Filed: February 10, 2020
`
`
`Filed on behalf of: Arkema Inc. and Arkema France
`
`
`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
`Patent No. 9,157,017
`______________________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION FOR
`LEAVE TO REQUEST A CERTIFICATE OF CORRECTION
`
`
`

`

`U.S. Patent No. 9,157,017
`PGR2016-00011
`
`
`TABLE OF CONTENTS
`
`Page
`The Board Should Deny Honeywell’s Request ............................................... 1
`A. Honeywell Did Not Make a Mistake .................................................... 2
`B.
`Any Alleged “Mistake” Is Not of “Minor Character” .......................... 6
`C.
`Honeywell’s “Correction” Would Require Reexamination .................. 8
`D. Honeywell’s “Correction” Is Not Clear from the Record ................... 12
`E.
`Honeywell Cannot Establish Unintentional Delay ............................. 12
`F.
`Honeywell’s “Correction” Cannot Be Applied Retroactively ............ 13
`G. Authorizing Honeywell’s Request Would Prejudice Arkema ............ 14
`Conclusion ..................................................................................................... 15
`
`
`
`I.
`
`II.
`
`
`
`
`
`i
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`

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`U.S. Patent No. 9,157,017
`PGR2016-00011
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`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Application of G,
`11 USPQ2d 1378, 1989 WL 297872 (Comm’r Pat. & Trademarks
`1989) ................................................................................................................... 13
`ASM IP Holding B.V. v. Kokusai Elec. Corp.,
`IPR2019-00378, Paper 17 (PTAB July 5, 2019) .................................................. 9
`B. Braun Melsungen AG v. Becton, Dickinson & Co.,
`No. 1:16-cv-411, 2017 WL 2531939 (D. Del. June 9, 2017) ........................... 7, 8
`Carotek, Inc. v. Kobayashi Ventures, LLC,
`875 F. Supp. 2d 313 (S.D.N.Y. 2012) .................................................................. 7
`In re Dinsmore,
`757 F.3d 1343 (Fed. Cir. 2014) ........................................................................ 3, 4
`Droplets, Inc. v. E*TRADE Bank,
`887 F.3d 1309 (Fed. Cir. 2018) ...................................................................... 6, 14
`Emerson Elec. Co. v. SIPCO, LLC,
`IPR2016-00984, Paper 52 (PTAB Jan. 24, 2020) .................................. 13, 14, 15
`Field Hybrids, LLC v. Toyota Motor Corp.,
`No. 03-CV-4121, 2005 WL 189710 (D. Minn. Jan. 27, 2005) .......................... 13
`G.D. Searle LLC v. Lupin Pharm., Inc.,
`No. 2:13-cv-121, 2014 U.S. Dist. LEXIS 133900 (E.D. Va.
`Mar. 12, 2014)................................................................................................... 3, 4
`Honeywell Int’l Inc. v. Arkema Inc.,
`939 F.3d 1345 (Fed. Cir. 2019) ...................................................................... 2, 14
`Honeywell Int’l Inc. v. Arkema Inc.,
`Appeal Nos. 18-1151, -1153, D.I. 25 (Fed. Cir. May 9, 2018) ........................ 1, 6
`Inline Packaging, LLC v. Graphic Packaging Int’l, Inc.,
`IPR2015-01609, Paper 19 (PTAB Mar. 31, 2016) ............................................. 14
`
`
`
`ii
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`U.S. Patent No. 9,157,017
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`
`Kingston Tech. Co. v. CATR Co.,
`IPR2015-00559, Paper 44 (PTAB Nov. 6, 2015) ............................................... 14
`In re Lambrech,
`202 USPQ 620, 1976 WL 20974 (Comm’r Pat. & Trademarks
`1976) ............................................................................................................... 7, 14
`Prime Focus Creative Servs. Can. Inc. v. Legend3D, Inc.,
`IPR2016-01491, Paper 21 (PTAB Mar. 1, 2017) ............................................... 11
`In re Schuurs & Van Weemen,
`218 USPQ 443, 1983 WL 51963 (Comm’r Pat. & Trademarks
`1983) ..................................................................................................................... 7
`In re Serenkin,
`479 F.3d 1359 (Fed. Cir. 2007) ........................................................................ 3, 5
`Sierra Club v. Thomas,
`828 F.2d 783 (D.C. Cir. 1987) ............................................................................ 15
`SPTS Techs. Ltd. v. Plasma-Therm LLC,
`IPR2018-00618, Paper 7 (PTAB May 1, 2018) ................................................... 9
`Tronzo v. Biomet, Inc.,
`156 F.3d 1154 (Fed. Cir. 1998) ............................................................................ 9
`Ultratec, Inc. v. CaptionCall, LLC,
`872 F.3d 1267 (Fed. Cir. 2017) ............................................................................ 1
`United Servs. Auto. Ass’n v. Asghari-Kamrani,
`CBM2016-00063, Paper 10 (PTAB Aug. 4, 2016) .............................................. 8
`Word to Info, Inc. v. Google Inc.,
`140 F. Supp. 3d 986 (N.D. Cal. 2015) .................................................................. 7
`Statutes
`5 U.S.C. § 555(b) ..................................................................................................... 15
`5 U.S.C. § 706(1) ..................................................................................................... 15
`35 U.S.C. § 112 .......................................................................................................... 6
`
`
`
`iii
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`U.S. Patent No. 9,157,017
`PGR2016-00011
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`35 U.S.C. § 120 .............................................................................................. 7, 14, 15
`35 U.S.C. § 251 .......................................................................................................... 3
`35 U.S.C. § 255 ...................................................................................... 2, 3, 8, 11, 13
`35 U.S.C. § 311(c)(2) ............................................................................................... 14
`35 U.S.C. § 321(c) ................................................................................................... 14
`Regulations
`37 C.F.R. § 1.56(e) ................................................................................................... 11
`37 C.F.R. § 1.78(c)-(d) ............................................................................................. 12
`37 C.F.R. § 1.115(a) ................................................................................................... 4
`37 C.F.R. § 42.20(c) ................................................................................................... 8
`Other Authorities
`MPEP § 1481.03.II ..................................................................................................... 3
`MPEP § 1481.03.II.A ........................................................................................... 8, 12
`
`
`
`
`iv
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`

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`Only after Honeywell lost in the Institution Decision did it first consider
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`U.S. Patent No. 9,157,017
`PGR2016-00011
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`adding an additional priority chain under the pretext of a “mistake.” But
`
`Honeywell did not make any mistake—certainly not one of minor character—and
`
`its delay was not unintentional. Either defeats Honeywell’s motion.
`
`Honeywell’s acquiescence to and waiver of any argument against the merits
`
`of the Board’s Final Written Decision also means that, even if Honeywell’s
`
`proposed COC is granted, the earliest possible priority date is June 24, 2005—
`
`three years later than the date originally asserted by Honeywell. Reexamination
`
`would necessarily be required to consider three additional years of prior art, again
`
`dooming Honeywell’s request.
`
`Because Honeywell’s proposed COC would not apply to the present
`
`proceeding, the Board should deny Honeywell’s motion for this additional reason
`
`to forestall the continued waste of the parties’ and Board’s resources, and to
`
`alleviate the substantial prejudice to Petitioner.
`
`I.
`
`The Board Should Deny Honeywell’s Request
`Honeywell appealed based on Ultratec, Inc. v. CaptionCall, LLC, 872 F.3d
`
`1267 (Fed. Cir. 2017), seeking a “remand with instructions to grant Honeywell
`
`leave to request a [COC] from the PTO Director.” Honeywell Int’l Inc. v. Arkema
`
`Inc., Appeal Nos. 18-1151, -1153, D.I. 25, 1, 55 (Fed. Cir. May 9, 2018)
`
`(“HWBr”). The Federal Circuit instead instructed the Board to “determine if
`
`
`
`1
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`

`

`Honeywell had demonstrated a ‘sufficient basis’ that the mistake ‘may’ be
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`correctable.” Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345, 1349 (Fed. Cir.
`
`2019). “The Board should then review Honeywell’s motion for leave in accordance
`
`with 37 C.F.R. § 1.323 and MPEP § 1485, including to evaluate whether prejudice
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`to Arkema requires accommodation.” Id. at 1351. Thus, while Honeywell would
`
`like the Board to be limited to a mere “gatekeeping function,” the Federal Circuit’s
`
`mandate was not so limited. Ex. 1190, 11:10-19, 18:16-19:2; see also id., 12:8-11,
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`12:25-13:4, 16:11-16.
`
`The Board must make determinations regarding mistake, good faith,
`
`unintentional delay, inadvertence, and minor character, not to mention the absence
`
`of prejudice to Petitioner. If Honeywell cannot establish a “sufficient basis” for
`
`even one required element, Honeywell’s motion must be denied. And it is
`
`abundantly clear from the record, particularly from the deposition of Honeywell’s
`
`prosecution counsel (Ex. 1197), that Honeywell did not make a correctable
`
`mistake.
`
`A. Honeywell Did Not Make a Mistake
`Section 255 gives the Director discretion to correct certain “mistake[s]”
`
`made in good faith. 35 U.S.C. § 255. Honeywell, however, never intended to claim
`
`priority to the ’025 and ’605 applications, and made no mistake during
`
`prosecution. Honeywell has not shown sufficient basis to establish that its
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`
`
`2
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`

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`admittedly litigation-driven strategy—developed post-institution when it “realized
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`this could help the priority and some of the Board’s issues”—is a § 255 “mistake.”
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`Ex. 2040, 4:21-5:5; Ex. 1197, 25:3-26:16, 72:4-9.
`
`In the related context of reissue, the Federal Circuit has distinguished
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`correctable “mistake” or a genuine error from an uncorrectable “deliberate, but
`
`subsequently found to be disadvantageous, choice.” In re Serenkin, 479 F.3d 1359,
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`1364 (Fed. Cir. 2007); see also id. at 1362-63 (addressing “error” under 35 U.S.C.
`
`§ 251 and holding that “the deliberate [and knowing] action of an inventor or
`
`attorney during prosecution generally fails to qualify as a correctable error under
`
`§ 251”); see also In re Dinsmore, 757 F.3d 1343, 1349 (Fed. Cir. 2014) (“On the
`
`record of this case, applicants are ultimately seeking simply to revise a choice they
`
`made [(filing a terminal disclaimer)], not to remedy the result of a mistaken belief.
`
`Theirs is not an error remediable under the reissue statute.”); G.D. Searle LLC v.
`
`Lupin Pharm., Inc., No. 2:13-cv-121, 2014 U.S. Dist. LEXIS 133900, at *17-21
`
`(E.D. Va. Mar. 12, 2014) (“intentional acts are not correctable via reissue”). This
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`distinction between “mistake” or genuine error and deliberate choice applies
`
`equally to COCs, which allow for only a narrower subset of changes. E.g., MPEP
`
`§ 1481 (“If the above criteria are not satisfied, then a [COC] for an applicant’s
`
`mistake will not issue, and reissue must be employed ….”).
`
`Honeywell’s actions here are every bit as intentional as those in Serenkin,
`
`
`
`3
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`

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`Dinsmore, and G.D. Searle. On March 26, 2014, Honeywell filed the ’588
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`application that led to the ’017 patent with original claims directed to HFO-1234yf
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`+ PAG + AAC. Ex. 1045, 1, 4, 10-15; 37 C.F.R. § 1.115(a). At the same time,
`
`Honeywell amended the Related Applications section of the specification “to make
`
`reference to the priority application from which the present application originates.”
`
`Ex. 1045, 16, 44. It also filed an Application Data Sheet listing the same priority
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`claim that persists today. Id., 4. Honeywell did not reference the ’025 or ’605
`
`applications even once in the prosecution leading to the ’017 patent. See, e.g.,
`
`Ex. 1197, 70:11-18.
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`Rather than make a mistake, Honeywell’s prosecuting attorney, Mr.
`
`Posillico, testified that “it was never [his or Honeywell’s] intent [n]or [his] law
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`firm’s intent during the prosecution of the ’017 patent to claim priority to any
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`alternate priority chain.” Ex. 1197, 25:3-26: 16, 71:8-20. Mr. Posillico confirmed
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`that, upon review of his files and discussion with Honeywell’s in-house counsel, he
`
`did not miss any instruction to file an additional priority claim. Id., 22:7-25:21; see
`
`also id., 10:21-11:9, 11:22-12:5. Quite simply, as Mr. Posillico admitted, “[t]here
`
`was no error that was made during the prosecution itself.” Id., 72:4-9.
`
`Rather than make a mistake in its priority claims, Mr. Posillico and
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`Honeywell believed—indeed repeatedly represented before this Board—that the
`
`’017 patent’s AAC claims were entitled to the benefit of the ’525 application.
`
`
`
`4
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`

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`Paper 12, 12-51; Paper 24, 24; Paper 53; Paper 61, 10; Ex. 1197, 25:3-26:16,
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`43:13-45:23, 46:1-8, 56:17-57:2, 70:24-72:9, 73:8-17; Ex. 1068, 28-29 (related
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`European proceeding).1 Honeywell maintained this belief and its intended priority
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`claims post-issuance even after repeated notice that they lacked support for claims
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`to HFO-1234yf + PAG + AAC. Paper 3, 28-44; Paper 13, 15-26; Ex. 1197, 43:13-
`
`45:23, 46:1-8; Ex. 1069 (revocation of related European patent); Ex. 1031
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`(European appeal dismissed); see also Ex. 1197, 17:2-18:21, 23:1-13, 54:6-56:9,
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`82:10-84:13, 86:5-17; Ex. 1192, 98; Ex. 1193, 247-248, 273.
`
`Any attempt by Honeywell to cast Mr. Posillico as an overworked or
`
`uninformed practitioner (e.g., Ex. 2167, ¶ 10; Ex. 1197, 33:6-24, 34:4-36:5) to
`
`avoid a finding of a deliberate choice cannot stand in view of Honeywell’s pattern
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`of asserting that the original priority claim was correct despite being put on notice
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`to the contrary. Serenkin, 479 F.3d at 1364. Mr. Posillico also certainly knew how
`
`to seek a late priority claim during prosecution (Ex. 1197, 86:22-97:10), but
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`confirmed that it was “never Honeywell’s intent during the lifetime of the ’017
`
`patent prosecution to make a claim to [an] additional priority chain” (id., 25:3-
`
`
`1 Honeywell also repeatedly relied upon the ’525 application for other claims to
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`heat transfer compositions with HFOs, including for AAC. Ex. 1009; Ex. 1197,
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`74:9-80:9; Ex. 1193, 37, 52, 58; see also generally Exs. 1021, 1023, 1024.
`
`
`
`5
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`

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`26:1; see also id., 22:7-25:21, 71:8-20; Ex. 2040, 4:24-5:3).
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`Nor can Honeywell rely on the absence of a § 112 rejection during
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`prosecution, especially where Honeywell represented that its specification was
`
`unchanged from and had support in the ’525 application. See infra, § I.C.
`
`Honeywell alone had the burden of presenting a correct priority claim. E.g.,
`
`Droplets, Inc. v. E*TRADE Bank, 887 F.3d 1309, 1317-18 (Fed. Cir. 2018) (“As
`
`the Board found, because the burden was on Droplets to read and understand the
`
`applicable laws, and the MPEP provided clear guidance as to how to claim the
`
`benefit of a prior-filed application, Droplets cannot claim any error on the part of
`
`the examiner.”).
`
`As the record clearly reflects, rather than a “mistake,” Honeywell made a
`
`deliberate choice. Honeywell has not met, and cannot meet, its sufficient basis
`
`burden under these circumstances.
`
`B. Any Alleged “Mistake” Is Not of “Minor Character”
`Honeywell also has not presented sufficient basis to find that its alleged
`
`mistake is of a “minor character.” See Paper 61, 7-10. Unlike any of the cases on
`
`which Honeywell relies, here Honeywell argued that the changes it seeks have
`
`major, not minor, case-dispositive consequences. HWBr, 1, 3, 29, 31, 33, 36. And
`
`they will require reexamination. See infra, § I.C.
`
`Honeywell does not establish sufficient basis by reliance on cases where—
`
`
`
`6
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`

`

`unlike here—adding missing priority information was a minor change because it
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`was provided elsewhere in the file history, did not move the priority date later in
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`time, and/or did not require reexamination. Carotek, Inc. v. Kobayashi Ventures,
`
`LLC, 875 F. Supp. 2d 313, 334-35 (S.D.N.Y. 2012) (priority affirmatively claimed
`
`and identified in the inventor’s declaration); In re Lambrech, 202 USPQ 620, 1976
`
`WL 20974, at *2 (Comm’r Pat. & Trademarks 1976) (relationships between the
`
`cases was a “matter of record”); In re Schuurs & Van Weemen, 218 USPQ 443,
`
`1983 WL 51963, at *1 (Comm’r Pat. & Trademarks 1983) (“A correction for the
`
`purpose of perfecting a claim for priority under 35 USC [§] 120 [i.e., inserting the
`
`requisite reference] does not change the scope of a patent.”); see also Word to Info,
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`Inc. v. Google Inc., 140 F. Supp. 3d 986, 996 (N.D. Cal. 2015) (COCs upheld
`
`correcting specific reference to applications in the same chain). For example,
`
`unlike Carotek, Honeywell’s inventor declaration makes no reference to the
`
`additional patent chain. Ex. 1045, 102-103. Nor has Honeywell identified any other
`
`information from the prosecution of the ’017 patent that makes the additional
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`priority clear. See infra, § I.D. And, unlike the situation in any of these cases,
`
`because Honeywell is not entitled to the priority date of the ’525 application,
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`Honeywell’s requested change sweeps in additional prior art. See infra, § I.C.
`
`B. Braun Melsungen AG v. Becton, Dickinson & Co., relied upon by
`
`Honeywell, is also distinct. No. 1:16-cv-411, 2017 WL 2531939 (D. Del. June 9,
`
`
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`7
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`

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`2017). There, the court found the change to be minor because it was “more akin to
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`a typographical correction than a substantive change that would alter the scope of
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`the patentee’s rights.” Id. at *3. Here, by contrast, Honeywell’s sole reason for
`
`seeking this change is to “alter the scope of the patentee’s rights.”
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`Where the correction is not minor and would require reexamination (see
`
`infra, § I.C), the MPEP instructs one to file a reissue. MPEP § 1481.03.II.A. But
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`reissue would also be improper since there was no mistake. See supra, § I.A.
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`Honeywell cannot make changes via § 255 that are precluded by reissue.
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`C. Honeywell’s “Correction” Would Require Reexamination
`Honeywell makes no attempt to show that its proposed “correction” would
`
`not require reexamination, instead improperly attempting to shift its burden to
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`Arkema. See Paper 61, 11; see also 37 C.F.R. § 42.20(c). Honeywell’s motion
`
`should therefore be denied for failure to meet its “sufficient basis” burden.
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`Honeywell’s motion should also be denied because its proposed “correction”
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`would, in fact, require reexamination. Unlike the cases Honeywell cites,
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`Honeywell’s proposed change would significantly expand the universe of
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`applicable prior art. See supra, § I.B; see also United Servs. Auto. Ass’n v.
`
`Asghari-Kamrani, CBM2016-00063, Paper 10, 4-5, 7 (PTAB Aug. 4, 2016) (“The
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`alleged priority date … remains unchanged whether Patent Owner relies upon the
`
`second or third prior-filed application, as the intermediate, to claim the benefit of
`
`
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`8
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`the first prior-filed application.” (emphasis added)); ASM IP Holding B.V. v.
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`Kokusai Elec. Corp., IPR2019-00378, Paper 17, 2-3 (PTAB July 5, 2019)
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`(requested correction would move alleged priority date earlier in time); SPTS
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`Techs. Ltd. v. Plasma-Therm LLC, IPR2018-00618, Paper 7, 2 (PTAB May 1,
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`2018) (same). Compare Paper 61, 4 (Honeywell’s proposed correction seeking to
`
`add priority claim to different, later-filed priority applications in “alternate” chain),
`
`with Paper 61, 9 (proposed correction in USAA seeking to claim priority to the
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`same priority application with the same priority date via an alternate
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`“intermediate” application). Honeywell is attempting to establish a priority claim
`
`later than what it relied upon during prosecution, and reexamination would be
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`required to consider the intervening prior art. See, e.g., Tronzo v. Biomet, Inc., 156
`
`F.3d 1154, 1155-56 (Fed. Cir. 1998) (holding claims that were not entitled to
`
`parent application’s filing date invalid over intervening art).
`
`Specifically, Honeywell represented during prosecution that (i) the ’588
`
`application (from which the ’017 patent issued) was a “divisional” entitled to the
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`’525 application’s April 29, 2004, filing date; (ii) the ’588 application was not an
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`AIA transition application; and (iii) “[n]o new matter [was] added” by its claims to
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`HFO-1234yf + PAG + ACC. Ex. 1045, 4-5, 12-16. Honeywell further relied upon
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`the October 25, 2002, filing dates of the ’263 and ’435 provisional applications.
`
`See Ex. 1049, 28 (contrasting the market for HFO refrigerants “prior to 2002” and
`
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`9
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`“[s]ince 2002”); see also Ex. 1062, ¶ 4 (“at the time the invention was made (in
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`2002)”). The examiner accepted Honeywell’s representations, rejecting the claims
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`only over pre-2002 prior art. See, e.g., Ex. 1049, 6 (claims rejected over
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`JPH04110388A (1992), US6783691B1 (§ 102(e) art as of 2000), and
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`RU2073058C1 (1997)).
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`This Board found, however, that the ’017 patent’s claims are not entitled to
`
`the ’525 application’s filing date. Paper 54, 17-51. And Honeywell itself conceded
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`that it is not entitled to earlier 2002 and 2003 priority dates. E.g., Ex. 1197, 45:2-
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`46:4 (“I believe that they were not fully supported by, by the entire chain.”).
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`Honeywell’s attempt to establish priority based on the later June 24, 2005, date
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`would require reexamination to consider the nearly three additional years of prior
`
`art not considered during prosecution.
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`For example, reexamination would be required in view of U.S. Patent
`
`Application Publication No. 2008/0230738 to Minor et al. (“Minor”) raised during
`
`prosecution of the ’605 application. There, the examiner rejected a pending claim
`
`reciting replacing existing AAC refrigerants (e.g., elected species HFC-134a) with
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`fluoropropene refrigerants (e.g., elected species HFO-1234yf) as obvious over
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`Minor. Ex. 1194, 61, 143-146, 543, 578-581, 635, 663, 713-716, 750; Ex. 1197,
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`91:9-94:23. Honeywell only overcame Minor’s March 4, 2005, provisional
`
`application by a late priority claim to the ’525 application, which the Board here
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`10
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`concluded does not support the ’017 patent’s claims. Ex. 1194, 772-777, 781;
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`Ex. 1197, 97:1-10. Reexamination to at least consider Minor, which was not
`
`disclosed in the ’588 application, would be required.
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`Moreover, because Honeywell seeks to add a CIP claim to the September 4,
`
`2007, ’025 application, reexamination would be required to consider intervening
`
`prior art from between that date and the ’017 patent’s March 26, 2014, filing date.
`
`See 37 C.F.R. § 1.56(e) (“In any continuation-in-part application, the duty under
`
`this section includes the duty to disclose to the Office all information known to the
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`person to be material to patentability, … which became available between the
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`filing date of the prior application and the … filing date of the continuation-in-part
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`application.”). This would include WO 2007/002625 (PGR2016-00012, Ex. 1011)
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`and Minor & Spatz (Ex. 1010), relied upon for institution of PGR2016-00012.
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`PGR2016-00012, Paper 13, 30-32.
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`Finally, Honeywell cites no authority for its assertion that “reexamination”
`
`in § 255 does not include “the Board revisiting one of its earlier decisions.” Paper
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`61, 11. To the contrary, the Board has denied authorization for a request for a COC
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`that would require revisiting its Institution Decision. See Prime Focus Creative
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`Servs. Can. Inc. v. Legend3D, Inc., IPR2016-01491, Paper 21, 5 (PTAB Mar. 1,
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`2017) (denying authorization to file a motion for a COC to change portions of the
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`specification the Board specifically relied on in its Institution Decision).
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`D. Honeywell’s “Correction” Is Not Clear from the Record
`To correct priority via a COC, it “must be clear from the record of the patent
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`U.S. Patent No. 9,157,017
`PGR2016-00011
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`and the parent application(s) that [the requested] priority is appropriate.” MPEP
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`§ 1481.03.II.A (emphasis added). Honeywell has not identified any information in
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`the ’017 patent file that meets this requirement. Ex. 1197, 70:11-18; Ex. 2168, 7-8.
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`This is not surprising considering that Honeywell never intended to make an
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`additional claim for priority. Ex. 1197, 25:22-26:16, 46:1-8. Indeed, had it been
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`“clear from the record,” Honeywell could have identified its alleged “mistake”
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`long before the post-institution COC strategy was generated by Mr. Posillico,
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`Honeywell’s in-house counsel, and Honeywell’s of-record PGR counsel. Id., 65:9-
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`70:6.
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`E. Honeywell Cannot Establish Unintentional Delay
`Honeywell must establish that the entire delay from the original July 2014
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`due date for presenting priority claims was unintentional. 37 C.F.R. § 1.78(c)-(d).
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`Rather than being unintentional, Honeywell made deliberate, strategic, and
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`repeatedly reaffirmed choices reflecting its intent to claim and rely on the ’525
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`application for priority. E.g., Ex. 2041, 13:11-14; Ex. 1197, 65:20-70:6, 108:10-
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`110:14; see also supra, § I.A. These deliberate actions, even if now regretted or
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`reevaluated by Honeywell in view of its loss at institution, are not “unintentional.”
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`Indeed, Honeywell cites no authority to establish even a sufficient basis that
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`its deliberate acts could constitute unintentional delay. To the contrary, an
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`U.S. Patent No. 9,157,017
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`analogous deliberate decision to abandon a patent application because of a
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`“misjudgment that there was nothing patentable” is not “unintentional.”
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`In re Application of G, 11 USPQ2d 1378, 1989 WL 297872, at *2-3 (Comm’r Pat.
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`& Trademarks 1989) (“A deliberate act is not rendered ‘unintentional’ when an
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`applicant or assignee reviews the same facts (e.g., patentability of the claims) a
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`second time which changes their minds as to the appropriate course of action to
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`pursue.”); see also Field Hybrids, LLC v. Toyota Motor Corp., No. 03-CV-4121,
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`2005 WL 189710, at *6-7 (D. Minn. Jan. 27, 2005) (relying on the MPEP and
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`holding that “a course of conduct resulting in delay that is purposefully chosen
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`does not qualify as an unintentional delay”).
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`F. Honeywell’s “Correction” Cannot Be Applied Retroactively
`Even if granted, Honeywell’s requested COC cannot be applied retroactively
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`to this proceeding. Emerson Elec. Co. v. SIPCO, LLC, IPR2016-00984, Paper 52,
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`17-26 (PTAB Jan. 24, 2020) (explaining that “the logical and natural reading of
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`§ 255 is that, like § 254, a [COC] for an applicant’s mistake … does not receive
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`retroactive application”). For the reasons explained in Emerson, Honeywell’s
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`proposed COC would have no effect in this PGR even if granted. Id., 17-18, 24-26.
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`Honeywell’s motion is thus futile and a waste of the Office’s resources.
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`G. Authorizing Honeywell’s Request Would Prejudice Arkema
`The Federal Circuit acknowledged that a possible outcome on remand could
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`U.S. Patent No. 9,157,017
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`well be “[a] conclusion that prejudice to Arkema require[s] denial of Honeywell’s
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`request ….” See Honeywell, 939 F.3d at 1350. Indeed, Arkema was prejudiced
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`when Honeywell first raised its request post-institution. The prejudice, which is
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`incurable, has been compounded over time by Honeywell’s litigation strategy.
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`Honeywell’s attempt to change its priority claim after institution and more
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`than nine months after the ’017 patent issued is inherently prejudicial. Honeywell
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`prevented Arkema from asserting, e.g., the intervening prior art discussed above in
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`a new PGR or in an IPR while the current PGR was pending. 35 U.S.C.
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`§§ 311(c)(2), 321(c). Honeywell’s attempt to change the scope of the case
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`midstream is further prejudicial. See, e.g., Kingston Tech. Co. v. CATR Co.,
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`IPR2015-00559, Paper 44, 3 (PTAB Nov. 6, 2015); Inline Packaging, LLC v.
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`Graphic Packaging Int’l, Inc., IPR2015-01609, Paper 19, 4 (PTAB Mar. 31, 2016).
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`Honeywell’s suggestion that Arkema should have anticipated its filing of a
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`COC—something that Honeywell itself did not even contrive until months after
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`institution—is not cognizable. Droplets, 887 F.3d at 1317 (reasoning onus is on
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`applicant to get priority right); Emerson, Paper 52, 23 (“[I]t does not seem to us to
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`be asking too much to expect a patentee to check a patent when issued in order to
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`determine whether it contains any errors.” (citation omitted)); Lambrech, 1976 WL
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`14
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`20974, at *1 (reasoning that applicant has a “clear duty to comply” with 35 U.S.C.
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`U.S. Patent No. 9,157,017
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`§ 120). Indeed, Honeywell’s lack of diligence prejudiced Arkema and, as the
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`Board has aptly noted, the public. Emerson, Paper 52, 23 (“A lack of diligence by
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`the patentee in correcting patent errors has potentially negative consequences for
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`the public, who may allocate its affairs based on the patent as issued ….”).
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`Allowing Honeywell to sideline and delay the PGR process by its own
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`intentional inaction and litigation strategy contravenes Arkema’s statutory right to
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`file PGRs and have them decided within the statutory time frame. Such tactical
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`delays have been properly found prejudicial in similar contexts where Congress
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`has created express timetables. E.g., Sierra Club v. Thomas, 828 F.2d 783, 797
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`(D.C. Cir. 1987); cf. 5 U.S.C. §§ 555(b), 706(1) (Administrative Procedure Act
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`sets a requirement for agencies to conclude business “within a reasonable time”
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`and prescribes review of “unreasonably delayed” proceedings). Granting
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`Honeywell’s unmeritorious request will unnecessarily delay the already long-
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`stalled but inevitable invalidation of the ’017 patent.
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`II. Conclusion
`For the foregoing reasons, Arkema respectfully requests that the Board deny
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`Honeywell’s Motion for Leave to Request a Certificate of Correction.
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`Respectfully submitted,
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`Date: February 10, 2020
`
`U.S. Patent No. 9,157,017
`PGR2016-00011
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`
`
`
`By: /Erin M. Sommers/
`Erin M. Sommers, Reg. No. 60,974
`Mark D. Sweet, Reg. No. 41,469
`Mark J. Feldstein, Reg. No. 46,693
`Charles W. Mitchell, Reg. No. 73,228
`FINNEGAN, HENDERSON, FARABOW,
`
`GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`
`Counsel for Petitioner
`Arkema Inc. and Arkema France
`
`
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`U.S. Patent No. 9,157,017
`PGR2016-00011
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
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`Opposition to Patent Owner’s Motion for Leave to Request a Certificate of
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`Correction was served electronically via email on February 10, 2020, in its
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`entirety on the following:
`
`Gregg F. LoCascio
`Noah Frank
`KIRKLAND & ELLIS LLP
`1301 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`glocascio@kirkland.com
`noah.frank@kirkland.com
`HON_PTAB_Service@kirkland.com
`
`
`Patent Owner has consented to electronic service by email.
`
`By: /William Esper/
`William Esper
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`
`
`
`Date: February 10, 2020
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`
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`