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Honeywell International Inc. v. Arkema Inc.

PTAB’s Improper Denial of Request to File Motion Pursuing Correction Certificate Leads to Vacatur of Final Decision

Honeywell International Inc. v. Arkema Inc., __ F.3d __, 2019 WL ___ (Fed. Cir. Oct. 1, 2019) (Newman, REYNA, Hughes) (PTAB) (3 of 5 stars)

Fed Cir vacates PGR decision canceling Honeywell’s claims. Honeywell’s patent related to fluoroalkene compounds used in refrigeration systems. The opinion turns on the Board’s decision not to permit Honeywell to file a motion for leave to petition for a Certificate of Correction mistake in the chain of priority listed on the patent. That rejection is judicially reviewable under the APA; the narrow exception to judicial review for certain discretionary agency actions (5 U.S.C. § 701(a)(2)) does not apply per Ultratec, 872 F.3d 1267 (Fed. Cir. 2017). The Board abused its discretion in rejecting Honeywell’s request because in doing so it improperly “assum[ed] the authority that 35 U.S.C. § 255 expressly delegates to the Director to determine when a Certificate of Correction is appropriate.” Op. at 6. The Board’s decision not to permit Honeywell to file a motion for leave was based on two telephonic hearings, after which the Board determined that Honeywell had “fail[ed] to show that the requirements of 255 have been met.” Id. at 8. This was abuse of discretion both because it required Honeywell to present a § 255 proof before even filing a motion for leave to petition the Director, and because it arrogated the Director’s authority to decide the merits of Honeywell’s petition. The opinion also criticizes the Board for making its decision without actually seeing the correction Honeywell was proposing, and for not providing a reasoned basis for its decision. It notes that “the PTO has previously allowed patentees to correct priority claims through Certificates of Correction.” Id. at 10. It also expresses skepticism about Arkema’s contention that there was an element of intentional delay on Honeywell’s part.

KEYWORDS: POST GRANT REVIEW; ADMINISTRATIVE PROCEDURES ACT; CERTIFICATE OF CORRECTION