UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ARKEMA AND ARKEMA FRANCE,
`Petitioner
`v.
`
`HONEYWELL INTERNATIONAL INC.,
`Patent Owner.
`
`PGR2016-00011
`Patent No. 9,157,017
`
`PATENT OWNER’S MOTION
`FOR LEAVE TO REQUEST A CERTIFICATE OF CORRECTION
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ARKEMA AND ARKEMA FRANCE,
`Petitioner
`v.
`
`HONEYWELL INTERNATIONAL INC.,
`Patent Owner.
`
`PGR2016-00011
`Patent No. 9,157,017
`
`PATENT OWNER’S MOTION
`FOR LEAVE TO REQUEST A CERTIFICATE OF CORRECTION
`
`
`
`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
`
`TABLE OF CONTENTS
`Introduction .............................................................................................................. 1
`Background ............................................................................................................... 2
`Argument .................................................................................................................. 6
`The Board Should Grant Honeywell Leave To Petition For A
`I.
`Certificate Of Correction. ............................................................................. 6
`A.
`Honeywell Can Amend Its Priority Claim Through A
`Certificate Of Correction. ...................................................................... 7
`1.
`Honeywell’s Proposed Correction Is Of Minor Character. ........ 7
`Honeywell’s “Delay” In Seeking A Correction Is
`2.
`Unintentional. ............................................................................ 10
`Honeywell’s Correction Will Not Add New Matter Or
`Require Reexamination. ............................................................ 11
`The Board’s Decision Cannot Stand If The Director Grants
`Honeywell’s Proposed Correction. ..................................................... 11
`II. Granting Honeywell’s Motion Will Not Prejudice Arkema. ................... 13
`Conclusion ............................................................................................................... 15
`
`B.
`
`3.
`
`i
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`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
`
`TABLE OF AUTHORITIES
`
`Cases
`ASM IP Holding B.V. v. Kokusai Elec. Corp.,
`IPR2019-00378, Paper 17 (PTAB July 5, 2019) .................................................. 8
`B. Braun Melsungen AG v. Becton, Dickinson & Co.,
`2017 WL 2531939 (D. Del. 2017) ........................................................................ 8
`Carotek, Inc. v. Kobayashi Ventures, L.L.C.,
`875 F. Supp. 2d 313 (S.D.N.Y. 2012) .................................................................. 8
`In re Donohue,
`766 F.2d 531 (Fed. Cir. 1985) ............................................................................ 13
`E.I. du Pont de Nemours & Co. v. MacDermid Printing Sols., L.L.C.,
`525 F.3d 1353 (Fed. Cir. 2008) .......................................................................... 14
`Emerson Elec. Co. v. Sipco, LLC,
`IPR2017-00001, Paper 37 (PTAB Nov. 22, 2017) ............................................... 8
`Hologic, Inc. v. Smith & Nephew, Inc.,
`884 F.3d 1357 (Fed. Cir. 2018) .......................................................................... 12
`Honeywell Int’l Inc. v. Arkema Inc.,
`939 F.3d 1345 (Fed. Cir. 2019) ............................... 1, 2, 3, 4, 6, 8, 10, 11, 13, 14
`Kaidi LLC v. Limoss US, LLC,
`IPR2019-01184, Paper 8 (PTAB July 19, 2019) .................................................. 8
`In re Lambrech,
`202 U.S.P.Q. 620 (Comm’r Pat. & Trademarks 1976) ........................................ 8
`In re Schuurs & Van Weemen,
`218 U.S.P.Q. 443 (Comm’r Pat & Trademarks 1983) ......................................... 8
`SPTS Tech. Ltd. v. Plasma-Therm LLC,
`IPR2018-00618, Paper 7 (PTAB May 1, 2018) ................................................... 8
`United Servs. Auto Ass’n v. Asghari-Kamrani,
`CBM2016-00063, Paper 10 (PTAB Aug. 4, 2016) .................................... 8, 9, 12
`
`i
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`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
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`Word to Info, Inc. v. Google Inc.,
`140 F. Supp. 3d 986 (N.D. Cal. 2015) ............................................................ 8, 10
`Statutes
`35 U.S.C. §102 ................................................................................................... 12, 13
`35 U.S.C. §103 ......................................................................................................... 12
`35 U.S.C. §112 ............................................................................................. 10, 12, 14
`35 U.S.C. §120 ....................................................................................................... 5, 7
`35 U.S.C. §254 ......................................................................................................... 13
`35 U.S.C. §255 ..................................................................................... 7, 9, 10, 11, 14
`Regulations
`37 C.F.R. §1.78 .................................................................................................... 5, 10
`37 C.F.R. §1.323 ........................................................................................................ 4
`Manual of Patent Examining Procedure
`MPEP §201.06 ........................................................................................................... 5
`MPEP §1481.03 ......................................................................................................... 7
`MPEP §1485 .............................................................................................................. 4
`
`ii
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`
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`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
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`Introduction
`Honeywell’s claimed automobile air conditioning compositions defied
`
`industry skepticism and made the apparently impossible possible: a safe and
`
`efficient refrigerant-lubricant combination with virtually no impact on the ozone
`
`layer or global warming. Honeywell began seeking patent protection on its
`
`groundbreaking compositions and methods as early as 2002 and disclosed detailed
`
`examples of their uses in automobile air conditioning in applications dating back to
`
`2005. Earlier in this case, the Board held the claims of Honeywell’s U.S. Patent
`
`No. 9,157,017 unpatentable over uses of Honeywell’s own products in 2012—but
`
`only after denying Honeywell leave to correct an inadvertent mistake in the ’017
`
`patent’s chain of priority which would have resulted in a priority date of 2005.
`
`The Federal Circuit vacated that decision and ordered that Honeywell be
`
`allowed to file this motion for leave to seek a certificate of correction. The bar for
`
`Honeywell to prevail is low: The Board cannot rule on the ultimate merits of the
`
`proposed correction, but instead may only “determine if Honeywell ha[s]
`
`demonstrated a ‘sufficient basis’ that the mistake ‘may’ be correctable.” Honeywell
`
`Int’l Inc. v. Arkema Inc., 939 F.3d 1345, 1349 (Fed. Cir. 2019). It plainly has.
`
`Honeywell’s requested correction easily falls within the class of “minor
`
`character” mistakes for which the Director grants certificates of correction. For at
`
`least forty years, “the PTO has previously allowed patentees to correct priority
`
`1
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`
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`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
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`claims through Certificates of Correction.” Id. at 1350. And in the past few years
`
`alone, the Board has granted multiple motions seeking leave to request certificates
`
`of correction to patents’ priority chains. There is at least a “sufficient” basis to hold
`
`the Director “may” issue Honeywell’s proposed correction here too. Id. at 1349.
`
`Granting Honeywell’s motion will not prejudice Arkema. When Arkema
`
`chose to initiate these post-grant reviews, it anticipated that Honeywell would
`
`argue its claims were entitled to the priority date on the face of the ’017 patent, and
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`it should have anticipated that Honeywell would pursue a certificate of correction.
`
`To this day, Arkema has not identified any authority holding that its choice to
`
`pursue PGRs trumps Honeywell’s statutory right to rectify its mistake through the
`
`certificate of correction procedure. In any event, the Board can both grant
`
`Honeywell’s motion and accommodate whatever purported prejudice Arkema
`
`might allege. Honeywell respectfully requests leave to petition the Director for a
`
`certificate of correction.
`
`Background
`
`The ’017 patent describes and claims Honeywell’s revolutionary discovery
`
`of safe and environmentally preferable combinations of the low-global-warming-
`
`potential refrigerant HFO-1234yf and polyalkylene glycol (PAG) lubricants for use
`
`in automotive air conditioning. Honeywell has sought comprehensive patent
`
`protection for its discovery, and since at least 2005 its applications have included
`
`2
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`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
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`detailed examples of the use of its combinations in automobile air conditioning.
`
`The Board previously prohibited Honeywell from petitioning for a certificate of
`
`correction to amend the ’017 patent’s chain of priority, held the claims had a
`
`priority date of March 26, 2014 without the correction, and found them anticipated
`
`by public uses of Honeywell’s own products in 2012. Ex. 2041; Paper 54 at 51-55.
`
`The Federal Circuit vacated the Board’s decision and remanded with
`
`instructions to “authorize Honeywell to file a motion seeking leave to petition the
`
`Director for a Certificate of Correction.” Honeywell, 939 F.3d at 1351. The Court
`
`explained that “the PTO has previously allowed patentees to correct priority claims
`
`through Certificates of Correction.” Id. at 1350 (collecting cases). And the Court
`
`“express[ed] doubt over Arkema’s assertion that Honeywell knew about the
`
`mistake in priority for at least nine months but, to obtain a strategic advantage,
`
`declined to pursue correction of the mistake.” Id. at 1350-51 (“It is unclear how
`
`Honeywell would benefit from intentionally delaying its petition to the Director.”).
`
`The Court also instructed the Board on how to review Honeywell’s present
`
`motion. On the merits of Honeywell’s proposed correction, the Board must simply
`
`“determine if Honeywell ha[s] demonstrated a ‘sufficient basis’ that the mistake
`
`‘may’ be correctable.” Id. at 1349. The Board must also assess whether permitting
`
`Honeywell to petition for a corrected priority chain would prejudice Arkema and,
`
`if so, “whether [any purported] prejudice to Arkema requires accommodation.” Id.
`
`3
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`
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`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
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`at 1351. The Board should otherwise “review Honeywell’s motion for leave in
`
`accordance with 37 C.F.R. §1.323 and MPEP §1485.” Id.
`
`Through its proposed certificate of correction, Honeywell seeks to add three
`
`applications to the ’017 patent’s chain of priority: (1) U.S. Provisional Application
`
`No. 60/693,853, filed June 24, 2005; (2) U.S. Application No. 11/475,605, filed
`
`June 26, 2006; and (3) U.S. Application No. 11/850,025, filed September 4, 2007.
`
`The illustration below graphically depicts Honeywell’s proposed correction.
`
`In particular, Honeywell would ask the Director to add the following
`
`language to column 1 of the ’017 patent (and make other clarifying changes):
`
`The present application is also a continuation in part of U.S.
`application Ser. No. 11/850,025, filed Sept. 4, 2007 (abandoned on
`April 19, 2018), which in turn is a divisional of U.S. application
`Ser. No. 11/475,605, filed June 26, 2006 (now U.S. Pat. No.
`
`4
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`
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`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
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`9,005,467), which in turn claims the priority benefit of U.S.
`Provisional Application No. 60/693,853, filed June 24, 2005.
`See Ex. 2168 (proposed Certificate of Correction); Ex. 2169 (’853 provisional);
`
`Ex. 2170 (’605 application); Ex. 2171 (’025 application).
`
`Honeywell could have claimed this priority chain before the ’017 patent
`
`issued. The ’605 application was filed within one year of and claimed priority to
`
`the ’853 provisional. 37 C.F.R. §1.78(a)(1)(ii), (3). The ’025 application claimed
`
`priority to the ’605 application. Id. §1.78(d)(2); 35 U.S.C. §120. The ’017 patent
`
`was filed after the ’605 and ’025 applications and issued before the “abandonment
`
`of or termination of proceedings on” the latter two. 35 U.S.C. §120. And all of the
`
`applications share two common inventors. Id.; see also 37 C.F.R. §1.78(d).
`
`But Honeywell inadvertently failed to seek that priority chain before these
`
`proceedings began. The ’017 patent is part of a family of approximately 150
`
`Honeywell patents and applications related to fluorinated olefins and their uses.
`
`Ex. 2167 ¶¶ 8-10; see ’017 patent at 6:30-12:35 (describing several uses). The
`
`application leading to the ’017 patent was filed as a divisional, and thus its
`
`specification, claims, and listing of “Related Applications” closely resembled those
`
`of its parent application, which had claims focused on cleaning compositions and
`
`inflating agents. Ex. 1044 at 7-37; Ex. 1045 at 71-101; see MPEP §201.06 (9th ed.
`
`2018). In early prosecution, Honeywell amended the ’017 patent’s claims to focus
`
`instead on automobile air conditioning, Ex. 1045 at 12-15, but Honeywell forgot to
`
`5
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`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
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`make conforming amendments to the application’s chain of priority to fully list
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`other applications in the same family—i.e., the ’025 and ’605 applications and the
`
`’853 provisional—that disclose the claimed compositions’ utility in automobile air
`
`conditioning. Ex. 2167 ¶¶ 3-10; Ex. 2041 at 7:15-9:7. Despite that oversight, the
`
`examiner of the ’017 patent never questioned whether the issued claims were
`
`entitled to the 2002 priority date recited on the face of the patent.
`
`Before these proceedings, Honeywell had no reason to doubt that the priority
`
`chain on the face of the ’017 supported the patent’s claims. Ex. 2167 ¶ 11.
`
`Honeywell also did not detect its mistake when preparing its optional Preliminary
`
`Patent Owner Responses. Id. Only during the preparation of its post-institution
`
`Patent Owner Responses did Honeywell recognize its mistake. Id.; Ex. 2041 at
`
`7:15-9:11, 12:5-13, 14:15-15:7. Since then, Honeywell has diligently pursued a
`
`certificate of correction to amend its priority chain. See Ex. 2040; Ex. 2041;
`
`Honeywell, 929 F.3d at 1351. Honeywell renews that request here.
`
`I.
`
`Argument
`THE BOARD SHOULD GRANT HONEYWELL LEAVE TO
`PETITION FOR A CERTIFICATE OF CORRECTION.
`The Director is likely to grant Honeywell’s proposed correction, and the
`
`correction will materially affect this case. The Director regularly grants certificates
`
`of correction to amend patents’ priority claims, and there is at least a “sufficient
`
`basis” that the Director “may” do the same here. If and when the Director enters
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`6
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`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
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`Honeywell’s proposed correction, the ’017 patent’s claims will have a priority date
`
`before 2012—i.e., before the public uses on which the Board found the claims
`
`unpatentable. Honeywell’s motion should be granted.
`
`A.
`
`Honeywell Can Amend Its Priority Claim Through A Certificate
`Of Correction.
`The Director may “issue a certificate of correction” if “a mistake … of
`
`minor character … appears in a patent,” it “occurred in good faith,” and “the
`
`correction does not involve such changes in the patent as would constitute new
`
`matter or would require reexamination.” 35 U.S.C. §255. Honeywell’s correction
`
`satisfies each requirement. It is “clear from the record of the patent and the parent
`
`application(s) that priority is appropriate.” MPEP §1481.03(II) (9th ed. Jan. 2018).
`
`Honeywell’s Proposed Correction Is Of Minor Character.
`1.
`Regulations, court decisions, and over forty years of PTO practice confirm
`
`that Honeywell’s mistake was of “minor character.” At a minimum, there is a
`
`“sufficient basis” to conclude the Director “may” reach the same conclusion. The
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`MPEP explains that “[u]nder certain conditions … a certificate of correction can be
`
`used, with respect to a benefit claim under 35 U.S.C. §120 … to correct: (A) the
`
`failure to make reference to a prior copending nonprovisional application … [and]
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`(C) the failure to make reference to a prior provisional application.” MPEP
`
`§1481.03(II)(A)(1) (9th ed. Jan. 2018); see also MPEP §1481.03 (8th ed Rev. 4
`
`Oct. 2005) (similar). In this case, the Federal Circuit acknowledged that “the PTO
`
`7
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`
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`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
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`has previously allowed patentees to correct priority claims though Certificates of
`
`Correction.” Honeywell, 939 F.3d at 1350 (collecting cases). And other courts and
`
`the PTO have likewise recognized that “[i]f a patent is issued and contains a
`
`mistake, such as failing to claim priority to an appropriate earlier-filed patent … it
`
`may be corrected by petitioning the PTO for a certificate of correction.” Carotek,
`
`Inc. v. Kobayashi Ventures, L.L.C., 875 F. Supp. 2d 313, 331 (S.D.N.Y. 2012).1
`
`Consistent with those authorities, the Board has granted several motions for
`
`leave to petition the Director for a certificate of correction during post-grant
`
`proceedings, including to correct a patent’s priority chain. See, e.g., United Servs.
`
`Auto Ass’n v. Asghari-Kamrani, CBM2016-00063, Paper 10 (PTAB Aug. 4, 2016)
`
`[USAA]; Emerson Elec. Co. v. Sipco, LLC, IPR2017-00001, Paper 37 (PTAB Nov.
`
`22, 2017); SPTS Tech. Ltd. v. Plasma-Therm LLC, IPR2018-00618, Paper 7
`
`(PTAB May 1, 2018); ASM IP Holding B.V. v. Kokusai Elec. Corp., IPR2019-
`
`00378, Paper 17 (PTAB July 5, 2019); Kaidi LLC v. Limoss US, LLC, IPR2019-
`
`01184, Paper 8 (PTAB July 19, 2019). Honeywell’s correction fits the mold and is
`
`1 See also B. Braun Melsungen AG v. Becton, Dickinson & Co., 2017 WL
`
`2531939, at *4 (D. Del. 2017) (similar); Word to Info, Inc. v. Google Inc., 140 F.
`
`Supp. 3d 986, 988 (N.D. Cal. 2015) (similar); In re Schuurs & Van Weemen, 218
`
`U.S.P.Q. 443, at *1 (Comm’r Pat & Trademarks 1983) (similar); In re Lambrech,
`
`202 U.S.P.Q. 620, at *2 (Comm’r Pat. & Trademarks 1976) (similar).
`
`8
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`
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`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
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`materially similar to ones that the Board has authorized patentees to seek before.
`
`For example, in USAA, as here, the patentee sought to correct a chain of
`
`priority in a way that would leave the priority date on the face of the patent
`
`unchanged while adding support that linked an earlier application in the priority
`
`chain to the application leading directly to the patent at issue. USAA at 5.
`
`The Board granted the patent owner’s motion over the petitioner’s argument
`
`that the proposed correction was not “of minor character.” Id. As the Board
`
`correctly reasoned, the petitioner’s argument was “misplaced” because, in deciding
`
`the patent owner’s motion, the Board was “not deciding whether [such] a request
`
`… should be granted pursuant to 35 U.S.C. §255, as Patent Owner is merely
`
`seeking authorization for filing such a request.” Id. at 6. Based on the patent
`
`owner’s plausible arguments, the Board granted the patent owner’s motion to
`
`request a certificate of correction from the Director. Id. at 8-9.
`
`9
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`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
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`This case mirrors USAA on the facts and should result in the same outcome:
`
`Honeywell’s proposed correction is plausible, and its motion should be granted.
`
`See also Word to Info, 140 F. Supp. 3d at 991-92, 997 (district court confirming the
`
`propriety of a certificate of correction that added intermediate references in the
`
`chain of priority between the issued patent and an earlier application).
`
`2.
`
`Honeywell’s “Delay” In Seeking A Correction Is Unintentional.
`
`Honeywell also seeks its correction “in good faith,” 35 U.S.C. §255, and did
`
`not intentionally “delay” seeking a certificate of correction after it discovered its
`
`mistake. 37 C.F.R. §1.78(c)(3), (e)(3). As the Federal Circuit correctly observed,
`
`“[i]t is unclear how Honeywell would benefit from intentionally delaying its
`
`petition to the Director.” Honeywell, 939 F.3d at 1350-51. Indeed, the Court
`
`“express[ed] doubt over Arkema’s assertion that Honeywell knew about the
`
`mistake in priority for at least nine months but, to obtain a strategic advantage,
`
`declined to pursue correction of the mistake.” Id.
`
`The Court’s skepticism was well-founded. The examiner never rejected the
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`’017 patent’s claims under §112, and Honeywell did not believe the claims had any
`
`§112 problems when they issued. Ex. 2167 ¶ 11. Honeywell’s vigorous argument
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`in its Preliminary Patent Owner Response that its original priority chain provided
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`adequate §112 support confirms that. See Paper 12 at 12-59. And when Honeywell
`
`later recognized its mistake—after the Board’s September 2016 institution decision
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`10
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`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
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`focusing on priority—the ink was barely dry on Honeywell’s patent, which issued
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`in October 2015. Ex. 2167 ¶ 11; Ex. 2041 at 7:15-9:11, 12:5-13, 14:15-15:7. Since
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`then, Honeywell has pursued its requested correction with undisputed diligence.
`
`See Ex. 2040; Ex. 2041; Honeywell, 929 F.3d at 1351.
`
`3.
`
`Honeywell’s Correction Will Not Add New Matter Or Require
`Reexamination.
`Granting Honeywell’s proposed correction also will not add “new matter” or
`
`“require re-examination.” 35 U.S.C. §255. The correction would only add
`
`references to the “Related Applications” section of the ’017 patent. And “re-
`
`examination”
`
`in §255 self-evidently refers
`
`to
`
`the PTO’s reexamination
`
`procedures—i.e., to re-examination of the patent, not to the prospect of the Board
`
`revisiting one of its earlier decisions. Arkema has never suggested that
`
`Honeywell’s correction would require reexamination of the patent. It would not.
`
`B.
`
`The Board’s Decision Cannot Stand If The Director Grants
`Honeywell’s Proposed Correction.
`Honeywell’s proposed correction is not only meritorious but, if granted,
`
`would overcome the Board’s previous finding of unpatentability. In its final
`
`written decision, the Board found the ’017 patent’s claims were unpatentable over
`
`public uses of Honeywell’s own products in 2012. Paper 54 at 52-55. If, however,
`
`the Director grants Honeywell’s proposed certificate of correction, then the ’017
`
`patent’s claims would presumptively benefit from a priority date in 2005—
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`11
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`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
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`meaning that the 2012 uses would no longer be prior art and could not be a basis
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`for unpatentability. See 35 U.S.C. §§102, 103.
`
`To the extent Arkema argues here, as it did on appeal, that Honeywell’s
`
`amended priority chain still would not provide written description support for the
`
`claims before 2012, the Board should reject that argument. As in USAA, the
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`argument is “premature at this juncture”: “Patent Owner has yet to submit a benefit
`
`claim [to the Director], the Office has not accepted such a benefit claim, nor [has
`
`it] issue[d] a certificate of correction with the benefit claim.” USAA at 6.
`
`Moreover, even if the Board entertains Arkema’s argument, Arkema is
`
`wrong. The applications in Honeywell’s proposed priority chain provide adequate
`
`§112 support. The “test for sufficiency [of written description] is whether the
`
`disclosure of the [earlier] application relied upon reasonably conveys to those
`
`skilled in the art that the inventor had possession of the claimed subject matter.”
`
`Hologic, Inc. v. Smith & Nephew, Inc., 884 F.3d 1357, 1361 (Fed. Cir. 2018)
`
`(emphasis added). Each application in Honeywell’s proposed chain—the ’025 and
`
`’605 applications and ’853 provisional—includes an Example 6 that expressly
`
`describes the use of HFO-1234yf in automobile air conditioning, as well as the use
`
`of PAG lubricants. See Ex. 2169 at 15-16, 36-37, 41-44; Ex. 2170 at 24, 25, 27,
`
`47-49, 53-56; Ex. 2171 at 16, 18, 39-41, 44-47. That is enough to convey that
`
`Honeywell possessed the ’017 patent’s claimed inventions at least as early as 2005.
`
`12
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`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
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`Indeed, Arkema has admitted as much. In its petition in PGR2016-00012,
`
`Arkema asserted that the ’017 patent’s claims were anticipated by the Honeywell-
`
`authored WO 2007/002625, relying heavily on Example 6 in that application,
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`which is materially identical to the Example 6 in the ’025 and ’605 applications
`
`and ’853 provisional. PGR2016-00012, Paper 2 at 46-58. “It is well settled that
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`prior art under 35 U.S.C. §102([b]) must sufficiently describe the claimed invention
`
`to have placed the public in possession of it.” In re Donohue, 766 F.2d 531, 533
`
`(Fed. Cir. 1985) (emphasis added). Thus, by Arkema’s own arguments,
`
`Honeywell’s proposed certificate of correction provides written description support
`
`going back to at least 2005—well before the 2012 uses that formed the only basis
`
`of the Board’s unpatentability finding.
`
`II. GRANTING HONEYWELL’S MOTION WILL NOT PREJUDICE
`ARKEMA.
`Allowing Honeywell to request its proposed correction from the Director
`
`will not prejudice Arkema and, even if it did, there are several ways to
`
`“accommodat[e]” any purported prejudice anyway. Honeywell, 939 F.3d at 1351.
`
`First, granting Honeywell’s request to seek a certificate of correction will
`
`not prejudice Arkema. The Federal Circuit did not accept or endorse any of
`
`Arkema’s prejudice arguments. Indeed, as that Court has recognized in the context
`
`of an analogous statute, 35 U.S.C. §254, “nothing in the statute conditions
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`eligibility for a certificate to correct” a minor-character “error on the applicant’s
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`13
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`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
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`diligence in correcting the mistake, and the statute does not set any time limit on
`
`seeking such corrections.” E.I. du Pont de Nemours & Co. v. MacDermid Printing
`
`Sols., L.L.C., 525 F.3d 1353, 1362 (Fed. Cir. 2008). The Patent Office’s practices
`
`and regulations thus establish procedures for correcting such mistakes even when,
`
`as here, a patent is the subject of post-grant review. See supra §I.A.1. And Arkema
`
`itself anticipated that Honeywell would dispute the ’017 patent’s PGR-eligibility
`
`(and thus priority date), yet chose to seek PGR anyway on non-enablement and
`
`prior public use—grounds not available in inter partes reviews. By taking the
`
`benefits of the choice Congress offered through PGR, Arkema necessarily accepted
`
`the consequences, including that Honeywell could take advantage of Congress’s
`
`option to correct minor-character mistakes in chains of priority under §255.
`
`Second and separately, any alleged prejudice to Arkema is not enough to
`
`deny Honeywell’s motion: The Federal Circuit demanded that the Board also
`
`assess whether any purported “prejudice to Arkema” could be “accommodat[ed].”
`
`Honeywell, 939 F.3d at 1351. Of course it could. For example, to the extent
`
`Arkema argues that permitting Honeywell to petition the Director to correct its
`
`priority chain would postpone resolution of these proceedings, the Board has
`
`options for mitigating that delay (which Honeywell expects will be brief). For
`
`instance, to the extent the Board or Arkema believe there is a question as to
`
`whether Honeywell’s correction would provide adequate §112 support for the
`
`14
`
`
`
`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
`
`claims, the Board could take additional briefing on that issue while the Director
`
`reviews Honeywell’s petition. Alternatively, the Board could continue its
`
`consideration of Arkema’s grounds for unpatentability in PGR2016-00011 (i.e.,
`
`this proceeding), which are based on references that pre-date the 2005 priority date
`
`proposed by Honeywell’s correction. Because granting Honeywell’s motion will
`
`not prejudice Arkema to begin with, these delay-mitigating options are needless.
`
`But, to this day, Arkema has not identified any prejudice it might suffer during the
`
`Director’s review that defies accommodation. None exists.
`
`Conclusion
`
`For the foregoing reasons, the Board should grant Honeywell’s motion and
`
`authorize
`
`it
`
`to petition
`
`the Director
`
`for a certificate of correction.
`
`15
`
`
`
`PGR2016-00011 Patent Owner’s Motion For Leave To Request A Certificate Of Correction
`
`Date: January 10, 2020
`
`Respectfully submitted,
`
`/s/ Gregg F. LoCascio, P.C.
`Gregg F. LoCascio, P.C. (Reg. No. 55,396)
`Noah Frank (Reg. No. 67,279)
`glocascio@kirkland.com
`noah.frank@kirkland.com
`KIRKLAND & ELLIS LLP
`1301 Pennsylvania Avenue, N.W.
`Washington, DC 20004
`Telephone: (202) 389-5000
`Fax: (202) 389-5200
`Attorneys For Patent Owner
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owner’s Motion for Leave to Request a Certificate of Correction and newly
`
`designated exhibits were served on the 10th day of January, 2020, via electronic
`
`mail directed to counsel of record for the Petitioners:
`
`Mark D. Sweet
`
`Mark J. Feldstein
`
`Erin M. Sommers
`
`mark.sweet@finnegan.com
`
`mark.feldstein@finnegan.com
`
`erin.sommers@finnegan.com
`
`Charles W. Mitchell
`
`charles.mitchell@finnegan.com
`
`Arkema_PTAB@finnegan.com
`
`/s/ Gregg F. LoCascio, P.C.
`Gregg F. LoCascio, P.C.
`
`CERTIFICATE OF COMPLIANCE
`This motion complies with the page limitation set by the Board in its
`
`December 12, 2019 order. Ex. 1189 (24:1).
`
`/s/ Gregg F. LoCascio, P.C.
`
`
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