Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper No. 11
`
` Entered: September 2, 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
`Patent 9,157,017 B2
`____________
`
`
`Before MICHAEL P. TIERNEY, GRACE KARAFFA OBERMANN, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`TIERNEY, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`
` Paper No. 11
`
` Entered: September 2, 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
`Patent 9,157,017 B2
`____________
`
`
`Before MICHAEL P. TIERNEY, GRACE KARAFFA OBERMANN, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`TIERNEY, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2016-00643
`Patent 9,157,017 B2
`I.
`INTRODUCTION
`Arkema, Inc. and Arkema France (“Petitioner”), filed a Petition
`
`requesting an inter partes review of claims 1–20 of U.S. Patent 9,157,017
`B2 (Ex. 1001, “the ’017 patent”). Paper 3 (“Pet.”). Patent Owner,
`Honeywell International, (“Patent Owner”) did not file a Preliminary
`Response to the Petition. We have jurisdiction under 35 U.S.C. § 324.
`
`For the reasons set forth below, upon considering the Petition, we
`conclude that the information presented in the Petition fails to establishes a
`reasonable likelihood that the ’017 patent is eligible for inter partes review.
`
`2
`
`
`
`IPR2016-00643
`Patent 9,157,017 B2
`A. Related Proceedings
`The ’017 patent claims the benefit of a series of applications, the
`earliest of which was filed on October 25, 2002. Ex. 1001, 1:5–25. The
`’017 patent priority chain is depicted below:
`
`
`Id. Although Patent Owner has not asserted the ’017 patent in any currently
`pending proceedings, several applications in the priority chain have been
`
`3
`
`
`
`IPR2016-00643
`Patent 9,157,017 B2
`asserted and undergone reexamination. Patent Owner Mandatory Notices,
`Paper 8, 1–3.
`The ’017 patent also has been challenged in PGR2016-00011 and
`PGR2016-00012. Pet. 3.
`
`
`B. The ’017 Patent
`The ’017 patent is directed to the use of fluorine substituted olefins,
`including tetra-, and penta-fluoropropenes, in a variety of applications.
`Ex. 1001, Abstract. For example, the fluorine substituted olefins are
`described as having use in methods of depositing catalysts, sterilizing
`articles, cleaning methods, applying medicaments, fire extinguishing, flavor
`formulations and inflating agents. Id. Although not mentioned in the ’017
`patent abstract, the specification states that a preferred aspect of the
`invention is directed to refrigerant compositions comprising at least one
`multi-fluorinated olefin. Id. at Field of the Invention, 1:29-34.
`Preferred fluorinated substituted olefins include compounds having
`the Formula I, XCFzR3-z, “where X is a C2 or a C3 unsaturated, substituted
`or unsubstituted, alkyl radical, each R is independently Cl, F, Br, I or H, and
`z is 1 to 3.” Id. at 3:45-50. The ’017 patent also states that preferred
`compositions include compounds of Formula II, depicted below:
`
`
`“where each R is independently Cl, F, Br, I or H[,] R' is (CR2)nY, Y is CRF2
`and n is 0 or 1.” Id. at 4:10-21. The patent goes on to state that “[i]n highly
`preferred embodiments, Y is CF3, n is 0 and at least one of the remaining Rs
`
`4
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`IPR2016-00643
`Patent 9,157,017 B2
`is F.” Id. at 22–23. Hence, given that R can independently be F, Cl, Br, I or
`H, with at least one R being F, even the highly preferred embodiments of the
`invention according to Formula II encompass a significant number of
`substituted fluoro-propenes. The specification goes on to state that, in
`“certain highly preferred embodiments” the compositions comprise one or
`more tetrafluoropropenes and identifies HFO-1234ze (1,3,3,3-
`tetrafluoropropene) as particularly preferred. Id. at 4:58–63. Of note, the
`specification does not clarify what is meant by “certain” highly preferred
`embodiments comprise tetrafluoropropenes, although the discussion appears
`after a discussion of “highly preferred embodiments” having low toxicity
`where n is zero.
`The compositions of the ’017 patent, “particularly those comprising
`HFO-1234ze,” are said to not have a substantial negative affect on
`atmospheric chemistry with a Global Warming Potential (GWP) of
`preferably less than 500 and an Ozone Depletion Potential (ODP) of not
`greater than 0.05. Id. at 5:38–6:4.
`Low toxicity is said to be an advantageous property and the
`specification states that it was “surprisingly and unexpectedly found that
`certain of the compounds having a structure in accordance with the formulas
`described above [formulas I and II] exhibit a highly desirable low level of
`toxicity compared to other such compounds. Id. at 4:39–43. The
`specification states that “applicants believe that a relatively low toxicity
`level is associated with compounds of Formula II, preferably wherein Y is
`CF3, wherein at least one R on the unsaturated terminal carbon is H, and at
`least one of the remaining Rs is F.” Id. at 4:48–53. The specification goes
`on to state that in highly preferred embodiments, n is zero. Id. at 4:56–58.
`
`5
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`IPR2016-00643
`Patent 9,157,017 B2
`Another property of particular importance in many applications is
`lubricant compatibility. Id. at 1:23–24. The specification states that it is
`highly desirable for refrigeration fluids to be compatible with the lubricant.
`Id. at 2:25–27. Lubricants tend to become clogged in evaporator coils and
`reduce system efficiency in the absence of solubility of the lubricant in the
`refrigeration liquid over a wide range of temperatures. Id. at 2:32–42.
`The specification describes a number of potential uses for the
`fluorinated olefin compositions. Heat transfer compositions are
`contemplated and it is generally preferred that refrigerant compositions
`comprise compounds in accordance with Formula I, and more preferably
`with Formula II, and even more preferably HFO-1234ze, in an amount of at
`least 50% by weight and more preferably at least about 70% by weight of
`the composition. Id. at 6:30–40. The ’017 specification states that in “many
`embodiments, it is preferred that the heat transfer compositions of the
`present invention comprise trans-HFO-1234ze.” Id. at 6:40–42. The
`specification also states that refrigerant compositions, especially those in
`vapor compression systems, include a lubricant in an amount from about 30
`to about 50% by weight of the composition. Id. at 6:48–55. Commonly
`used refrigerant lubricants include polyol esters (POEs) and polyalkylene
`glycols (PAGs), silicone oil, mineral oil, alkyl benzenes and poly(alpha-
`olefins). Id. at 6:64-7:3. The specification states that it is believed that
`compositions of the invention are adaptable for use in many existing
`refrigeration systems with or without modification. Id. at 7:4–8. In certain
`embodiments it is preferred to use compositions, particularly compositions
`comprising a substantial proportion of, and in some embodiments consisting
`essentially of trans-HFO-1234ze, as a replacement for existing refrigerants,
`such as HFC-134a. Id. at 7:16–20. The specification further states that:
`
`6
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`
`
`IPR2016-00643
`Patent 9,157,017 B2
`The present methods, systems and compositions are thus
`adaptable for use in connection with automotive air
`conditioning systems and devices, commercial refrigeration
`systems and devices, chillers, residential refrigerator and
`freezers, general air conditioning systems, heat pumps, and the
`like.
`
`
`Id. at 7:38–43.
`
`
`C. Illustrative Claim
`The ’017 patent contains twenty claims, all of which are challenged
`by Petitioner. All of the claimed methods and compositions require a heat
`transfer composition with a low toxicity refrigerant suitable for use in an
`automobile air conditioning system that consists essentially of 2,3,3,3-
`tetrafluorpropene (HFO-1234yf). Ex. 1049, 6. Additionally, all the claims
`require a lubricant that consists essentially of polyalkylene glycol(s)(PAG).
`Id. Additionally, each claim is directed to a specific heat transfer
`application, automobile air conditioning. Id. Independent claim 1 is
`illustrative of the challenged claims and is reproduced below:
`1. A method for producing an automobile air
`conditioning system for use with 2,3,3,3-tetrafluoropropene
`(HFO-1234yf) comprising:
`(a) providing an automobile vapor compression air
`conditioning system usable with refrigerant 1,1,1,2-
`tetrafluoroethane (HFC-134a) and having at least one
`compressor and at least one condenser; and
`(b) providing a heat transfer composition in said system,
`said heat transfer composition consisting essentially of:
`(i) at least about 50% by weight of a low toxicity
`refrigerant suitable for use in automobile air conditioning
`systems, said refrigerant consisting essentially of HFO-1234yf;
`and
`
`(ii) lubricant consisting essentially of polyalkylene
`glycol(s), and
`
`7
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`
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`IPR2016-00643
`Patent 9,157,017 B2
`wherein (1) said condenser is operable with said
`refrigerant in a temperature range that includes 150° F. and (2)
`said system when operating at a condenser temperature of 150°
`F. achieves a capacity relative to HFC-134a of about 1 and a
`Coefficient of Performance (COP) relative to HFC-134a of
`about 1.
`
`
`
`
`
`II. ANALYSIS – Inter Partes Review Eligibility
`A petition for inter partes review shall only be filed after 9 months
`after the grant of a patent, or if a post-grant review is instituted under chapter
`32, the date of the termination of such post-grant review. 35 U.S.C.
`§ 311(c). Similarly, our rules require that, if a patent is a patent described in
`section 3(n)(1) of the Leahy-Smith America Invents Act, a petition must be
`filed no earlier than nine months after the date of the grant of the patent.
`37 C.F.R. § 42.102(a)(1). Leahy-Smith America Invents Act (“AIA”), Pub
`L. No. 112-29, 125 Stat. 284 (2011). AIA section 3(n)(1) describes patents
`that issue from applications “that contain[] or contained at any time . . . a
`claim to a claimed invention that has an effective filing date in Section
`100(i) of title 35, United States Code, that is on or after” “the expiration of
`the 18-month period beginning on the date of the enactment of” the AIA.
`AIA § 3(n)(1). Because the AIA was enacted on September 16, 2011,
`section 3(n)(1) patents are those that issue from applications that at one point
`contained at least one claim with an effective filing date on or after March
`16, 2013, with “effective filing date” having the definition given to it by 35
`U.S.C. § 100(i).
`Petitioner, concurrent with the filing of this inter partes review, filed
`two post-grant reviews, PGR2016-00011 and PGR2016-00012, directed to
`the same claims of the ’017 patent that are challenged here. Based upon the
`
`8
`
`
`
`IPR2016-00643
`Patent 9,157,017 B2
`information presented in the post-grant reviews, we held in the post-grant
`reviews that Petitioner has established that the ’017 patent had an effective
`filing date of March 26, 2014, the filing date of the ’588 application from
`which the ’017 patent issued. Accordingly, based on the evidentiary records
`presented to date in the post-grant reviews, there is a more likely than not
`basis to conclude that the ’017 patent is a section 3(n)(1) patent for which no
`inter partes review may be filed until 9 months after the issuance of the
`patent, or until after the date of termination of the post-grant reviews.
`The ’017 patent issued on October 13, 2015. Ex. 1001. Petitioner
`filed the instant petition on February 22, 2016 and a corrected petition on
`February 26, 2016. As such, the instant petition was filed within 9 months
`of the grant of the ’017 patent and is not eligible for inter partes review.
`35 U.S.C. § 311(c), 37 C.F.R. § 42.102(a)(1).
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to the challenged claims 1–
`20 of the ’017 patent.
`
`
`
`
`
`
`
`9
`
`
`
`10
`
`IPR2016-00643
`Patent 9,157,017 B2
`
`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
`
`PATENT OWNER:
`
`Gregg F. LoCascio
`Eugene Goryunov
`Noah Frank
`glocascio@kirkland.com
`egoryunov@kirkland.com
`noah.frank@kirkland.com
`HON_PTAB_Service@kirkland.com
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