Insights

air units

Patent Owner Unable To Dodge PGR Due To Inadequate Written Description, PTAB Litigation Blog

Visit the PTAB Litigation Blog 

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.

 Read the full article at ptablitigationblog.com.  

Jones Day publications should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general information purposes only and may not be quoted or referred to in any other publication or proceeding without the prior written consent of the Firm, to be given or withheld at our discretion. To request reprint permission for any of our publications, please use our “Contact Us” form, which can be found on our website at www.jonesday.com. The mailing of this publication is not intended to create, and receipt of it does not constitute, an attorney-client relationship. The views set forth herein are the personal views of the authors and do not necessarily reflect those of the Firm.