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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ARKEMA AND ARKEMA FRANCE,
`Petitioner
`v.
`
`HONEYWELL INTERNATIONAL INC.,
`Patent Owner.
`
`
`PGR2016-00011
`Patent No. 9,157,017
`
`
`PATENT OWNER’S REPLY
`IN SUPPORT OF ITS MOTION
`FOR LEAVE TO REQUEST A CERTIFICATE OF CORRECTION
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`PGR2016-00011
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`Patent Owner’s Reply
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`I.
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`TABLE OF CONTENTS
`The Board Should Grant Honeywell’s Motion ........................................... 1
`A. Honeywell Failed To Claim Its Proposed Chain By Mistake ............... 1
`B.
`Honeywell’s Mistake Was Of Minor Character.................................... 3
`C.
`Honeywell’s Correction Would Not Require Reexamination .............. 4
`D. Honeywell Did Not Intentionally Delay Seeking Its Correction .......... 7
`E.
`Honeywell’s Correction Is Clear From The Record ............................. 8
`II. Granting Honeywell’s Motion Is Not Prejudicial ....................................... 9
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`Note: All emphasis is added unless otherwise indicated.
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`i
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`PGR2016-00011
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`Patent Owner’s Reply
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`TABLE OF AUTHORITIES
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`Cases
`In re Application G,
`11 U.S.P.Q.2d 1378 (Comm’r Patents & Trademarks 1989) ............................... 8
`Application of Lund,
`376 F.2d 982 (C.C.P.A. 1967) .............................................................................. 6
`In re Dinsmore,
`757 F.3d 1343 (Fed. Cir. 2014) ............................................................................ 2
`Emerson Elec. v. SIPCO,
`IPR2016-00984, Paper 52 (PTAB 2020) ............................................................ 10
`Field Hybrids v. Toyota Motor,
`2005 WL 189710 (D. Minn. 2005) ....................................................................... 8
`G.D. Searle v. Lupin Pharms.,
`2014 WL 9869122 (E.D. Va. 2014) ..................................................................... 2
`Honeywell Int’l v. Arkema,
`939 F.3d 1345 (Fed. Cir. 2019) .............................................................. 1, 7, 9, 10
`Inline Packaging v. Graphic Packaging,
`IPR2015-01609, Paper 19 (PTAB 2016) ............................................................ 10
`Kingston Techs. v. CATR,
`IPR2015-00559, Paper 44 (PTAB 2015) ............................................................ 10
`In re Lambrech,
`202 U.S.P.Q. 620 (Comm’r Pat. & Trademarks 1976) ........................................ 9
`Prime Focus Creative Servs. Canada v. Legend3D,
`IPR2016-01491, Paper 21 (PTAB 2017) .............................................................. 7
`In re Rosuvastatin Calcium Patent Litig.,
`703 F.3d 511 (Fed. Cir. 2012) .............................................................................. 3
`In re Serenkin,
`479 F.3d 1359 (Fed. Cir. 2007) ............................................................................ 2
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`ii
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`Patent Owner’s Reply
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`PGR2016-00011
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`Sierra Club v. Thomas,
`828 F.2d 783 (D.C. Cir. 1987) ............................................................................ 10
`Southwest Software v. Harlequin,
`226 F.3d 1280 (Fed. Cir. 2000) .......................................................................... 10
`Tronzo v. Biomet,
`156 F.3d 1154 (Fed. Cir. 1998) ............................................................................ 6
`Warner-Lambert v. Apotex,
`316 F.3d 1348 (Fed. Cir. 2003) ............................................................................ 4
`Statutes
`35 U.S.C. §102 ........................................................................................................... 6
`35 U.S.C. §112 ................................................................................................... 5, 6, 8
`35 U.S.C. §251 ....................................................................................................... 2, 3
`35 U.S.C. §255 ........................................................................................... 1, 4, 5, 7, 9
`35 U.S.C. §303 ........................................................................................................... 5
`Regulation
`37 C.F.R. §1.56 .......................................................................................................... 5
`Manual of Patent Examining Procedure
`MPEP §1481.03 ..................................................................................................... 4, 8
`MPEP §2136.03 ......................................................................................................... 6
`MPEP §2242 .............................................................................................................. 6
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`iii
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`Patent Owner’s Reply
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`Honeywell has “demonstrated a ‘sufficient basis’ that [its] mistake ‘may’ be
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`correctable,” and none of Arkema’s arguments indicate otherwise. Honeywell Int’l
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`v. Arkema, 939 F.3d 1345, 1349 (Fed. Cir. 2019). Arkema does not cite any
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`precedent holding that a patentee improperly used a certificate of correction to
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`correct its patent’s priority chain, as Honeywell seeks to do here. Nor has Arkema
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`shown that it would be prejudiced if Honeywell’s motion were granted—much less
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`that any prejudice Arkema might suffer could not be accommodated. The Board
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`should grant Honeywell leave to ask the Director for a certificate of correction.
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`I.
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`THE BOARD SHOULD GRANT HONEYWELL’S MOTION
`A. Honeywell Failed To Claim Its Proposed Chain By Mistake
`The Director can correct certain patentee “mistake[s]” that “occurred in good
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`faith.” 35 U.S.C. §255. Arkema argues that Honeywell did not make a “mistake”
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`during prosecution, and thus nothing needs to be corrected. Paper 71 at 2-6. Arkema
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`is wrong on the law and the facts. There is at least a sufficient basis to conclude that
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`the Director may find that Honeywell made a correctable “mistake.”
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`The law is entirely on Honeywell’s side. Honeywell has identified at least 10
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`cases in which courts and the PTO approved certificates of correction to remedy
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`mistakes in priority chains, as here. Paper 61 at 8. Arkema, however, has not cited
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`any case in which any court or agency held a correction was improper because the
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`patentee did not make a “mistake” under §255. Instead, Arkema relies on cases
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`addressing reissues under 35 U.S.C. §251, which does not mention “mistakes” at all.
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`Patent Owner’s Reply
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`More than that, none of Arkema’s cases involved requests to supplement a patent’s
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`priority chain. Arkema’s strained analogies are insufficient to conclude that the
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`Director could not grant Honeywell’s correction as a matter of law.
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`Arkema argues that Honeywell did not mistakenly omit its proposed priority
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`chain because Honeywell had not identified that chain during prosecution. Paper 71
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`at 2-6. That is exactly backwards. In each of the reissue cases Arkema cites, courts
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`held a patentee’s “error” was not correctable precisely because the patentee had
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`identified multiple prosecution options and made a “deliberate choice” between
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`them “in exchange for a benefit.” See In re Serenkin, 479 F.3d 1359, 1362-64 (Fed.
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`Cir. 2007) (PTO “provid[ed] Serenkin with [two] choice[s]” and Serenkin
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`“intentionally and knowingly” chose one that secured an earlier filing date); In re
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`Dinsmore, 757 F.3d 1343, 1348-49 (Fed. Cir. 2014) (patentees “faced” a “choice”
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`after a rejection and filed a terminal disclaimer “in exchange for a benefit” while
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`“intentionally surrender[ing]” other options); G.D. Searle v. Lupin Pharms., 2014
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`WL 9869122, at *7 (E.D. Va. 2014) (patentees “intentional[ly] deci[ded] to file a
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`CIP,” which “bestowed the benefit of an extended” term).
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`Honeywell’s good-faith mistake bears no resemblance to the patentees’
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`“deliberate choice[s]” between identified options in those cases. Here, there is no
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`evidence that Honeywell “intentionally omitted” its proposed priority chain during
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`2
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`prosecution. Cf. In re Rosuvastatin Calcium Patent Litig., 703 F.3d 511, 523-24
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`Patent Owner’s Reply
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`(Fed. Cir. 2012) (affirming correctability of error under §251). Arkema all but
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`admits that: “Honeywell did not reference the ’025 or ’605 applications even once
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`in the prosecution leading to the ’017 patent.” Paper 71 at 4. And after going
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`“through [his] files very carefully,” the ’017 patent’s prosecuting attorney did not
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`find any “information relating in any way to a decision” during prosecution about
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`whether to include Honeywell’s proposed priority chain. Ex. 1197 at 10:12-11:2.
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`None of the testimony that Arkema cites contradicts this. See Paper 71 at 2-6.
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`Honeywell also did not “benefit” from omitting its proposed chain, which begins
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`after the earlier filing date of the priority chain the examiner was already
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`considering. Honeywell mistakenly omitted its proposed priority chain during
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`prosecution, and there is a sufficient basis the Director will find the same.
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`B. Honeywell’s Mistake Was Of Minor Character
`Arkema’s argument that Honeywell’s mistake was not of “minor character”
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`is equally unavailing. See Paper 71 at 6-8. Arkema again does not cite any decision
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`from any court or agency holding that a correction to a patent’s priority chain was
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`not of “minor character.” Id. To the contrary, in every case Arkema cites, courts
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`upheld the patentee’s right to correct its priority chain. Id.; see also Paper 61 at 8
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`(collecting cases). That alone is more than a sufficient basis to hold that the Director
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`may find Honeywell’s mistake was of “minor character” too.
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`3
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`Patent Owner’s Reply
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`Short on good law, Arkema tries to duck the inquiry altogether, arguing that
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`Honeywell’s mistake is not of “minor character” because its correction would
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`purportedly “require reexamination” and because whether priority is appropriate is
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`allegedly not “clear.” Paper 71 at 6-8. Arkema is wrong on both issues, see infra
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`§§I.C, I.E, but neither is an end-run around the “minor character” inquiry anyway.
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`Whether a correction “would require re-examination” and whether it is “clear from
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`the record of the [’017] patent and the parent application(s) that priority is
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`appropriate” are statutory and regulatory elements separate from the “minor
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`character” inquiry. See 35 U.S.C. §255; MPEP §1481.03(II)(A). Arkema cannot
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`“eviscerate[ that] important part of the statutory provision by conflating” it with
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`other elements. Warner-Lambert v. Apotex, 316 F.3d 1348, 1355 (Fed. Cir. 2003).
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`C. Honeywell’s Correction Would Not Require Reexamination
`Honeywell’s correction also would not “require re-examination” under §255,
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`and there is a sufficient basis to conclude the Director may find the same. Arkema
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`wrongly contends that “reexamination would be required to consider the intervening
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`prior art” whenever entering a correction would result in the patent having a later
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`priority date than it did when it issued. Paper 71 at 9-10. But Arkema does not cite
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`any precedent holding that a correction to a patent’s priority chain “require[d]
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`reexamination.” See Paper 71 at 8. Instead, in every case Arkema cites, the PTAB
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`granted the patentee leave to seek a certificate of correction. Id.
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`Patent Owner’s Reply
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`This case should be no different. Section 255 does not explain what
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`corrections “require re-examination,” and the Patent Act seemingly does not require
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`the Director to order reexamination at all. The Director can order reexamination if
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`he determines that a reference raises a “substantial new question of patentability.”
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`See 35 U.S.C. §303(a). But he is not required to, and whether to deny reexamination
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`is entirely at his discretion: “A determination by the Director pursuant to subsection
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`(a) of this section that no substantial new question of patentability has been raised
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`will be final and nonappealable.” Id. §303(c).
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`Here, there is a sufficient basis to conclude that the Director may decide
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`Honeywell’s correction does not merit reexamination. Arkema asserts three
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`references as purported support for its argument: Application No. 2008/0230738 to
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`Minor; Honeywell’s WO 2007/002625; and Minor & Spatz. Paper 71 at 10-11. None
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`presents a substantial new question of patentability. Arkema does not dispute that
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`Honeywell’s proposed priority applications adequately support the ’017 patent’s
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`claims under §112 going back to June 24, 2005. See Paper 61 at 12-13. Thus, the
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`WO ’625 application (filed June 26, 2006 (PGR2016-00012, Ex. 1011)) and Minor
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`& Spatz (published in 2008 (Ex. 1010)) would not be prior art if Honeywell’s
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`correction were entered. Honeywell thus would not need to disclose them: They are
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`not “material to patentability.” 37 C.F.R. §1.56(e).
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`Arkema’s reliance on the Minor application also fails. Minor can only
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`possibly be prior art under 35 U.S.C. §102(e) (pre-AIA), based on its priority claim
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`Patent Owner’s Reply
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`to Provisional Application No. 60/658,543, filed on March 4, 2005. Ex. 2172. But
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`for automobile air conditioning, Minor cannot benefit from the ’543 provisional’s
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`filing date—the provisional does not mention AAC, and thus cannot “support th[at]
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`subject matter [in Minor] in compliance with 35 U.S.C. 112.” MPEP §2136.03(III);
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`see also id. §706.02(f)(1)(I), (II) (Example 2); cf. Application of Lund, 376 F.2d 982,
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`988-89 (C.C.P.A. 1967). Tronzo v. Biomet, which Arkema relies on, supports
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`Honeywell’s point: The generic claims of the child patent could not benefit from the
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`filing date of the parent patent because the latter did not disclose sufficient
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`representative species. 156 F.3d 1154, 1159 (Fed. Cir. 1998).
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`Even the material Minor does carry over from the ’543 provisional would not
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`raise a substantial new question of patentability that would require reexamination,
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`as it is “merely cumulative to similar prior art already fully considered by the Office”
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`during original examination of the ’017 patent. MPEP §2242; see also id. §2216
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`(“new, non-cumulative technological teaching”). Arkema asserts that Minor teaches
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`“replacing existing AAC refrigerants (e.g., elected species HFC-134a) with
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`fluoropropene refrigerants (e.g., elected species HFO-1234yf).” Paper 71 at 10. But
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`the ’017 patent’s claims do not require “replacing” HFO-134a with HFO-1234yf,
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`and, in any event, the examiner considered references disclosing both HFO-1234yf
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`and HFC-134a as refrigerants during prosecution. Ex. 2173 at 4, 13, 15-17.
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`Patent Owner’s Reply
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`Arkema is also wrong that “re-examination” in §255 includes the prospect of
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`the Board revisiting one of its earlier decisions. Paper 71 at 11 (citing Prime Focus
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`Creative Servs. Canada v. Legend3D, IPR2016-01491, Paper 21 (PTAB 2017)).
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`Arkema made the same argument on appeal, citing Prime Focus, and the Federal
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`Circuit declined to endorse it. The reason is clear: A non-precedential Board decision
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`addressing a different kind of requested correction (to the description of a patent
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`figure) cannot undo 40+ years of precedent holding that changes to a patent’s priority
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`chain, like Honeywell seeks here, are permitted under §255.
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`D. Honeywell Did Not Intentionally Delay Seeking Its Correction
`The Federal Circuit was right to “express doubt over Arkema’s assertion [of]
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`intentional[] delay[.]” Honeywell, 939 F.3d at 1350-51. Indeed, Arkema’s argument
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`for intentional delay merely repackages its flawed argument that Honeywell did not
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`make a “mistake.” Arkema argues that Honeywell’s delay was intentional because
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`Honeywell “deliberate[ly]” chose to rely on the ’525 application for priority before
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`the ’017 patent issued. Paper 71 at 12-13. That is the same as arguing Honeywell did
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`not make a “mistake” because it did not consider adding its proposed priority chain
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`during prosecution—and is equally misguided. See supra §I.A. When the Board
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`confirms there is a sufficient basis to find Honeywell may have made a “mistake,”
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`it must also find a sufficient basis that Honeywell’s delay may have been
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`unintentional. Honeywell could not have intentionally delayed seeking its correction
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`7
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`before it discovered its mistake in the first place, and Arkema does not dispute
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`Patent Owner’s Reply
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`Honeywell’s diligence in seeking a certificate of correction after the Board’s
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`institution decision in this case—i.e., after the mistake was discovered. See Paper 61
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`at 12-13.
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`Honeywell’s conduct also materially differs from the patentees’ conduct in
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`the cases Arkema cites. Paper 71 at 13. In In re Application G, 11 U.S.P.Q.2d 1378,
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`1989 WL 297872, at *1 (Comm’r Patents & Trademarks 1989) and Field Hybrids v.
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`Toyota Motor, 2005 WL 189710, at *5-7 (D. Minn. 2005), the PTO expressly
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`notified the applicant that failure to respond to a rejection within three (or six)
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`months would result in abandonment, and the applicant chose not to respond. Here,
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`Honeywell was never put to a choice: The PTO never suggested that the claims
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`lacked §112 support, much less rejected them on those grounds.
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`E. Honeywell’s Correction Is Clear From The Record
`That leaves Arkema’s flawed argument that it is not “‘clear from the record
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`of the patent and the parent application(s) that [Honeywell’s requested] priority is
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`appropriate.’” Paper 71 at 12 (quoting MPEP §1481.03(II)(A)). Arkema presented
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`this same argument on appeal, and the Federal Circuit correctly did not accept it:
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`The ’017 patent and its proposed priority applications share two inventors and have
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`largely identical specifications; and the ’605 and ’025 applications were co-pending
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`with the ’017 patent’s application and continue-in-part from applications in the ’017
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`8
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`PGR2016-00011
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`patent’s existing priority chain. See Paper 61 at 5, 7. It could hardly be “clear[er]
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`Patent Owner’s Reply
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`
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`from the record” of the ’017 patent that “priority is appropriate” here.
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`II. GRANTING HONEYWELL’S MOTION IS NOT PREJUDICIAL
`Arkema has not been prejudiced by Honeywell’s diligent pursuit of its
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`correction and will not be prejudiced if the Board grants Honeywell’s motion.
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`Arkema also has not identified any potential prejudice that defies “accommodation.”
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`Honeywell, 939 F.3d at 1351. Arkema’s contrary arguments are unsound. By
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`requesting leave to seek a certificate of correction, Honeywell did not improperly
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`“attempt to change the scope of the case” or “prevent[] Arkema from asserting … a
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`new PGR or … IPR while the current PGR was pending.” Paper 71 at 14. For one
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`thing, Arkema already accounted for this scenario by filing two PGRs, one of which
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`(PGR2016-00011) asserts only pre-2002 references. For another, the alleged
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`disadvantages to Arkema are simply the result of Congress’s choices in giving
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`parties like Arkema different tools to challenge patents, and in giving patentees like
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`Honeywell procedures for correcting its patent.
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`It is no answer to say, as Arkema does, that Honeywell should have
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`“present[ed] a correct priority claim” during prosecution. Paper 71 at 6, 14-15.
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`Although applicants have a “duty to comply with” the Patent Act during
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`examination, §255 permits corrections of good faith mistakes like Honeywell’s. See
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`In re Lambrech, 202 U.S.P.Q. 620, at *1-2 (Comm’r Pat. & Trademarks 1976). The
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`9
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`other cases Arkema cites are inapposite. See Sierra Club v. Thomas, 828 F.2d 783,
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`Patent Owner’s Reply
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`797 (D.C. Cir. 1987) (unreasonably delayed agency decision-making); Inline
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`Packaging v. Graphic Packaging, IPR2015-01609, Paper 19 at 2-3 (PTAB 2016)
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`(patentee failed to seek authorization before petitioning for correction); Kingston
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`Techs. v. CATR, IPR2015-00559, Paper 44 at 2 (PTAB 2015) (correcting claims).
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`The Board need not decide now what effect Honeywell’s correction, if
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`granted, would have on this proceeding. Paper 71 at 13 (citing Emerson Elec. v.
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`SIPCO, IPR2016-00984, Paper 52 (PTAB 2020)). Even assuming that the Board’s
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`non-precedential, not-yet-appealed decision in Emerson remains good law, its
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`holding reinforces why Honeywell’s motion should be granted. In Arkema’s words,
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`“Honeywell’s proposed COC would have no effect in this PGR even if granted”
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`under Emerson. Id. That is the definition of no prejudice in this case.
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`Moreover, even if Arkema is correct that Honeywell’s correction would not
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`affect this case, the Federal Circuit decision that Emerson relies on, Southwest
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`Software v. Harlequin, makes clear that even if a claim is “invalid without the
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`[certificate of correction], the invalidity cease[s] … when the PTO issue[s] the
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`certificate.” 226 F.3d 1280, 1297 (Fed. Cir. 2000). It is undisputed that Honeywell’s
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`proposed correction would cure the basis for invalidity in the Board’s final written
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`decision. Denying Honeywell’s motion would thus unfairly prejudice Honeywell by
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`stripping it of its statutory opportunity to correct its patent.
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`10
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`PGR2016-00011
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`Patent Owner’s Reply
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`Date: February 20, 2020
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`Respectfully submitted,
`
`/s/ Noah Frank
`
`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
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`1]
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`PGR2016-00011
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`Patent Owner’s Reply
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
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`Reply In Support of Its Motion for Leave to Request a Certificate of Correction and
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`newly designated exhibits were served on the 20th day of February, 2020, Via
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`electronic mail directed to counsel of record for the Petitioners:
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`Mark D. Sweet
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`mark.sweet@fmnegan.com
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`Mark J. Feldstein
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`mark.feldstein@finnegan.com
`
`Erin M. Sommers
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`erin.sommers@finnegan.com
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`Charles W. Mitchell
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`charles.mitchell@fmnegan.com
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`Arkema_PTAB@finnegan.com
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`/s/ Noah Frank
`
`Noah Frank
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`CERTIFICATE OF COMPLIANCE
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`This motion complies with the page limitation set by the Board in its
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`December 12, 2019 order. Ex. 1189 (24:2).
`
`/s/ Noah Frank
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`12
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