by Dennis Crouch
Honeywell Int’l. Inc. v. Arkema Inc. (Fed. Cir. 2019)
On Arkema’s request, the PTAB initiated a post grant review against Honeywell’s U.S.
Patent 9,157,017 (“method for producing an automobile air conditioning system for use with 2,3,3,3-tetrafluoropropene”). (Filed 4-months after patent issuance).
The patent includes a priority chain that goes back to 2002 and Honeywell thus argued that the patent was not amenable to PGR review. However, it turns out that Honeywell had a mistake in its priority chain listing — having forgotten to add one additional filing to its priority chain. Honeywell then asked the PTAB for permission to petition the PTO Director for a Certificate of Correction under Section 255.
Whenever a mistake of a clerical or typographical nature, or of minor character, which was not the fault of the [PTO], appears in a patent and a showing has been made that such mistake occurred in good faith, the Director may, upon payment of the required fee, issue a certificate of correction, if the correction does not involve such changes in the patent as would constitute new matter or would require re-examination.
35 U.S.C. § 255
Honeywell admitted that the error was not clerical or typographical and Arkena argued that it was a major change to the patent — “not proper grounds for correction.” Honeywell argued good faith — that discovered the error only after institution, and there is no suggestion that the lack of priority claim benefited the patentee in any way — just a big mistake.
To be clear about PTAB procedure — before filing a motion , you first have to get permission (leave) to file the motion. Here, Honeywell asked PTAB for permission to file a motion for leave from the PTAB to file a petition for correction. The Board did not give permission — rejecting Honeywell’s request for leave. In the process, the Board agreed with Arkena’s “not-minor” arguments and that the correction could prejudice the petitioner. The Board subsequently cancelled the claims – finding that without the priority chain, the late-filed claims are anticipated by intervening prior art.
On appeal, the Federal Circuit has vacated and remanded — holding that the PTAB should allow the Certificate of Correction petition. In particular, the court found that the PTAB had “abused its 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.
Section 255 does not grant the Board authority to determine whether a mistake in an issued patent is of “minor character” or “occurred in good faith.” 35 U.S.C. § 255. That authority is expressly granted to the Director. Id. The Director has not delegated its Section 255 authority to the Board, but has instead promulgated procedures by which patentees may seek the Board’s leave to petition the Director for a Certificate of Correction. 37 C.F.R. § 1.323; MPEP § 1485.
The Federal Circuit has held that it is appropriate for the PTAB to require “sufficient basis” supporting a correction request before granting permission to petition the PTO Director. The basic idea is that the correction process could slow-down the PTAB trial. In this case, however, the PTAB went to far because it did not allow Honeywell to file a motion explaining its case.
By requiring that Honeywell “show that [the] requirements of 255 have been met” before authorizing Honeywell to file a motion for leave to seek a Certificate of Correction from the Director, the Board abused its discretion. The Board further abused its discretion by assuming the authority that § 255 delegates to the Director and deciding the merits of Honeywell’s petition for a Certificate of Correction. . . .
[B]y evaluating the merits of Honeywell’s § 255 request when Honeywell was merely requesting authorization to file a motion for leave to petition the Director, the Board “lacked the information necessary to make a reasoned decision.” [Quoting Ultratec] At that stage, the Board had not seen the language of Honeywell’s proposed correction to the priority chain language of the ’017 patent. Nor had the Board seen any evidence of whether the mistake was inadvertent and made in good faith or whether the correction prejudiced Arkema.
The Board also failed to provide an explanation or a reasoned basis for its decision. The Board provided no explanation for its conclusion that Honeywell “failed to show that the minor character prong has been met” or its conclusion that prejudice to Arkema required denial of Honeywell’s request to file a motion.
Slip opinion. On Remand, the Federal Circuit ordered the PTAB to now allow “Honeywell to file a motion seeking leave to petition the Director for a Certificate of Correction.”
Vacated and Remanded
Another view provided by the write-up at PatentDocs: link to patentdocs.org
A quick look at the VERY MESSY family tree here shows that the probability of mere clerical errors is quite high.
Notwithstanding that probability, it is interesting to note that the very first action on the merits included non-stat DP rejections over a number of family members. Surprisingly, this part of the first action was NOT answered in the office action reply. Instead, it was nearly nine months later that TD’s were offered (and initially rejected). Furthermore, the TD’s were a very limited set, not nearly encompassing the list of items for which the non-stat DP rejection was made.
“Derp derp this stuff is complicated so derp the major omission was clerical derp!”
Seriously, that’s not how it works and it’s one of many reasons PatentHacks isn’t worth reading.
Do you bother at all to grasp the point presented?
Here, you miss – and miss by a mile.
If you read and understand the rule in question, then you will understand Honeywell has already admitted that the certificate is the wrong way to address this kind of major patent-invalidating error.
This kabuki dance they are doing is a massive abusive waste of judicial and administrative resources.
“read and understand the rule in question, then you will understand Honeywell has already admitted that the certificate is the wrong way to address this kind of major patent-invalidating error.”
Actually Malcolm, had YOU read and understood the rule in question, you would understand that there is at the very least a very real and colorable argument to be made that the certificate is a correct way to address the situation.
Mind you, I am NOT saying that the actual answer — AS WOULD BE SUPPLIED by the Director — must necessarily BE one way or the other.
But THAT is just NOT the point of the case here in which the point is MERELY that the Board misplayed its authority and did not use the proper Means in its hurry to reach a certain Ends.
“kabuki dance” or not, anyone understanding — and appreciating — the Rule of Law can see why the proper Means must be played out.
You might refresh yourself on the lesson of Sir Thomas More and his insistence on providing proper protection under the law even to the Dev 1L himself.
“Derp derp lookie my argument for creating an exception for the mistake in my st 00 pitly complicated priority claim is derp totally colorable derp!”
Remember, folks: Bildo is the same cl 0wn who obsesses here endlessly over the “Rule of Law”.
Your Derp Dance and mindless as hominem are completely untethered to my post and its contents.
Are you even trying at all to follow along?
It seems like the CAFC or the PTO must have addressed the underlying substantive issue before, i.e., whether you can use a certificate of correction to add an additional patent application to a priority chain.
Switching two mistakenly inverted patent reference numbers around on the front of the patent where there was never any ambiguity about the correct number … sure, that seems reasonable.
But actually changing the priority chain with a CertOCorr? Doesn’t seem right.
Waiting for a certificate of correction would have been a waste of time. Such certificates are not granted unless, inter alia, it is clear from the record _of the patent_ and the parent application(s) that priority is appropriate. MPEP 1481.03. In this case, patentee is not even alleging that it made a proper claim for priority during prosecution, only that it made an “inadvertent” error in failing to do so.
In that case, it seems like the remand is also a waste of time. This patent is as good as d e a d and the patentee is just playing games.
Your “playing games” merely reflects that the reviewing court recognized that the Ends do not justify the Means.
It’s rather an important concept related to understanding the Rule of Law.
So when do the patentees and their attorneys end up in jail or fined for using the wrong means?
Because everybody involved knows that the means they are using here is the wrong one.
And that’s the most important thing, right, Mr (LOL) “Rule of Law”?
Tell everyone again about how you couldn’t distinguish between Clinton and Trump, Mr. Glibt@rd “Rule of Law”.
Hypocritical piece of s—t.
Have they used the wrong means?
The issue here is what the PTAB did.
Let’s make sure you understand/acknowledge/integrate that lesson first.
“Derp derp ‘clerical nature’ could mean anything derp!”
Give us all a break, Bildo.
I notice that you retreat to your typical Derp Dance when the point is stressed that the action of the review court is concerning what the PTAB did.
Not sure just what “break” you want to be given….
If your para 1 question has been previously CAFC addressed it is not apparent from this Fed. Cir decision since it only cites two District Court cases in support of correcting a priority claim with a certificate of correction. Is that because it has not been challenged? But would it make sense to require reexamination to do so?
Sorry, I meant to say reissue.
I don’t follow your suggestion for “reissue.” It’s too late for a broadening reissue and by patentee’s admission the priority document would provide expanded written description support and thus broaden the scope of the claims. Incidentally, the MPEP states (at 1481) that a mistake for CoC purposes is not considered to be of the “minor” character required for issuance if the requested change would “materially affect the scope” or meaning of the patent. The Director really should have intervened in this case.
Given that one may not read into the claims from the specification, Joe exactly does “expanded written description support and thus broaden the scope of the claims” work?
Without getting into the facts of this case, a priority case that defines a claim term more broadly than the ordinary meaning or provides data which would broaden the scope given to a claim could have the remarked upon effect.
I agree. That is often the case. But in this particular odd case, patentee admits that claims in the patent lack adequate written description support because priority was not claimed to the application that provides the support. (That admission is for the purpose of attempting to create an earlier effective filing to make the patent not subject to PGR proceedings.) But adding the priority document to the patent would render claims that are by admission invalid, valid, and entitled to full scope.
Timing for purposes of validity — does such affect the scope (content) of claims? Note that the original counterpoint had to do with the fact that items from the spec are NOT read into the claims — this is geared to the claims, and NOT the (admittedly otherwise related) specification.
Reissues are not just for fixing claims [and a reissue here would not change them]. The reissue statute is for patents “..deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, OR by reason of the patentee claiming more or less than he had a right to claim in the patent..”
[For either a reissue or a certificate of correction the PTO ought to require full 112 support for the final patent claims in any prior application for which a defective priority claim is being corrected to. The PTO actually checking for that [or at least requiring a clear declaration for that] is more likely in a reissue.]
I did not say reissues are “just for fixing claims.” I said it was too late for a broadening reissue. But how would the reissue fix you suggest “not change” the scope of the claims? (even though the claim language per se would remain unchanged)
?
Can you rephrase that question?
The Director might have also pointed out that petitions practice was the principal reason that inter partes reexaminations dragged on for years. The PGRs were supposed to replace petitions with motions practice. But now patentees are informed they can get out of post-grant proceedings and the “statutory” deadlines by filing lots and lots of PETITIONS. What is going to replace PGRs?
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