)(1): “Accordingly, we find that Petitioner’s
evidence, together with Patent Owner’s concessions,
demonstrates by a preponderance of evidence that the claimed
subject matter of the ‘017 Patent was in commercial use before
its March 26, 2104, effective filing date.” Id. at
55.

Takeaway

Parties should be sure to sufficiently describe all aspects of
their invention when drafting a patent application. Furthermore,
parties should be careful in their representations made to the
Patent Office during prosecution and consider potential reliance by
the PTAB on these remarks. Failure to do so can have detrimental
ramifications in post-grant proceedings.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

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