Patent Owner Unable To Dodge PGR Due To Inadequate Written Description

• Published date: 16 September 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Jones Day
• Author: Mr David Maiorana and David Linden

U.S. Patent No. 9,157,017 ("the '017 Patent") is assigned to Honeywell International Inc. ("Honeywell") and is titled, "Compositions Containing Fluorine Substituted Olefins and Methods and Systems Using Same." The detailed description indicates that a preferred use of the disclosed compounds is in refrigeration systems. Each independent claim of the '017 Patent expressly recites the use of the claimed subject matter in an automobile air conditioning system (AAC), a discrete technical field within the broader confines of heating and cooling applications. A priority chain leading to the '017 Patent includes a series of divisional applications containing substantively identical disclosures, the earliest filing date of which belongs to U.S. Patent Application No. 10/837,525 ("the '525 application"), filed April 29, 2004. In September 2016, the PTAB instituted post-grant review of claims 1-20 of the '017 Patent in response to dual challenges from French chemical manufacturer Arkema Inc. and Arkema France (collectively, "Arkema"). In November 2016, Honeywell requested authorization to correct the priority date of the '017 Patent. Honeywell had contended that it unintentionally excluded additional priority applications in the patent's priority chain. After the PTAB denied the request and held all claims of the '017 Patent unpatentable, Honeywell appealed the Final Decision to the Federal Circuit. The Federal Circuit vacated the Final Written Decision, holding that the PTAB abused its discretion in denying the request to correct the priority date, as that decision is properly left to the director. The Federal Circuit remanded and instructed the PTAB to provide Honeywell an opportunity to seek a Certificate of Correction.

On remand, Honeywell filed, and the PTAB granted, a Motion for Leave to Request a Certificate of Correction. But the Petitions Branch of the Patent Office denied Honeywell's Request for a Certificate of Correction, only allowing the possibility of the '017 Patent claiming priority to an application formally specified in the priority chain. A claim to an earlier filing date could allow Honeywell to elude Arkema's unpatentability challenge based on prior public use. Arkema had contended that the claimed subject matter of the '017 Patent was already in public use prior to the patent's March 26, 2014 filing date. According to Arkema, the chemical HFO-1234yf and polyalkylene glycol (PAG) lubricant recited in the claims was used in four vehicle models...