`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ARKEMA INC. AND ARKEMA FRANCE,
`Petitioner,
`
`v.
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`
`
`
`
`Trials@uspto.gov
`571.272.7822
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`
`
`
`
`
`Paper No. 82
`Entered: August 25, 2022
`
`HONEYWELL INTERNATIONAL INC.,
`Patent Owner.
`
`____________
`
`Case PGR2016-00011
`Case PGR2016-000121
`Patent 9,157,017 B2
`____________
`
`Before MICHAEL P. TIERNEY, Acting Deputy Chief Administrative Patent
`Judge, GRACE KARAFFA OBERMANN, and SHELDON M. MCGEE,
`Administrative Patent Judges.
`
`PER CURIAM.
`
`
`JUDGMENT
`Final Written Decision on Remand
`35 U.S.C. §§ 144, 328(a)
`
`1 Because resolution of issues common to both post-grant reviews
`resolves the outstanding disputes between the parties as to all challenged
`claims of the patent at issue, we exercise our discretion to issue a
`single Final Written Decision to be entered in each case.
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`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
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`I. INTRODUCTION
`In these post-grant reviews designated PGR2016-00011 (“PGR11”)
`and PGR2016-00012 (“PGR12”), Arkema Inc. and Arkema France
`(collectively, “Petitioner”) challenge the patentability of claims 1–20 of U.S.
`Patent No. 9,157,017 B2 (Ex. 10012, “the ’017 patent”), assigned to
`Honeywell International Inc. (“Patent Owner”). We have jurisdiction under
`35 U.S.C. § 6. For the reasons discussed below, we determine that
`Petitioner has shown by a preponderance of the evidence that claims 1–20
`(“the challenged claims”) are unpatentable. This Final Written Decision is
`issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.208.
`A. Procedural History
`Petitioner filed two Corrected Petitions for post-grant review of
`claims 1–20 of the ’017 patent. PGR11 Paper 3 (“PGR11 Pet.”); PGR12
`Paper 7 (“PGR12 Pet.”). On September 2, 2016, pursuant to 35 U.S.C.
`§ 324, we instituted post-grant reviews of claims 1–20 of the ’017 patent on
`certain grounds of unpatentability alleged in the Petitions. See PGR11 Paper
`13 (“PGR11 Dec. on Inst.”); PGR12 Paper 13 (“PGR12 Dec. on Inst.”).
`After institution, Patent Owner filed Patent Owner Responses. See
`PGR11 Paper 24 (“PGR11 Resp.”); PGR12 Paper 22 (“PGR12 Resp.”).
`And Petitioner filed Replies. PGR11 Paper 31 (“PGR11 Reply”); PGR12
`Paper 27 (“PGR12 Reply”). In PGR11, both parties filed motions to exclude
`evidence, and the briefing on those motions included oppositions and
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`2 Unless otherwise noted, all exhibits referenced in this Decision were
`entered into the record in both PGR11 and PGR12. For ease of reference,
`we refer to the exhibits filed in PGR12 only unless otherwise noted.
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`replies. See PGR11 Papers 36, 38, 41, 42, 45, 47, 50, 51, 52. Also in
`PGR11, Patent Owner filed Observations on Statements in Petitioner’s
`Reply following Board authorization. PGR11 Paper 40.
`The Board held a consolidated oral hearing on June 7, 2017. A
`transcript has been entered into the record. PGR11 Paper 53; PGR12 Paper
`33 (“Tr.”).
`After the consolidated oral hearing, we issued our Final Written
`Decisions which held claims 1–20 of the ʼ017 patent unpatentable. PGR11
`Paper 54; PGR12 Paper 34 (“first Final Decision”). Patent Owner filed a
`Notice of Appeal of the first Final Decision with the Court of Appeals for
`the Federal Circuit. PGR11 Paper 55; PGR12 Paper 35. In that Notice of
`Appeal, Patent Owner indicated that the issues on appeal may include, inter
`alia, “[w]hether the Board’s denial of Honeywell’s November 28, 2016
`request for authorization to file a motion seeking permission to file a
`Certificate of Correction to correct the series of applications in the ʼ017
`patent’s priority chain was arbitrary, capricious, an abuse of discretion, or
`otherwise not in accordance with law.” PGR11 Paper 55, 2; PGR12 Paper
`35, 2.
`On October 1, 2019, the Federal Circuit held that we “abused [our]
`discretion by assuming the authority that 35 U.S.C. § 255 expressly
`delegates to the Director: to determine when a Certificate of Correction is
`appropriate,” and vacated our Final Written Decision. Honeywell Int’l Inc.
`v. Arkema Inc., 939 F.3d 1345 (Fed. Cir. 2019). 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.
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`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. PGR11 Paper 61; PGR12 Paper 41. After additional briefing
`from the parties was complete, we granted Patent Owner’s Motion. PGR11
`Paper 77; PGR12 Paper 57. 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. PGR11
`Ex. 2174; PGR12 Ex. 2172.
`
` On February 15, 2022, the Petitions Branch of the Office entered its
`Decision, dismissing Patent Owner’s Petition. PGR11 Ex. 3006; PGR12
`Ex. 3006 (“Dismissal”). On March 15, 2022, Patent Owner subsequently
`filed another Petition under 37 C.F.R. § 1.182 to Hold the Final Written
`Decision in Abeyance Pending Patent Owner’s Petition under 37 C.F.R.
`§ 1.181 requesting reconsideration of the Petition’s Office Dismissal.
`PGR11 Ex. 2175; PGR12 Ex. 2175. On May 26, 2022, the Petitions Branch
`dismissed that further Petition. PGR11 Ex. 3008; PGR12 Ex. 3008. On July
`2, 2022, Patent Owner filed a “Second Renewed Petition for
`Reconsideration of Decision Denying Petition for Certificate of Correction.”
`Ex. 3009. That Petition was dismissed on August 25, 2022. Ex. 3010.
`As a result, the ’017 patent’s claim to priority is the same as when our
`first Final Decision issued.
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`B. Related Matters
`Petitioner filed a Corrected Petition for inter partes review of the ’017
`patent on February 26, 2016. The Board denied institution on the grounds
`presented in that Petition. Arkema Inc. v. Honeywell Int’l Inc., Case
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`IPR2016-00643 (PTAB Sept. 2, 2016) (Paper 11). In addition, both parties
`identify several proceedings in the United States and in the United States
`Patent and Trademark Office (“Office”) involving the ’017 patent and
`patents related to the ’017 patent, as well as several proceedings in other
`countries involving foreign counterparts to the ’017 patent and its related
`patents. PGR11 Pet. 3–7; PGR12 Pet. 2–3; PGR11 Paper 11, 1–4; PGR12
`Paper 11, 1–4.
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`C. The ’017 Patent
`The ’017 patent, titled “Compositions Containing Fluorine Substituted
`Olefins and Methods and Systems Using Same,” is directed to “the use of
`fluorine substituted olefins, including tetra- and penta-fluoropropenes, in a
`variety of applications.” Ex. 1001 (Abstract). Those applications, according
`to the ’017 patent, include “methods of depositing catalyst on a solid
`support, methods of sterilizing articles, cleaning methods and compositions,
`methods of applying medicaments, fire extinguishing/suppression
`compositions and methods, flavor formulations, fragrance formulations, and
`inflating agents.” Id. The written description of the ’017 patent states that a
`preferred use of the disclosed fluorine substituted olefins is in “refrigeration
`systems, and [in] methods and systems utilizing such compositions.” Id. at
`1:30–32.
`The ’017 patent explains that “[c]oncern has increased in recent years
`about potential damage to the earth’s atmosphere and climate” from “certain
`chlorine-based compounds” such as chlorofluorocarbons (CFCs) and
`hydrochlorofluorocarbons (HCFCs). Id. at 2:1–6. The ’017 patent states
`that these compounds are widely used in air-conditioning and refrigeration
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`systems, but have become “disfavored because of the ozone-depleting
`properties.” Id. at 2:6–9. Thus, the ’017 patent explains, there is “an
`increasing need for new fluorocarbon and hydrocarbon compounds and
`compositions” for refrigeration. Id. at 2:9–12. In particular, “it has become
`desirable to retrofit chlorine-containing refrigeration systems by replacing
`chlorine-containing refrigerants with non-chlorine-containing refrigerant
`compounds that will not deplete the ozone layer.” Id. at 2:12–16.
`But, the ’017 patent teaches, “any potential substitute refrigerant must
`also possess the properties present in many of the most widely used fluids,”
`including “excellent heat transfer properties, chemical stability, low- or no-
`toxicity, non-flammability and lubricant compatibility.” Id. at 2:17–22. Of
`these properties, lubricant compatibility and flammability are especially
`important properties. Id. at 2:23–24 & 52–53. Lubricant compatibility (or
`miscibility) “is of particular importance,” the ’017 patent explains, in that
`the substitute refrigerant must be “compatible with the lubricant utilized in
`the compressor unit[] used in most refrigeration systems.” Id. at 2:23–27.
`The ’017 patent states that the “lubricant should be sufficiently soluble in the
`refrigeration liquid over a wide range of operating temperatures.” Id. at
`2:35–37. Otherwise, the lubricant becomes viscous and “lodge[s] in the
`coils of the evaporator of the refrigeration, air-conditioning or heat pump
`system” and “thus reduce[s] the system efficiency.” Id. at 2:37–42. As to
`flammability, the ’017 patent states that “it is considered either important or
`essential in many applications . . . to use compositions [that] are non-
`flammable,” particularly in heat-transfer applications. Id. at 2:53–56.
`“Unfortunately,” the ’017 patent teaches, “many HFCs, which might
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`otherwise be desirable for use[] in refrigerant compositions are not
`nonflammable.” Id. at 2:61–63. The ’017 patent lists fluoroalkene 1,1,1-
`trifluoropropene (HFO-1243zf) as an example of a flammable compound.
`Id. at 2:63–67.
`The ’017 patent discloses “compositions comprising one or more C3
`or C4 fluoroalkenes, preferably compounds having Formula I as follows:
`XCzFR3-z (I)
`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
`3:40–50. The ’017 patent states that these compositions, referred to as
`“hydrofluoro-olefins or ‘HFOs,’” “satisf[y]” the “above-noted need[s].” Id.
`at 3:42–43; 4:1–2. The ’017 patent states that preferred compositions
`include compounds of Formula II, depicted below:
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`“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 ’017 patent states that
`“applicants have surprisingly and unexpectedly found that certain of the
`compounds having a structure in accordance with the[se] formulas . . .
`exhibit a highly desirable low level of toxicity compared to other of such
`compounds” of Formulas I and II. Id. at 4:29–33.
`The ’017 patent then describes the preferred compounds of Formula I
`and Formula II. First, the ’017 patent states that “applicants believe that a
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`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 R [groups] is F.” Id.
`at 4:38–42 (emphasis added). Next, the ’017 patent states that in “highly
`preferred embodiments,” “n is zero” and “the unsaturated terminal carbon
`has not more than one F substituent.” Id. at 4:45–48 (emphasis added).
`These compounds, the ’017 patent states, “have a very low acute toxicity
`level.” Id. at 4:48–50. Finally, the ’017 patent states that, in “certain highly
`preferred embodiments,” the compositions “comprise one or more
`tetrafluoropropenes” (referred to as “HFO-1234”). Id. at 4:50–54.
`Among the tetrafluoropropenes, the ’017 patent identifies HFO-
`1234ze (cis- and trans-1,3,3,3-tetrafluoropropene) as “particularly
`preferred.” Id. at 4:54–63. The ’017 patent states that “the present
`compositions, particularly those comprising HFO-1234ze,” are believed to
`“not have a substantial negative affect on atmospheric chemistry.” Id. at
`5:30–36. Specifically, “certain preferred” compositions have a Global
`Warming Potential (GWP) of “preferably not greater than about 500,” and
`an Ozone Depletion Potential (ODP) of “not greater than 0.05.” Id. at
`5:43–58.
`Next, the ’017 patent contemplates “Heat Transfer Compositions.”
`See id. at 6:30–7:3.3 The ’017 patent teaches that “it is generally preferred
`
`3 In addition to heat transfer compositions, the ’017 patent also
`contemplates “Blowing Agents, Foams and Foamable Compositions” (id. at
`7:44–8:45), “Propellant and Aerosol Compositions” (id. at 8:46–9:63), and
`“Flavorants and Fragrances” (id. at 9:64–10:26). Example 5 of the ’017
`patent “illustrates the use of blowing agent in accordance with two preferred
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`that refrigerant compositions of the present invention comprise compound(s)
`in accordance with Formula I, more preferably in accordance with Formula
`II, and even more preferably HFO-1234ze.” Id. at 6:34–38. The ’017 patent
`then states that “[i]n many embodiments, it is preferred that the heat transfer
`compositions of the present invention comprise transHFO-1234ze.” Id. at
`6:40–42.
`The ’017 patent teaches that the disclosed compounds comprise “at
`least about 50% by weight” of the heat-transfer compositions. Id. at 6:32–
`40. The ’017 patent also states that the heat-transfer compositions,
`especially refrigerant compositions used in vapor compression systems,
`include a lubricant in an amount from about 30% to about 50% by weight of
`the composition. Id. at 6:51–55. The ’017 patent explains that lubricants
`such as polyol esters (POEs) and polyalkylene glycols (PAGs), silicone oil,
`mineral oil, alkyl benzenes (ABs), and poly(alpha-olefins) (PAOs), which
`are commonly used in refrigeration machinery with HFC refrigerants, “may
`be used with the refrigerant compositions of the present invention.” Id. at
`6:64–7:3.
`Next, the ’017 patent describes the “drop-in” nature of the heat-
`transfer compositions. See id. at 7:4–43. The ’017 patent begins by stating
`that the “compositions of the present invention are believed to be adaptable
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`embodiments of the present invention,” namely “HFO-1234ze and HFO-
`1234-yf,” to produce a polystyrene foam. Id. at 16:60–67. The ’017 patent
`reports that “foam polystyrene is obtainable in accordance with the present
`invention.” Id. at 17:18–20.
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`for use in many” existing refrigeration systems, “with or without system
`modification.” Id. at 7:4–8. “In many applications,” the ’017 patent states,
`“the compositions of the present invention may provide an advantage as a
`replacement in systems . . . currently based on refrigerants having a
`relatively high capacity.” Id. at 7:8–11. Specifically, the ’017 patent states
`that the “lower capacity refrigerant composition[s] of the present invention”
`may “replace a refrigerant of higher capacity.” Id. at 7:11–16. The ’017
`patent exemplifies “embodiments consisting essentially of transHFO-
`1234ze, as a replacement for existing refrigerants, such as HFC-134a.” Id.
`at 7:16–20. The written description further states that:
`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.
`The ’017 specification provides several examples. See id. at 13:55–
`17:33. Example 1 is directed to “[a] refrigeration/air conditioning cycle
`system . . . where the condenser temperature is about 150°F. and the
`evaporator temperature is about -35°F.” Id. at 14:16–18. Table 1 provides
`the relative coefficient of performance (COP), relative capacity, and
`discharge temperatures for “several compositions of the present invention,”
`as compared to “HFC-134a having a COP value of 1.00, a capacity value of
`1.00[,] and a discharge temperature of 175°F.” Id. at 14:20–24. The ’017
`patent explains that COP “is a universally accepted measure of refrigerant
`performance” and represents “the relative thermodynamic efficiency of a
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`refrigerant in a specific heating or cooling cycle” (id. at 13:64–14:1),
`whereas capacity “represents the amount of cooling or heating” a refrigerant
`provides (id. at 14:4–5). “[A] refrigerant with a higher capacity,” the ’017
`patent explains, “will deliver more cooling or heating power.” Id. at 14:8–9.
`Finally, the ’017 patent explains that lower discharge temperatures are
`“advantageous” and “likely lead[] to reduced maintenance problems.” Id. at
`14:39–43.
`Table 1 is reproduced below:
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`Table 1 of the ’017 patent provides the relative COP and relative
`capacity of several refrigerant compositions HFO-1224ye, HFO-
`trans-1234ze, HFO-cis-1234ze, and HFO-1234yf.
`Id. at 14:25–35. The ’017 patent states that “[t]his example shows that
`certain of the preferred compounds for use with the present compositions
`each have a better energy efficiency than HFC-134a (1.02, 1.04 and 1.13
`compared to 1.00).” Id. at 14:36–39 (emphasis added). The ’017 patent also
`explains that a compressor using these refrigerants will produce
`advantageous discharge temperatures (i.e., 158, 165, and 155 compared to
`175 for HFC-134a). Id. at 14:36–43.
`Example 2 of the ’017 patent is directed to testing “[t]he miscibility of
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`HFO-1225ye and HFO-1234ze with various refrigeration lubricants.” Id. at
`14:47–48. Lubricants tested include mineral oil, an alkyl benzene (Zerol
`150), two ester oils, a polyalkylene glycol (Goodwrench Refrigeration Oil
`for 134a systems), and a poly(alpha olefin) oil (CP-6005-100). Id. at 14:48–
`52. According to the written description:
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`The polyalkylene glycol and ester oil lubricants were
`judged to be miscible in all tested proportions over the entire
`temperature range, except that for the HFO-1225ye mixtures
`with polyalkylene glycol, the refrigerant mixture was found to be
`immiscible over the temperature range of −50° C. to −30° C. and
`to be partially miscible over from −20 to 50° C.
`Id. at 15:4–9.
`Example 3 of the ’017 patent focuses on “[t]he compatibility of the
`refrigerant compounds and compositions of the present invention with PAG
`lubricating oils while in contact with metals used in refrigeration and air
`conditioning systems.” Id. at 15:15–20. Five combinations were tested: (a)
`HFO-1234ze and GM Goodwrench PAG oil; (b) HFO-1243zf and GM
`Goodwrench PAG oil; (c) HFO-1234ze and MOPAR-56 PAG oil; (d) HFO-
`1243zf and MOPAR-56 PAG oil; and (e) HFO-1225ye with MOPAR-56
`PAG oil. The ’017 patent reports that the tested compositions were stable in
`contact with aluminum, steel, and copper. Id. at 15:29–43.
`D. Illustrative Claims
`Independent claims 1 and 12 are illustrative of the challenged claims
`and are reproduced below:
`1. A method for producing an automobile air
`conditioning system for use with 2,3,3,3-tetrafluoropropene
`(HFO-1234yf) comprising:
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`(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
`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.
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`12. A stable heat transfer composition for use in an
`automobile air conditioning system of the type having a
`condenser operating in a temperature range that includes about
`150°F., 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 2,3,3,3-
`tetrafluoropropene (HFO-1234yf); and
`(ii) lubricant consisting essentially of polyalkylene glycol(s),
`wherein said refrigerant under the conditions of said condenser
`operating at about 150°F. in said automobile air conditioning
`system has a capacity relative to HFC-134a of about 1 and a
`Coefficient of Performance (COP) relative to HFC-134a of
`about 1, and wherein said heat transfer composition is stable
`in contact with aluminum, steel and copper.
`Id. at 17:35–55, 18:34–53.
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`E. Prosecution History of the ’017 Patent
`The ’017 patent was filed as U.S. Patent Application No. 14/225,588
`(“the ’588 application”) on March 26, 2014. Ex. 1001, [21], [22]. The ’588
`application claimed the benefit of a series of applications, the earliest of
`which constitute two provisional applications (i.e., No. 60/421,263 and
`No. 60/421,435) filed on October 25, 2002. Id. at 1:5–25.
`Concurrently with the filing of the ’588 application, Patent Owner
`filed a preliminary amendment cancelling all previous claims and adding
`new claims directed to the use of a heat-transfer composition consisting
`essentially of HFO-1234yf and PAG lubricant in automobile air conditioning
`(“AAC”). Ex. 1047, 3–6. After receiving a first office action rejecting the
`claims for double patenting and obviousness (see PGR12 Ex. 1048, 3–9),
`Patent Owner submitted a response providing a “Summary of the Claimed
`Subject Matter” (Ex. 1049, 6–7). In that Summary, Patent Owner stated that
`the invention is “directed to a specific heat transfer application, namely
`automotive air conditioning, having a combination of stringent and unique
`technical requirements, including numerous properties and characteristics
`that are not predictable.” Ex. 1049, 6–7. Patent Owner further informed the
`Office that “[t]he field of automotive air conditioning is a distinct technical
`field within the broader, general field of heating and cooling applications.”
`Id. at 7. And “[a]s such, automotive air conditioning has specific technical
`requirements as compared to other heating and cooling applications,
`including stationary air conditioning.” Id.
`Patent Owner identified those “specific technical requirements” as
`including: (1) strict prohibitions on the use of toxic refrigerant materials
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`“due to the confined, sealed, low volume air space” in AAC; (2) strict
`restrictions on compressor size, which, in turn, “plac[es] restrictions on
`refrigerant capacity and COP”; (3) the ability to effectively operate at high
`condenser temperatures that form “in the heat-trapping engine
`compartment”; (4) restrictions on refrigerant flammability “due to the
`confined, sealed, low volume air space” in AAC; and (5) high stability “in
`view of the need for the use of flexible hoses” in AAC. Id. at 7–8.
`Patent Owner explained that the “specific characteristics of an
`automotive air conditioning system emphasi[z]e that automotive air
`conditioning is a distinct, select, technical field.” Id. at 12. The specific
`technical requirements also “necessarily have a significant impact on the
`properties required, and increase the difficulty and unpredictability of
`choosing an effective heat transfer fluid for use in an automotive air
`conditioning system.” Id. “[T]herefore,” Patent Owner concluded, “a skilled
`artisan would not conclude that a heat transfer fluid disclosed as suitable for
`heating or cooling generally would necessarily, or obviously, be suitable for
`use in automotive air conditioning.” Id. at 12–13; see also id. at 8 (stating
`that “a person of ordinary skill in the art would not simply expect that a
`material used as a refrigerant in applications other than automotive air
`conditioning would be useful in automotive air conditioning”).
`Patent Owner explained that the claimed subject matter met these
`technical requirements and also provided “acceptable and effective
`refrigerant/lubricant miscibility for use without an oil separator,”
`“dramatically superior Global Warming Potential,” and “an Ozone Depletion
`Potential (ODP) close to zero.” Id. at 13–14. Patent Owner informed the
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`Office that the claimed subject matter proceeded in a direction opposite to
`conventional teachings “in a very unpredictable art” (id. at 13), and that
`“those skilled in the art simply had no basis for making the selections the
`inventors here made” (id. at 14).
`Among other things, Patent Owner stated that the claimed subject
`matter provided an unexpectedly safe air conditioning system having low
`flammability, superior stability, and low toxicity. Id. at 20–24. As to
`flammability, Patent Owner stated that, “[u]npredictably and unexpectedly,
`HFO-1234yf[] has a burning velocity 11.5 times below the burning velocity
`of HFO-1243zf, which is acceptable for use in automobile air conditioning.”
`Id. at 22 (emphasis omitted). And as to stability, Patent Owner stated that
`“[t]he extraordinary stability of the combination of HFO-1234yf with PAG
`is simply not something that could have been predicted or expected.” Id. at
`24. Further, Patent Owner represented that the drop-in nature of HFO-
`1234yf was also “an unexpected and highly advantageous property.” Id. at
`25.
`
`Finally, in another response to a subsequent office action, Patent
`Owner wrote that “the Examiner has acknowledged the prior arguments
`pointing out that the claims are directed to the special field of automotive air
`conditioning and has indicated that the argument may eventually provide a
`path to patentable subject matter.” Ex. 1050, 7. Patent Owner also wrote
`that “the Examiner [has] acknowledged that toxicity is a more important
`consideration in automotive air conditioning than in other refrigeration
`applications.” Id.
`
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`16
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`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
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`
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`F. Asserted Grounds of Unpatentability
`In PGR11, we instituted post-grant review of claims 1–20 of the ’017
`patent on the ground of unpatentability, under 35 U.S.C. § 103, over
`Inagaki4 in view of Tapscott,5 Uemura,6 and Magid.7 PGR11 Dec. on Inst.
`30.
`
`
`
`In PGR12, we instituted post-grant review on four grounds:
`(1) claims 1–20 on the ground of unpatentability for prior public use under
`35 U.S.C. § 102(a); (2) claims 1–12 and 14–20 on the ground of
`unpatentability for anticipation under 35 U.S.C. § 102(a) by WO ’625;8 (3)
`claims 1–20 on the ground of unpatentability for obviousness over Minor &
`Spatz9 in view of the ’882 patent;10 and (4) claim 13 on the ground of
`
`
`4 Sadayasu Inagaki, et al., English Translation of Japanese Patent
`Application No. JP H4-110388 (published Apr. 10, 1992) (“Inagaki”).
`PGR11 Ex. 1012.
`5 Robert E. Tapscott & J. Douglas Mather, Tropodegradable
`fluorocarbon replacements for ozone-depleting and global-warming
`chemicals, J. FLUORINE CHEM., 101:209–303 (2000) (“Tapscott”). PGR11
`Ex. 1015.
`6 S. Uemura, et al., Characteristics of HFC Refrigerants, INT’L
`REFRIGERATION & AIR CONDITIONING CONFERENCE, Paper 177 (1992)
`(“Uemura”). PGR11 Ex. 1014.
`7 Hillel Magid, et al., U.S. Patent No. 4,755,316 (issued July 5, 1988)
`(“Magid”). PGR11 Ex. 1008.
`8 Rajiv R. Singh, et al., WO 2007/002625 A2 (published Jan. 4, 2007)
`(“WO ’625”). PGR12 Ex. 1011.
`9 Barbara Minor & Mark Spatz, HFO-1234yf Low GWP Refrigerant
`Update, INT’L REFRIGERATION & AIR CONDITIONING CONFERENCE, Paper
`937 (2008) (“Minor & Spatz”). PGR12 Ex. 1010.
`10 Rajiv R. Singh, et al., U.S. Patent No. 8,065,882 B2 (issued Nov.
`29, 2011) (“the ’882 patent”). PGR12 Ex. 1009.
`17
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`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`unpatentability for lack of enablement under 35 U.S.C. § 112(a). PGR12
`Dec. on Inst. 36.
`In its patentability challenges in both PGR11 and PGR12, Petitioner
`relies on the Declarations of J. Steven Brown, Ph.D. (Ex. 1002) and William
`J. Brock, Ph.D. (Ex. 1004). In its responses, Patent Owner relies on the
`Declaration of Donald Bivens dated June 6, 2016 (Ex. 2001), two
`Declarations of Donald Bivens dated December 15, 2016 (PGR11 Ex. 2126,
`PGR12 Ex. 2126)11, the Declaration of Margaret H. Whittaker, Ph.D.
`(PGR11 Ex. 2094), and the Declaration of Darryl DesMarteau, Ph.D.
`(PGR11 Ex. 2161).
`
`II. DISCUSSION
`The parties dispute whether the ’017 patent is eligible for post-grant
`review. Petitioner asserts that the ’017 patent is eligible for post-grant
`review because its claims are not supported by a pre-March 16, 2013 priority
`application, and thus are limited to an effective filing date of March 26,
`2014, i.e., the actual filing date of the ’588 application. PGR11 Pet. 28–30;
`PGR12 Pet. 20–22. According to Petitioner, none of Patent Owner’s earlier-
`filed priority applications describe or enable the claimed subject matter of an
`AAC refrigerant composition consisting essentially of HFO-1234yf in
`combination with a lubricant consisting essentially of PAG in accordance
`with 35 U.S.C. § 112(a). PGR11 Pet. 31–43; PGR12 Pet. 24–36. Patent
`
`
`11 For clarity, we note that Dr. Bivens’ December Declaration filed in
`PGR11 is not identical to Dr. Bivens’ December Declaration filed in PGR12,
`even though both of these Declarations are entered into their respective
`records as Exhibit 2126.
`
`18
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`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
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`Owner challenges Petitioner’s assertions. PGR11 Resp. 24; PGR12 Resp.
`23–60. Before turning to this issue, we briefly address claim interpretation
`and the level of ordinary skill in the art and field of invention.
`A. Claim Interpretation
`In a post-grant review where, as here, the Petition is filed prior to
`November 13, 2018, the Board interprets claim terms in an unexpired patent
`according to the broadest reasonable interpretation in light of the
`specification of the patent in which they appear.12 We determine that no
`claim terms require express interpretation for purposes of this Decision. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (only those claim terms that are in controversy need to be construed,
`and only to the extent necessary to resolve the controversy).
`B. Level of Ordinary Skill in the Art and Field of Invention
`The person of ordinary skill in the art is a hypothetical person who is
`presumed to have known the relevant art at the time of the invention. In re
`GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be
`considered in determining the level of ordinary skill in the art include, but
`are not limited to, the types of problems encountered in the art, the
`sophistication of the technology, and the educational level of active workers
`in the field. Id.
`Petitioner’s Declarant, Dr. Brown, testifies that, a person of ordinary
`skill in connection with the ’017 patent is one who evaluates, designs, and
`
`
`12 See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51340 (Oc