HONEYWELL INTERNATIONAL INC. v. ARKEMA INC., Appeal No. 2018-1151, 2018-1153 (Fed. Cir. October 1, 2019). Before Newman, Reyna and Hughes. Appealed from Patent Trial and Appeal Board. (Post-grant Review; Certificate of Correction)
Honeywell owns a patent related to compounds in refrigeration systems. The patent was intended to claim priority, via an extended chain of priority applications, to 2002, and thus intended to be subject to pre-AIA law. Due to an error in the priority chain, Arkema argued that the patent was only to be afforded priority to 2014, and thus, post-AIA law would apply. Arkema thus requested a post-grant review (PGR) proceeding, asserting lack of written description and obviousness of claims of the patent.
The Patent Trial and Appeals Board (PTAB) instituted the PGR proceedings. Upon Honeywell realizing, allegedly when preparing its Patent Owner Response, that the lack of written description was due to a mistake in the priority chain on the patent, it requested authorization to file a motion for leave to request a Certificate of Correction to amend the priority chain. The PTAB rejected the request, determining that there was not adequate basis for a Certificate of Correction.
Did the PTAB abuse its discretion in rejecting Honeywell’s request for leave to request a Certificate of Correction to amend an allegedly incorrect priority chain? (continue reading)
Summary by: Joel Gotkin
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