UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ARKEMA INC. AND ARKEMA FRANCE,
`Petitioner,
`
`v.
`
`
`
`
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`Paper No. 62
`Entered: August 25, 2022
`
`HONEYWELL INTERNATIONAL INC.,
`Patent Owner.
`
`____________
`
`Case PGR2016-00011
`Case PGR2016-000121
`Patent 9,157,017 B2
`____________
`
`Before MICHAEL P. TIERNEY, Acting Deputy Chief Administrative Patent
`Judge, GRACE KARAFFA OBERMANN, and SHELDON M. MCGEE,
`Administrative Patent Judges.
`
`PER CURIAM.
`
`
`JUDGMENT
`Final Written Decision on Remand
`35 U.S.C. §§ 144, 328(a)
`
`1 Because resolution of issues common to both post-grant reviews
`resolves the outstanding disputes between the parties as to all challenged
`claims of the patent at issue, we exercise our discretion to issue a
`single Final Written Decision to be entered in each case.
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ARKEMA INC. AND ARKEMA FRANCE,
`Petitioner,
`
`v.
`
`
`
`
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`Paper No. 62
`Entered: August 25, 2022
`
`HONEYWELL INTERNATIONAL INC.,
`Patent Owner.
`
`____________
`
`Case PGR2016-00011
`Case PGR2016-000121
`Patent 9,157,017 B2
`____________
`
`Before MICHAEL P. TIERNEY, Acting Deputy Chief Administrative Patent
`Judge, GRACE KARAFFA OBERMANN, and SHELDON M. MCGEE,
`Administrative Patent Judges.
`
`PER CURIAM.
`
`
`JUDGMENT
`Final Written Decision on Remand
`35 U.S.C. §§ 144, 328(a)
`
`1 Because resolution of issues common to both post-grant reviews
`resolves the outstanding disputes between the parties as to all challenged
`claims of the patent at issue, we exercise our discretion to issue a
`single Final Written Decision to be entered in each case.
`
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`
`
`
`I. INTRODUCTION
`In these post-grant reviews designated PGR2016-00011 (“PGR11”)
`and PGR2016-00012 (“PGR12”), Arkema Inc. and Arkema France
`(collectively, “Petitioner”) challenge the patentability of claims 1–20 of U.S.
`Patent No. 9,157,017 B2 (Ex. 10012, “the ’017 patent”), assigned to
`Honeywell International Inc. (“Patent Owner”). We have jurisdiction under
`35 U.S.C. § 6. For the reasons discussed below, we determine that
`Petitioner has shown by a preponderance of the evidence that claims 1–20
`(“the challenged claims”) are unpatentable. This Final Written Decision is
`issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.208.
`A. Procedural History
`Petitioner filed two Corrected Petitions for post-grant review of
`claims 1–20 of the ’017 patent. PGR11 Paper 3 (“PGR11 Pet.”); PGR12
`Paper 7 (“PGR12 Pet.”). On September 2, 2016, pursuant to 35 U.S.C.
`§ 324, we instituted post-grant reviews of claims 1–20 of the ’017 patent on
`certain grounds of unpatentability alleged in the Petitions. See PGR11 Paper
`13 (“PGR11 Dec. on Inst.”); PGR12 Paper 13 (“PGR12 Dec. on Inst.”).
`After institution, Patent Owner filed Patent Owner Responses. See
`PGR11 Paper 24 (“PGR11 Resp.”); PGR12 Paper 22 (“PGR12 Resp.”).
`And Petitioner filed Replies. PGR11 Paper 31 (“PGR11 Reply”); PGR12
`Paper 27 (“PGR12 Reply”). In PGR11, both parties filed motions to exclude
`evidence, and the briefing on those motions included oppositions and
`
`
`2 Unless otherwise noted, all exhibits referenced in this Decision were
`entered into the record in both PGR11 and PGR12. For ease of reference,
`we refer to the exhibits filed in PGR12 only unless otherwise noted.
`2
`
`
`
`
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`replies. See PGR11 Papers 36, 38, 41, 42, 45, 47, 50, 51, 52. Also in
`PGR11, Patent Owner filed Observations on Statements in Petitioner’s
`Reply following Board authorization. PGR11 Paper 40.
`The Board held a consolidated oral hearing on June 7, 2017. A
`transcript has been entered into the record. PGR11 Paper 53; PGR12 Paper
`33 (“Tr.”).
`After the consolidated oral hearing, we issued our Final Written
`Decisions which held claims 1–20 of the ʼ017 patent unpatentable. PGR11
`Paper 54; PGR12 Paper 34 (“first Final Decision”). Patent Owner filed a
`Notice of Appeal of the first Final Decision with the Court of Appeals for
`the Federal Circuit. PGR11 Paper 55; PGR12 Paper 35. In that Notice of
`Appeal, Patent Owner indicated that the issues on appeal may include, inter
`alia, “[w]hether the Board’s denial of Honeywell’s November 28, 2016
`request for authorization to file a motion seeking permission to file a
`Certificate of Correction to correct the series of applications in the ʼ017
`patent’s priority chain was arbitrary, capricious, an abuse of discretion, or
`otherwise not in accordance with law.” PGR11 Paper 55, 2; PGR12 Paper
`35, 2.
`On October 1, 2019, the Federal Circuit held that we “abused [our]
`discretion by assuming the authority that 35 U.S.C. § 255 expressly
`delegates to the Director: to determine when a Certificate of Correction is
`appropriate,” and vacated our Final Written Decision. Honeywell Int’l Inc.
`v. Arkema Inc., 939 F.3d 1345 (Fed. Cir. 2019). The Federal Circuit
`instructed us to “authorize Honeywell to file a motion seeking leave to
`petition the Director for a Certificate of Correction.” Id. at 1351.
`3
`
`
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`
`
`
`Pursuant to the Federal Circuit’s mandate, we gave our authorization,
`and Patent Owner filed its Motion for Leave to Request a Certificate of
`Correction. PGR11 Paper 61; PGR12 Paper 41. After additional briefing
`from the parties was complete, we granted Patent Owner’s Motion. PGR11
`Paper 77; PGR12 Paper 57. Patent Owner filed its Request for a Certificate
`of Correction, as well as a Petition to Accept [Unintentionally] Delayed
`Claim to Priority under 35 U.S.C. § 120 and 37 C.F.R. § 1.78. PGR11
`Ex. 2174; PGR12 Ex. 2172.
`
` On February 15, 2022, the Petitions Branch of the Office entered its
`Decision, dismissing Patent Owner’s Petition. PGR11 Ex. 3006; PGR12
`Ex. 3006 (“Dismissal”). On March 15, 2022, Patent Owner subsequently
`filed another Petition under 37 C.F.R. § 1.182 to Hold the Final Written
`Decision in Abeyance Pending Patent Owner’s Petition under 37 C.F.R.
`§ 1.181 requesting reconsideration of the Petition’s Office Dismissal.
`PGR11 Ex. 2175; PGR12 Ex. 2175. On May 26, 2022, the Petitions Branch
`dismissed that further Petition. PGR11 Ex. 3008; PGR12 Ex. 3008. On July
`2, 2022, Patent Owner filed a “Second Renewed Petition for
`Reconsideration of Decision Denying Petition for Certificate of Correction.”
`Ex. 3009. That Petition was dismissed on August 25, 2022. Ex. 3010.
`As a result, the ’017 patent’s claim to priority is the same as when our
`first Final Decision issued.
`
`B. Related Matters
`Petitioner filed a Corrected Petition for inter partes review of the ’017
`patent on February 26, 2016. The Board denied institution on the grounds
`presented in that Petition. Arkema Inc. v. Honeywell Int’l Inc., Case
`4
`
`
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`IPR2016-00643 (PTAB Sept. 2, 2016) (Paper 11). In addition, both parties
`identify several proceedings in the United States and in the United States
`Patent and Trademark Office (“Office”) involving the ’017 patent and
`patents related to the ’017 patent, as well as several proceedings in other
`countries involving foreign counterparts to the ’017 patent and its related
`patents. PGR11 Pet. 3–7; PGR12 Pet. 2–3; PGR11 Paper 11, 1–4; PGR12
`Paper 11, 1–4.
`
`
`
`C. The ’017 Patent
`The ’017 patent, titled “Compositions Containing Fluorine Substituted
`Olefins and Methods and Systems Using Same,” is directed to “the use of
`fluorine substituted olefins, including tetra- and penta-fluoropropenes, in a
`variety of applications.” Ex. 1001 (Abstract). Those applications, according
`to the ’017 patent, include “methods of depositing catalyst on a solid
`support, methods of sterilizing articles, cleaning methods and compositions,
`methods of applying medicaments, fire extinguishing/suppression
`compositions and methods, flavor formulations, fragrance formulations, and
`inflating agents.” Id. The written description of the ’017 patent states that a
`preferred use of the disclosed fluorine substituted olefins is in “refrigeration
`systems, and [in] methods and systems utilizing such compositions.” Id. at
`1:30–32.
`The ’017 patent explains that “[c]oncern has increased in recent years
`about potential damage to the earth’s atmosphere and climate” from “certain
`chlorine-based compounds” such as chlorofluorocarbons (CFCs) and
`hydrochlorofluorocarbons (HCFCs). Id. at 2:1–6. The ’017 patent states
`that these compounds are widely used in air-conditioning and refrigeration
`5
`
`
`
`
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`systems, but have become “disfavored because of the ozone-depleting
`properties.” Id. at 2:6–9. Thus, the ’017 patent explains, there is “an
`increasing need for new fluorocarbon and hydrocarbon compounds and
`compositions” for refrigeration. Id. at 2:9–12. In particular, “it has become
`desirable to retrofit chlorine-containing refrigeration systems by replacing
`chlorine-containing refrigerants with non-chlorine-containing refrigerant
`compounds that will not deplete the ozone layer.” Id. at 2:12–16.
`But, the ’017 patent teaches, “any potential substitute refrigerant must
`also possess the properties present in many of the most widely used fluids,”
`including “excellent heat transfer properties, chemical stability, low- or no-
`toxicity, non-flammability and lubricant compatibility.” Id. at 2:17–22. Of
`these properties, lubricant compatibility and flammability are especially
`important properties. Id. at 2:23–24 & 52–53. Lubricant compatibility (or
`miscibility) “is of particular importance,” the ’017 patent explains, in that
`the substitute refrigerant must be “compatible with the lubricant utilized in
`the compressor unit[] used in most refrigeration systems.” Id. at 2:23–27.
`The ’017 patent states that the “lubricant should be sufficiently soluble in the
`refrigeration liquid over a wide range of operating temperatures.” Id. at
`2:35–37. Otherwise, the lubricant becomes viscous and “lodge[s] in the
`coils of the evaporator of the refrigeration, air-conditioning or heat pump
`system” and “thus reduce[s] the system efficiency.” Id. at 2:37–42. As to
`flammability, the ’017 patent states that “it is considered either important or
`essential in many applications . . . to use compositions [that] are non-
`flammable,” particularly in heat-transfer applications. Id. at 2:53–56.
`“Unfortunately,” the ’017 patent teaches, “many HFCs, which might
`6
`
`
`
`
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`otherwise be desirable for use[] in refrigerant compositions are not
`nonflammable.” Id. at 2:61–63. The ’017 patent lists fluoroalkene 1,1,1-
`trifluoropropene (HFO-1243zf) as an example of a flammable compound.
`Id. at 2:63–67.
`The ’017 patent discloses “compositions comprising one or more C3
`or C4 fluoroalkenes, preferably compounds having Formula I as follows:
`XCzFR3-z (I)
`where X is a C2 or a C3 unsaturated, substituted or unsubstituted, alkyl
`radical, each R is independently Cl, F, Br, I or H, and z is 1 to 3.” Id. at
`3:40–50. The ’017 patent states that these compositions, referred to as
`“hydrofluoro-olefins or ‘HFOs,’” “satisf[y]” the “above-noted need[s].” Id.
`at 3:42–43; 4:1–2. The ’017 patent states that preferred compositions
`include compounds of Formula II, depicted below:
`
`
`“where each R is independently Cl, F, Br, I or H[,] R’ is (CR2)nY, Y is
`CRF2[,] and n is 0 or 1.” Id. at 4:10–21. The ’017 patent states that
`“applicants have surprisingly and unexpectedly found that certain of the
`compounds having a structure in accordance with the[se] formulas . . .
`exhibit a highly desirable low level of toxicity compared to other of such
`compounds” of Formulas I and II. Id. at 4:29–33.
`The ’017 patent then describes the preferred compounds of Formula I
`and Formula II. First, the ’017 patent states that “applicants believe that a
`
`
`
`7
`
`
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`relatively low toxicity level is associated with compounds of Formula II,
`preferably wherein Y is CF3, wherein at least one R on the unsaturated
`terminal carbon is H, and at least one of the remaining R [groups] is F.” Id.
`at 4:38–42 (emphasis added). Next, the ’017 patent states that in “highly
`preferred embodiments,” “n is zero” and “the unsaturated terminal carbon
`has not more than one F substituent.” Id. at 4:45–48 (emphasis added).
`These compounds, the ’017 patent states, “have a very low acute toxicity
`level.” Id. at 4:48–50. Finally, the ’017 patent states that, in “certain highly
`preferred embodiments,” the compositions “comprise one or more
`tetrafluoropropenes” (referred to as “HFO-1234”). Id. at 4:50–54.
`Among the tetrafluoropropenes, the ’017 patent identifies HFO-
`1234ze (cis- and trans-1,3,3,3-tetrafluoropropene) as “particularly
`preferred.” Id. at 4:54–63. The ’017 patent states that “the present
`compositions, particularly those comprising HFO-1234ze,” are believed to
`“not have a substantial negative affect on atmospheric chemistry.” Id. at
`5:30–36. Specifically, “certain preferred” compositions have a Global
`Warming Potential (GWP) of “preferably not greater than about 500,” and
`an Ozone Depletion Potential (ODP) of “not greater than 0.05.” Id. at
`5:43–58.
`Next, the ’017 patent contemplates “Heat Transfer Compositions.”
`See id. at 6:30–7:3.3 The ’017 patent teaches that “it is generally preferred
`
`3 In addition to heat transfer compositions, the ’017 patent also
`contemplates “Blowing Agents, Foams and Foamable Compositions” (id. at
`7:44–8:45), “Propellant and Aerosol Compositions” (id. at 8:46–9:63), and
`“Flavorants and Fragrances” (id. at 9:64–10:26). Example 5 of the ’017
`patent “illustrates the use of blowing agent in accordance with two preferred
`8
`
`
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`
`that refrigerant compositions of the present invention comprise compound(s)
`in accordance with Formula I, more preferably in accordance with Formula
`II, and even more preferably HFO-1234ze.” Id. at 6:34–38. The ’017 patent
`then states that “[i]n many embodiments, it is preferred that the heat transfer
`compositions of the present invention comprise transHFO-1234ze.” Id. at
`6:40–42.
`The ’017 patent teaches that the disclosed compounds comprise “at
`least about 50% by weight” of the heat-transfer compositions. Id. at 6:32–
`40. The ’017 patent also states that the heat-transfer compositions,
`especially refrigerant compositions used in vapor compression systems,
`include a lubricant in an amount from about 30% to about 50% by weight of
`the composition. Id. at 6:51–55. The ’017 patent explains that lubricants
`such as polyol esters (POEs) and polyalkylene glycols (PAGs), silicone oil,
`mineral oil, alkyl benzenes (ABs), and poly(alpha-olefins) (PAOs), which
`are commonly used in refrigeration machinery with HFC refrigerants, “may
`be used with the refrigerant compositions of the present invention.” Id. at
`6:64–7:3.
`Next, the ’017 patent describes the “drop-in” nature of the heat-
`transfer compositions. See id. at 7:4–43. The ’017 patent begins by stating
`that the “compositions of the present invention are believed to be adaptable
`
`
`embodiments of the present invention,” namely “HFO-1234ze and HFO-
`1234-yf,” to produce a polystyrene foam. Id. at 16:60–67. The ’017 patent
`reports that “foam polystyrene is obtainable in accordance with the present
`invention.” Id. at 17:18–20.
`
`
`
`9
`
`
`
`
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`for use in many” existing refrigeration systems, “with or without system
`modification.” Id. at 7:4–8. “In many applications,” the ’017 patent states,
`“the compositions of the present invention may provide an advantage as a
`replacement in systems . . . currently based on refrigerants having a
`relatively high capacity.” Id. at 7:8–11. Specifically, the ’017 patent states
`that the “lower capacity refrigerant composition[s] of the present invention”
`may “replace a refrigerant of higher capacity.” Id. at 7:11–16. The ’017
`patent exemplifies “embodiments consisting essentially of transHFO-
`1234ze, as a replacement for existing refrigerants, such as HFC-134a.” Id.
`at 7:16–20. The written description further states that:
`The present methods, systems and compositions are thus
`adaptable for use in connection with automotive air conditioning
`systems and devices, commercial refrigeration systems and
`devices, chillers, residential refrigerator and freezers, general air
`conditioning systems, heat pumps, and the like.
`Id. at 7:38–43.
`The ’017 specification provides several examples. See id. at 13:55–
`17:33. Example 1 is directed to “[a] refrigeration/air conditioning cycle
`system . . . where the condenser temperature is about 150°F. and the
`evaporator temperature is about -35°F.” Id. at 14:16–18. Table 1 provides
`the relative coefficient of performance (COP), relative capacity, and
`discharge temperatures for “several compositions of the present invention,”
`as compared to “HFC-134a having a COP value of 1.00, a capacity value of
`1.00[,] and a discharge temperature of 175°F.” Id. at 14:20–24. The ’017
`patent explains that COP “is a universally accepted measure of refrigerant
`performance” and represents “the relative thermodynamic efficiency of a
`
`
`
`10
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`refrigerant in a specific heating or cooling cycle” (id. at 13:64–14:1),
`whereas capacity “represents the amount of cooling or heating” a refrigerant
`provides (id. at 14:4–5). “[A] refrigerant with a higher capacity,” the ’017
`patent explains, “will deliver more cooling or heating power.” Id. at 14:8–9.
`Finally, the ’017 patent explains that lower discharge temperatures are
`“advantageous” and “likely lead[] to reduced maintenance problems.” Id. at
`14:39–43.
`Table 1 is reproduced below:
`
`
`
`
`Table 1 of the ’017 patent provides the relative COP and relative
`capacity of several refrigerant compositions HFO-1224ye, HFO-
`trans-1234ze, HFO-cis-1234ze, and HFO-1234yf.
`Id. at 14:25–35. The ’017 patent states that “[t]his example shows that
`certain of the preferred compounds for use with the present compositions
`each have a better energy efficiency than HFC-134a (1.02, 1.04 and 1.13
`compared to 1.00).” Id. at 14:36–39 (emphasis added). The ’017 patent also
`explains that a compressor using these refrigerants will produce
`advantageous discharge temperatures (i.e., 158, 165, and 155 compared to
`175 for HFC-134a). Id. at 14:36–43.
`Example 2 of the ’017 patent is directed to testing “[t]he miscibility of
`11
`
`
`
`
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`HFO-1225ye and HFO-1234ze with various refrigeration lubricants.” Id. at
`14:47–48. Lubricants tested include mineral oil, an alkyl benzene (Zerol
`150), two ester oils, a polyalkylene glycol (Goodwrench Refrigeration Oil
`for 134a systems), and a poly(alpha olefin) oil (CP-6005-100). Id. at 14:48–
`52. According to the written description:
`
`
`The polyalkylene glycol and ester oil lubricants were
`judged to be miscible in all tested proportions over the entire
`temperature range, except that for the HFO-1225ye mixtures
`with polyalkylene glycol, the refrigerant mixture was found to be
`immiscible over the temperature range of −50° C. to −30° C. and
`to be partially miscible over from −20 to 50° C.
`Id. at 15:4–9.
`Example 3 of the ’017 patent focuses on “[t]he compatibility of the
`refrigerant compounds and compositions of the present invention with PAG
`lubricating oils while in contact with metals used in refrigeration and air
`conditioning systems.” Id. at 15:15–20. Five combinations were tested: (a)
`HFO-1234ze and GM Goodwrench PAG oil; (b) HFO-1243zf and GM
`Goodwrench PAG oil; (c) HFO-1234ze and MOPAR-56 PAG oil; (d) HFO-
`1243zf and MOPAR-56 PAG oil; and (e) HFO-1225ye with MOPAR-56
`PAG oil. The ’017 patent reports that the tested compositions were stable in
`contact with aluminum, steel, and copper. Id. at 15:29–43.
`D. Illustrative Claims
`Independent claims 1 and 12 are illustrative of the challenged claims
`and are reproduced below:
`1. A method for producing an automobile air
`conditioning system for use with 2,3,3,3-tetrafluoropropene
`(HFO-1234yf) comprising:
`
`12
`
`
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`
`
`
`(a) providing an automobile vapor compression air conditioning
`system usable with refrigerant 1,1,1,2-tetrafluoroethane
`(HFC-134a) and having at least one compressor and at least
`one condenser; and
`(b) providing a heat transfer composition in said system, said
`heat transfer composition consisting essentially of:
`(i) at least about 50% by weight of a low toxicity refrigerant
`suitable for use in automobile air conditioning systems, said
`refrigerant consisting essentially of HFO-1234yf; and
`(ii) lubricant consisting essentially of polyalkylene glycol(s),
`and
`wherein (1) said condenser is operable with said refrigerant in a
`temperature range that includes 150°F. and (2) said system
`when operating at a condenser temperature of 150°F.
`achieves a capacity relative to HFC-134a of about 1 and a
`Coefficient of Performance (COP) relative to HFC-134a of
`about 1.
`
`
`
`12. A stable heat transfer composition for use in an
`automobile air conditioning system of the type having a
`condenser operating in a temperature range that includes about
`150°F., said heat transfer composition consisting essentially of:
`(i) at least about 50% by weight of a low toxicity refrigerant
`suitable for use in automobile air conditioning systems, said
`refrigerant consisting essentially of 2,3,3,3-
`tetrafluoropropene (HFO-1234yf); and
`(ii) lubricant consisting essentially of polyalkylene glycol(s),
`wherein said refrigerant under the conditions of said condenser
`operating at about 150°F. in said automobile air conditioning
`system has a capacity relative to HFC-134a of about 1 and a
`Coefficient of Performance (COP) relative to HFC-134a of
`about 1, and wherein said heat transfer composition is stable
`in contact with aluminum, steel and copper.
`Id. at 17:35–55, 18:34–53.
`
`
`
`
`
`13
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`
`
`
`E. Prosecution History of the ’017 Patent
`The ’017 patent was filed as U.S. Patent Application No. 14/225,588
`(“the ’588 application”) on March 26, 2014. Ex. 1001, [21], [22]. The ’588
`application claimed the benefit of a series of applications, the earliest of
`which constitute two provisional applications (i.e., No. 60/421,263 and
`No. 60/421,435) filed on October 25, 2002. Id. at 1:5–25.
`Concurrently with the filing of the ’588 application, Patent Owner
`filed a preliminary amendment cancelling all previous claims and adding
`new claims directed to the use of a heat-transfer composition consisting
`essentially of HFO-1234yf and PAG lubricant in automobile air conditioning
`(“AAC”). Ex. 1047, 3–6. After receiving a first office action rejecting the
`claims for double patenting and obviousness (see PGR12 Ex. 1048, 3–9),
`Patent Owner submitted a response providing a “Summary of the Claimed
`Subject Matter” (Ex. 1049, 6–7). In that Summary, Patent Owner stated that
`the invention is “directed to a specific heat transfer application, namely
`automotive air conditioning, having a combination of stringent and unique
`technical requirements, including numerous properties and characteristics
`that are not predictable.” Ex. 1049, 6–7. Patent Owner further informed the
`Office that “[t]he field of automotive air conditioning is a distinct technical
`field within the broader, general field of heating and cooling applications.”
`Id. at 7. And “[a]s such, automotive air conditioning has specific technical
`requirements as compared to other heating and cooling applications,
`including stationary air conditioning.” Id.
`Patent Owner identified those “specific technical requirements” as
`including: (1) strict prohibitions on the use of toxic refrigerant materials
`14
`
`
`
`
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`“due to the confined, sealed, low volume air space” in AAC; (2) strict
`restrictions on compressor size, which, in turn, “plac[es] restrictions on
`refrigerant capacity and COP”; (3) the ability to effectively operate at high
`condenser temperatures that form “in the heat-trapping engine
`compartment”; (4) restrictions on refrigerant flammability “due to the
`confined, sealed, low volume air space” in AAC; and (5) high stability “in
`view of the need for the use of flexible hoses” in AAC. Id. at 7–8.
`Patent Owner explained that the “specific characteristics of an
`automotive air conditioning system emphasi[z]e that automotive air
`conditioning is a distinct, select, technical field.” Id. at 12. The specific
`technical requirements also “necessarily have a significant impact on the
`properties required, and increase the difficulty and unpredictability of
`choosing an effective heat transfer fluid for use in an automotive air
`conditioning system.” Id. “[T]herefore,” Patent Owner concluded, “a skilled
`artisan would not conclude that a heat transfer fluid disclosed as suitable for
`heating or cooling generally would necessarily, or obviously, be suitable for
`use in automotive air conditioning.” Id. at 12–13; see also id. at 8 (stating
`that “a person of ordinary skill in the art would not simply expect that a
`material used as a refrigerant in applications other than automotive air
`conditioning would be useful in automotive air conditioning”).
`Patent Owner explained that the claimed subject matter met these
`technical requirements and also provided “acceptable and effective
`refrigerant/lubricant miscibility for use without an oil separator,”
`“dramatically superior Global Warming Potential,” and “an Ozone Depletion
`Potential (ODP) close to zero.” Id. at 13–14. Patent Owner informed the
`15
`
`
`
`
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`Office that the claimed subject matter proceeded in a direction opposite to
`conventional teachings “in a very unpredictable art” (id. at 13), and that
`“those skilled in the art simply had no basis for making the selections the
`inventors here made” (id. at 14).
`Among other things, Patent Owner stated that the claimed subject
`matter provided an unexpectedly safe air conditioning system having low
`flammability, superior stability, and low toxicity. Id. at 20–24. As to
`flammability, Patent Owner stated that, “[u]npredictably and unexpectedly,
`HFO-1234yf[] has a burning velocity 11.5 times below the burning velocity
`of HFO-1243zf, which is acceptable for use in automobile air conditioning.”
`Id. at 22 (emphasis omitted). And as to stability, Patent Owner stated that
`“[t]he extraordinary stability of the combination of HFO-1234yf with PAG
`is simply not something that could have been predicted or expected.” Id. at
`24. Further, Patent Owner represented that the drop-in nature of HFO-
`1234yf was also “an unexpected and highly advantageous property.” Id. at
`25.
`
`Finally, in another response to a subsequent office action, Patent
`Owner wrote that “the Examiner has acknowledged the prior arguments
`pointing out that the claims are directed to the special field of automotive air
`conditioning and has indicated that the argument may eventually provide a
`path to patentable subject matter.” Ex. 1050, 7. Patent Owner also wrote
`that “the Examiner [has] acknowledged that toxicity is a more important
`consideration in automotive air conditioning than in other refrigeration
`applications.” Id.
`
`
`
`
`16
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`
`F. Asserted Grounds of Unpatentability
`In PGR11, we instituted post-grant review of claims 1–20 of the ’017
`patent on the ground of unpatentability, under 35 U.S.C. § 103, over
`Inagaki4 in view of Tapscott,5 Uemura,6 and Magid.7 PGR11 Dec. on Inst.
`30.
`
`
`
`In PGR12, we instituted post-grant review on four grounds:
`(1) claims 1–20 on the ground of unpatentability for prior public use under
`35 U.S.C. § 102(a); (2) claims 1–12 and 14–20 on the ground of
`unpatentability for anticipation under 35 U.S.C. § 102(a) by WO ’625;8 (3)
`claims 1–20 on the ground of unpatentability for obviousness over Minor &
`Spatz9 in view of the ’882 patent;10 and (4) claim 13 on the ground of
`
`
`4 Sadayasu Inagaki, et al., English Translation of Japanese Patent
`Application No. JP H4-110388 (published Apr. 10, 1992) (“Inagaki”).
`PGR11 Ex. 1012.
`5 Robert E. Tapscott & J. Douglas Mather, Tropodegradable
`fluorocarbon replacements for ozone-depleting and global-warming
`chemicals, J. FLUORINE CHEM., 101:209–303 (2000) (“Tapscott”). PGR11
`Ex. 1015.
`6 S. Uemura, et al., Characteristics of HFC Refrigerants, INT’L
`REFRIGERATION & AIR CONDITIONING CONFERENCE, Paper 177 (1992)
`(“Uemura”). PGR11 Ex. 1014.
`7 Hillel Magid, et al., U.S. Patent No. 4,755,316 (issued July 5, 1988)
`(“Magid”). PGR11 Ex. 1008.
`8 Rajiv R. Singh, et al., WO 2007/002625 A2 (published Jan. 4, 2007)
`(“WO ’625”). PGR12 Ex. 1011.
`9 Barbara Minor & Mark Spatz, HFO-1234yf Low GWP Refrigerant
`Update, INT’L REFRIGERATION & AIR CONDITIONING CONFERENCE, Paper
`937 (2008) (“Minor & Spatz”). PGR12 Ex. 1010.
`10 Rajiv R. Singh, et al., U.S. Patent No. 8,065,882 B2 (issued Nov.
`29, 2011) (“the ’882 patent”). PGR12 Ex. 1009.
`17
`
`
`
`
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`unpatentability for lack of enablement under 35 U.S.C. § 112(a). PGR12
`Dec. on Inst. 36.
`In its patentability challenges in both PGR11 and PGR12, Petitioner
`relies on the Declarations of J. Steven Brown, Ph.D. (Ex. 1002) and William
`J. Brock, Ph.D. (Ex. 1004). In its responses, Patent Owner relies on the
`Declaration of Donald Bivens dated June 6, 2016 (Ex. 2001), two
`Declarations of Donald Bivens dated December 15, 2016 (PGR11 Ex. 2126,
`PGR12 Ex. 2126)11, the Declaration of Margaret H. Whittaker, Ph.D.
`(PGR11 Ex. 2094), and the Declaration of Darryl DesMarteau, Ph.D.
`(PGR11 Ex. 2161).
`
`II. DISCUSSION
`The parties dispute whether the ’017 patent is eligible for post-grant
`review. Petitioner asserts that the ’017 patent is eligible for post-grant
`review because its claims are not supported by a pre-March 16, 2013 priority
`application, and thus are limited to an effective filing date of March 26,
`2014, i.e., the actual filing date of the ’588 application. PGR11 Pet. 28–30;
`PGR12 Pet. 20–22. According to Petitioner, none of Patent Owner’s earlier-
`filed priority applications describe or enable the claimed subject matter of an
`AAC refrigerant composition consisting essentially of HFO-1234yf in
`combination with a lubricant consisting essentially of PAG in accordance
`with 35 U.S.C. § 112(a). PGR11 Pet. 31–43; PGR12 Pet. 24–36. Patent
`
`
`11 For clarity, we note that Dr. Bivens’ December Declaration filed in
`PGR11 is not identical to Dr. Bivens’ December Declaration filed in PGR12,
`even though both of these Declarations are entered into their respective
`records as Exhibit 2126.
`
`18
`
`
`
`
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`Owner challenges Petitioner’s assertions. PGR11 Resp. 24; PGR12 Resp.
`23–60. Before turning to this issue, we briefly address claim interpretation
`and the level of ordinary skill in the art and field of invention.
`A. Claim Interpretation
`In a post-grant review where, as here, the Petition is filed prior to
`November 13, 2018, the Board interprets claim terms in an unexpired patent
`according to the broadest reasonable interpretation in light of the
`specification of the patent in which they appear.12 We determine that no
`claim terms require express interpretation for purposes of this Decision. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (only those claim terms that are in controversy need to be construed,
`and only to the extent necessary to resolve the controversy).
`B. Level of Ordinary Skill in the Art and Field of Invention
`The person of ordinary skill in the art is a hypothetical person who is
`presumed to have known the relevant art at the time of the invention. In re
`GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be
`considered in determining the level of ordinary skill in the art include, but
`are not limited to, the types of problems encountered in the art, the
`sophistication of the technology, and the educational level of active workers
`in the field. Id.
`Petitioner’s Declarant, Dr. Brown, testifies that, a person of ordinary
`skill in connection with the ’017 patent is one who evaluates, designs, and
`
`
`12 See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51340 (Oc
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
