Federal Circuit tells PTAB to stay in their lane on certificate of correction issue

Honeywell International Inc. (“Honeywell”) owns US Patent No. 9,157,017 (the ‘017 patent) directed to fluoroalkene compounds used in refrigeration systems.  The ‘017 patent recites a chain of priority dating back to 2002.  During prosecution of the ‘017 patent, Honeywell filed a preliminary amendment in which all 20 original claims were replaced with 20 claims directed to automobile air conditioning systems, but did not amend the priority chain at this time.

Arkema filed two petitions for post-grant review of the ‘017 patent, both of which alleging that the priority applications listed on the face of the ‘017 did not actually provide written description support for the claims.  Without a valid priority claim, Arkema argued, the claims of the ‘017 patent were subject only to the filing date of the application that led to the ‘017 patent, March 26, 2014.  Since PGR proceedings may only be instituted against patents having at least one claim with an effective filing date after March 16, 2013, the failure of the priority claim meant Arkema could avail themselves of PGR proceedings to contest the ‘017 patent.

Honeywell did not recognize the issue in its Preliminary response, but with its Patent Owner Response, and then requested permission to file a motion for leave to request a Certificate of Correction from the Director of the PTO to correct the priority chain.

The Board held two telephone conferences on the issue, during which Honeywell conceded the the error was not a clerical or typographical error, but argued that a Certificate of Correction was an appropriate vehicle for making a change to the priority chain.  Honeywell also argued that the change was minor because it did not change the substance of claims of the specification.  With respect to the good faith requirement of 35 USC § 255, Honeywell explained that it had only just learned of the error and sought leave to amend promptly upon discovering the mistake.  The Board denied the motion and explained that Honeywell had failed to meet the burdens imposed by 35 USC § 255 and further that granting the motion would be prejudicial to Arkema.

The Federal Circuit reversed Honeywell v Arkema, and held that the Board had abused its discretion in not only one, but two, ways.  First, by assuming the authority that 35 USC § 255 expressly delegates to the Director: to determine when a Certificate of Correction is appropriate.  Second, by failing 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.  This failure impedes our meaningful review on appeal.

Not content to leave it at telling the Board to stay in their lane, the Court then proceeded to tell the Board how to drive once they returned to it:

We vacate the Board’s final written decision and remand to the Board.  On remand, the Board should authorize Honeywell to file a motion seeking leave to petition the Director for a Certificate of Correction.  The Board should then review Honeywell’s motion for leave in accordance with 3 CFR § 1.323 and MPEP §1485, including to evaluate whether prejudice to Arkema requires accommodation [sic].