`571.272.7822
`
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`
`
`
` Paper No. 80
` Date: March 9, 2022
`
`
`
`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.
`____________
`
`PGR2016-00011
`PGR2016-000121
`Patent 9,157,017 B2
`____________
`
`
`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`GRACE KARAFFA OBERMANN, and SHELDON M. MCGEE,
`Administrative Patent Judges.
`
`MCGEE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 We use our discretion to issue a single Order to be entered in each case
`using a joint caption. The parties are not permitted to use the joint caption
`unless previously authorized by the Board. For convenience, we use the
`paper and exhibit numbers from PGR2016-00011.
`
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
` BACKGROUND
`These proceedings are on remand from the United States Court of
`Appeals for the Federal Circuit. See Honeywell Int’l Inc. v. Arkema Inc.,
`939 F.3d 1345 (Fed. Cir. 2019) (vacating the Board’s Final Written Decision
`and remanding proceedings to the Board). The Federal Circuit instructed us
`to “authorize Honeywell to file a motion seeking leave to petition the
`Director for a Certificate of Correction.” Id. at 1351.
`
`Pursuant to the Federal Circuit’s mandate, we gave our authorization,
`and Patent Owner filed its Motion for Leave to Request a Certificate of
`Correction. Paper 61. After additional briefing from the parties was
`complete, we granted Patent Owner’s Motion. Papers 71, 74, 76, 77.
`
`On May 5, 2020, Patent Owner filed its Request for a Certificate of
`Correction, as well as a Petition to Accept [Unintentionally] Delayed Claim
`to Priority under 35 U.S.C. § 120 and 37 C.F.R. § 1.78. On May 6, 2020,
`Patent Owner supplemented these filings with supporting documents.
`
`On February 15, 2022, the Petitions Branch of the Office entered its
`Decision, dismissing Patent Owner’s Petition. Ex. 3006 (“Dismissal”).
`
`On February 22, 2022, Patent Owner emailed the Board, informing
`the panel that it intended to “petition the Director under 37 CFR § 1.181 for
`review of that dismissal,” and requested that the Board “stay any certificate
`of cancellation under 37 C.F.R. § 42.80 until the Director acts upon
`Honeywell’s petition.” Ex. 3007.
`
` DISCUSSION
`35 U.S.C. § 328(b) provides:
`If the Patent Trial and Appeal Board issues a final written
`decision . . . and the time for appeal has expired or any appeal
`
`2
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`has terminated, the Director shall issue and publish a certificate
`canceling any claim of the patent finally determined to be
`unpatentable, confirming any claim of the patent determined to
`be patentable, and incorporating in the patent by operation of the
`certificate any new or amended claim determined to be
`patentable.
`
`
`This statute does not authorize the Board to issue a certificate of
`
`cancellation because our final written decision of August 31, 2017 was
`vacated. Honeywell, 939 F.3d at 1351. Thus, prior to issuing a certificate
`of cancellation, we must first enter a final written decision in these
`proceedings.
`
`To the extent Patent Owner wishes us to delay issuance of a new final
`written decision while the Director evaluates Patent Owner’s Petition to
`reconsider the February 15, 2022 Dismissal, we direct Patent Owner to file
`such Petition within two weeks of this Order. We also direct Patent Owner
`to inform the Board of such filing, by email to trials@uspto.gov, and to file
`its Petition as an exhibit in this proceeding.
`If Patent Owner fails to take these actions within two weeks of this
`Order, the panel may exercise its jurisdiction and authority under 37 C.F.R.
`§ 42.3(a) to issue a new final written decision in these proceedings.
`
`
`
`
`
`
`
`
`3
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`
`Accordingly, it is
`ORDERED that Patent Owner shall file its Petition to the Director
`under 37 C.F.R. § 1.181 to reconsider the February 15, 2022 Dismissal no
`later than March 23, 2022;
`FURTHER ORDERED that Patent Owner shall inform the Board of
`such filing and files the Petition as an exhibit in this proceeding no later than
`March 23, 2022.
`
`
`
`
`
`
`4
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`PETITIONER:
`
`Mark Sweet
`Mark Feldstein
`Erin Sommers
`Charles Mitchell
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER LLP
`mark.sweet@finnegan.com
`mark.feldstein@finnegan.com
`erin.sommers@finnegan.com
`charles.mitchell@finnegan.com
`
`PATENT OWNER:
`
`Gregg LoCascio
`Noah Frank
`KIRKLAND & ELLIS LLP
`glocascio@kirkland.com
`noah.frank@kirkland.com
`
`
`
`5
`
`
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