Paper No. 68
`Trials@uspto.gov
`Tel: 571-272-7822
`
`Filed: January 27, 2020
`
`
`
`
`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 KRISTI L. R. SAWERT,
`Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 We exercise our discretion to issue a single Order to be entered in
`each case using a joint caption. The parties are not permitted to use this
`caption unless authorized by the Board. For convenience, we use the paper
`and exhibit numbers from PGR2016-00011.
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`Filed: January 27, 2020
`
`
`
`
`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 KRISTI L. R. SAWERT,
`Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 We exercise our discretion to issue a single Order to be entered in
`each case using a joint caption. The parties are not permitted to use this
`caption unless 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
`
`
`On January 10, 2020, Honeywell International Inc. (“Patent Owner”)
`filed a Motion for Leave to Request a Certificate of Correction. Paper 61
`(“Motion for Leave” or “Mot.”). The Motion for Leave cites to, and was
`accompanied by, a declaration titled, “Declaration of Joseph Posillico in
`Support of Patent Owner’s Motion for Leave to Request a Certificate of
`Correction” (Exhibit 2167). See Mot. 5 (citing Ex. 2167 ¶¶ 8–10), 6 (citing
`Ex. 2167 ¶¶ 3–10). The motion also cites to, and was accompanied by, a
`proposed Certificate of Correction (Exhibit 2168). See id. at 5 (citing
`Ex. 2168). The proposed Certificate of Correction contains a declaration
`titled “Declaration of Joseph F. Posillico in Support of Certificate of
`Correction Pursuant to 37 C.F.R. § 1.323.” Ex. 2168, 9–15.
`Arkema Inc. and Arkema France (“Petitioner”) filed a Notice of
`Deposition of Joseph F. Posillico on January 14, 2020. Paper 63. On
`January 17, 2020, Petitioner contacted the Board via e-mail requesting a
`conference call to resolve a dispute about the deposition. Ex. 3002.
`Specifically, Petitioner alleged that Patent Owner failed to confirm a date for
`the cross-examination of Mr. Posillico, and that “Patent Owner believes it is
`not required and/or is unwilling to produce Mr. Posillico for cross-
`examination as routine discovery under the rules.” Id.
`The panel held a teleconference with counsel for the parties on
`January 22, 2020. A transcript of that conference call has been entered into
`the record. Ex. 1190.
`During the conference call, Petitioner argued that, because this
`proceeding is on remand and the Board did not authorize Patent Owner to
`submit additional evidence, Patent Owner had no authority to submit
`
`
`
`2
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`Mr. Posillico’s declaration. Ex. 1190, 6:19–25. But even if the Board
`considers Mr. Posillico’s declaration, Petitioner argued, it is entitled to the
`cross-examination of Mr. Posillico as a matter of routine discovery under
`37 C.F.R. § 42.51(b)(1)(ii). Id. at 6:5–9.
`Patent Owner responded that cross-examination of Mr. Posillico is not
`a matter of routine discovery because, although Patent Owner had the right
`under 37 C.F.R. § 42.53(b)(1) to submit Mr. Posillico’s testimony, Petitioner
`does not have the right under 37 C.F.R. § 42.51(b)(1)(ii) to cross-examine
`Mr. Posillico. Ex. 1190, 17:3–20. In this regard, Patent Owner argued that
`routine discovery may only take place “within such time period as the Board
`may set” and, here, the Board did not provide for a discovery period on
`remand. Id. at 12:4–17. Patent Owner argued that, “if [Petitioner] wished to
`take this deposition, given we’re outside the authorized discovery period,
`[Petitioner] would need to file a motion for authorization” to compel
`testimony under 37 C.F.R. § 42.52(a). Id. at 13:6–13.
`Patent Owner also argued that Mr. Posillico’s declaration, submitted
`as Exhibit 2167, is substantially similar to Mr. Posillico’s declaration in the
`proposed Certificate of Correction, submitted as Exhibit 2168, “[a]nd the
`rationale to attach [Exhibit 2167] was to give the Board the benefit of all the
`information [Petitioner would] be providing to the Director for the certificate
`of correction.” Id. at 11:14–19.
`After considering the parties’ respective arguments, we find that the
`cross-examination of Mr. Posillico in this case is in the interest of justice.
`Id. at 25:9–16. In particular, we agree with Petitioner that Patent Owner
`clearly relies on Mr. Posillico’s factual averments in its Motion for Leave,
`
`
`
`3
`
`
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`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`and thus, as a matter of fairness, Petitioner shall have the right to cross-
`examine Mr. Posillico. See Mot. 5 (citing Ex. 2167 ¶¶ 8–10), 6 (citing
`Ex. 2167 ¶¶ 3–10). We also find that cross-examination of Mr. Posillico
`may be helpful to the Board in evaluating whether Patent Owner’s Motion
`for Leave sets forth a sufficient basis supporting Patent Owner’s position
`that a mistake may be correctable by a Certificate of Correction. See
`Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345, 1349 (Fed. Cir. 2019)
`(“The Board has previously reviewed motions for leave to seek a Certificate
`of Correction from the Director to determine whether there is sufficient basis
`supporting Patent Owner’s position that the mistake may be correctable.”
`(quotation omitted)).
`Typically, our rules provide for cross-examination as a matter of
`routine discovery. See 37 C.F.R. § 42.51(b)(1)(ii) (“Cross examination of
`affidavit testimony prepared for the proceeding is authorized within such
`time period as the Board may set.”). But, as Patent Owner points out, the
`Board did not previously set a time period under § 42.51(b)(1)(ii) for routine
`discovery to occur on remand. Ex. 1190, 12:4–17. We determine, however,
`that justice favors doing so now. Thus, we set the time period for cross-
`examination of Mr. Posillico to occur between January 27, 2020, and
`January 30, 2020.
`Finally, to the extent the proper procedure in this case would have
`been for Petitioner to have sought the Board’s authorization to file a motion
`to compel Mr. Posillico’s testimony under 37 C.F.R. § 42.52(a), we waive
`that requirement. See 37 C.F.R. § 42.5(b) (“The Board may waive or
`suspend a requirement” of any rule under Part 42). The Board has
`
`
`
`4
`
`
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`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`established a goal to issue decisions on cases remanded from the Court of
`Appeals for the Federal Circuit within six months of the Board’s receipt of
`the Federal Circuit’s mandate. See Standard Operating Procedure 9:
`Procedure for Decisions Remanded from the Federal Circuit for Further
`Proceedings (available at https://www.uspto.gov/sites/default/files/docu
`ments/sop_9_%20procedure_for_decisions_remanded_from_the_federal_cir
`cuit.pdf). And here, the Federal Circuit issued its mandate on November 7,
`2019. We determine that foregoing motions practice for compelling
`testimony in this proceeding will help to ensure the speedy and inexpensive
`resolution of the case. See 37 C.F.R. §§ 42.1(b), 42.5(a), (b) (stating that the
`rules are to be construed so as to ensure the just, speedy, and inexpensive
`resolution of a proceeding and, where appropriate, the rules may be modified
`to accomplish these goals).
`It is therefore:
`ORDERED that a cross-examination of Mr. Joseph Posillico shall
`take place no later than January 30, 2020;
`FURTHER ORDERED that the time for cross-examination is limited
`to four (4) hours;
`FURTHER ORDERED that Petitioner shall submit a copy of the
`cross-examination transcript in its entirety as an exhibit to Petitioner’s
`Opposition to Patent Owner’s Motion for Leave; and
`FURTHER ORDERED that Petitioner shall inform the Board via e-
`mail of the date and time of the cross-examination at least twenty-four (24)
`hours prior to the cross-examination.
`
`
`
`
`5
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`For 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
`
`For PATENT OWNER:
`Gregg LoCascio
`Noah Frank
`KIRKLAND & ELLIS LLP
`glocascio@kirkland.com
`noah.frank@kirkland.com
`
`Eugene Goryunov
`HAYNES & BOONE, LLP
`eugene.goryunov.ipr@haynesboone.com
`
`
`
`
`
`
`
`6
`
`
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