`571-272-7822
`
`
` Paper No. 9
`Entered: March 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARKEMA INC. and ARKEMA FRANCE,
`Petitioner,
`
`v.
`
`HONEYWELL INTERNATIONAL INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00643, Case PGR2016-00011, Case PGR2016-00012
`Patent 9,157,017 B21
`____________
`
`
`Before MICHAEL P. TIERNEY, GRACE KARAFFA OBERMANN, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues common to all three cases; therefore, we issue
`a single order to be entered in each case. The parties are not authorized to
`use this style heading for any subsequent papers.
`
`
`
`IPR2016-00643, PGR2016-00011, PGR2016-00012
`Patent 9,157,017 B2
`
`
`On February 22, 2016, Petitioner filed Petitions requesting inter
`partes review and post-grant review of claims 1–20 of U.S. Patent No.
`9,157,017 B2 (“the ’017 patent”). Paper 2.2 On February 23, Petitioner
`filed a second Petition requesting post-grant review of the ’017 patent. Case
`PGR2016-00011, Paper 2. On February 26, 2016, Petitioner filed Corrected
`Petitions in IPR2016-00643 and PGR2016-00011, without prior Board
`authorization. Paper 3. On March 1, 2016, the Board issued a Notice of
`Filing Date Accorded in each of the three proceedings, which set a due date
`of June 1, 2016 for Patent Owner’s preliminary responses. See Paper 4, 2.
`A conference call was held on March 29, 2015, among respective
`counsel for Petitioner and Patent Owner, and Judges Tierney, Obermann,
`and Ankenbrand. Patent Owner requested the call to: (1) request
`authorization to file motions to terminate PGR2016-00011 and PGR2016-
`00012 (collectively, “the PGR proceedings”), and (2) discuss the due date
`for Patent Owner’s preliminary responses in IPR2016-00643 and PGR2016-
`00011.
`During the call, Patent Owner argued that a motion to terminate the
`PGR proceedings was appropriate so that the Board could determine
`whether the ’017 patent was eligible for post grant review; that is, whether
`the ’017 patent is subject to the first inventor to file provisions of the Leahy
`Smith America Invents Act. Petitioner opposed Patent Owner’s request.
`We denied Patent Owner’s request for authorization, determining that the
`preliminary response was a more appropriate vehicle for Patent Owner to
`raise its argument. We explained further that permitting the motion to
`
`
`2 Citations are to IPR2016-00643 as representative unless otherwise
`indicated.
`
`
`
`2
`
`
`
`IPR2016-00643, PGR2016-00011, PGR2016-00012
`Patent 9,157,017 B2
`
`terminate would circumvent the preliminary response page limits, as well as
`disrupt the schedule in the proceedings.
`As to the second issue discussed, both Patent Owner and Petitioner
`agreed that Patent Owner would file a preliminary response to the Corrected
`Petition filed in each of IPR2016-00643 and PGR2016-00011, but sought
`clarification regarding the due date of each preliminary response. We
`determined that, given the circumstances, we would extend the due date for
`Patent Owner’s preliminary responses to June 6, 2016. We also reminded
`the parties of their obligation to request authorization before filing, inter
`alia, corrected papers.
`
`
`It is therefore
`ORDERED that Patent Owner’s request for authorization to file a
`
`motion to terminate PGR2016-00011 and PGR2016-00012 is denied; and
`
`FURTHER ORDERED that Patent Owner shall file its preliminary
`response to each of the Corrected Petitions no later than June 6, 2016.
`
`3
`
`
`
`
`
`
`
`IPR2016-00643, PGR2016-00011, PGR2016-00012
`Patent 9,157,017 B2
`
`FOR PETITIONER:
`Mark D. Sweet
`Mark J. Feldstein
`Erin M. Sommers
`Charles W. Mitchell
`mark.sweet@finnegan.com
`mark.feldstein@finnegan.com
`erin.sommers@finnegan.com
`charles.mitchell@finnegan.com
`Arkema_PTAB@finnegan.com
`
`
`
`FOR PATENT OWNER:
`
`Gregg F. LoCascio
`Eugene Goryunov
`Noah Frank
`glocascio@kirkland.com
`egoryunov@kirkland.com
`noah.frank@kirkland.com
`HON_PTAB_Service@kirkland.com
`
`
`
`4
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
