On October 1, 2019, in Honeywell Int'l v. Arkema Inc., the Federal Circuit vacated a combined Final Written Decision by the U.S. Patent and Trademark Office Patent Trial and Appeal Board in two post-grant review proceedings finding that claims 1-20 of U.S. Patent No. 9,157,017 were unpatentable.  The Federal Circuit also remanded to the Board to authorize Honeywell International Inc. to file a motion seeking leave to petition the Director for a Certificate of Correction.

The '017 patent, which is owned by Honeywell and which is directed to fluoroalkene compounds used in refrigeration systems and other applications, recites a chain of priority applications dating back to 2002, all of which were incorporated by reference into the '017 patent.  During prosecution of the application that issued as the '017 patent, Honeywell filed a preliminary amendment in which it cancelled all of the claims included in the original application and added new claims directed to different subject matter (i.e., automobile air conditioning systems), but failed to make corresponding amendments to the list of priority applications.

Four months after the '017 patent issued, Arkema Inc. filed two petitions for post-grant review of the '017 patent, asserting in both petitions that the priority applications listed on the face of the '017 patent did not provide written description support for the issued claims.  Arkema argued that as a result, the claims of the '017 patent were only entitled to the March 26, 2014 filing date of the application from which the '017 patent issued (as opposed to a 2002 priority date), that the '017 patent was therefore eligible for PGR proceedings, and that several prior art references from 2002 to 2014 rendered the claims of the '017 patent unpatentable.  The Board instituted both PGR's.

Honeywell, which asserted that it had first realized the priority chain mistake when preparing its Patent Owner Response, requested permission to file a motion for leave to request a Certificate of Correction to amend the priority claim of the '017 patent.  The Board rejected Honeywell's request for authorization to file a motion for leave, indicating that Honeywell had failed to meet the requirements of 35 U.S.C. § 255, and the proceedings before the Board continued until the Board issued a combined Final Written Decision finding claims 1-20 of the '017 patent to be unpatentable.  Honeywell appealed to the Federal Circuit.

On appeal, the Federal Circuit wasted little time in "conclud[ing] that the Board 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."  The Court noted that pursuant to § 255, patentees may petition the Director to issue a Certificate of Correction to correct "a mistake of a clerical or typographical nature, or of minor character, which was not the fault of the Patent and Trademark Office," and that the patentee must show that the mistake "occurred in good faith" and that "the correction does not involve such changes in the patent as would constitute new matter or would require re-examination."  The Court also noted that when a patentee seeks to correct a patent during a post-grant proceeding, the patentee must seek authorization from the Board to file a motion, and if authorization is granted, file a motion with the Board, asking the Board to cede its exclusive jurisdiction so that the patentee can seek a Certificate of Correction from the Director.

The Court, however, explained that "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,'" adding that this "authority is expressly granted to the Director," and "[t]he 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."  In the instant case, the Court noted that:

[T]he Board did not review Honeywell's motion for leave to seek a Certificate of Correction from the Director to determine if Honeywell had demonstrated a "sufficient basis" that the mistake "may" be correctable.  Instead, the Board prohibited Honeywell from even filing a motion for leave.  The Board refused to authorize Honeywell to file a motion for leave because "at this juncture there has been a failure to show that [the] requirements of 255 have been met."

The Court determined that by requiring Honeywell show that the requirements of § 255 had 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 Court also pointed out that the Board lacked the information necessary to make a reasoned decision, and failed to provide an explanation or a reasoned basis for its decision, which impeded meaningful review on appeal.  Moreover, the Court pointed out that it could "find nothing in the record, or in the Board's conclusory decision, that warrants denying Honeywell's request to file a motion for leave to petition the Director for a Certificate of Correction correcting the priority chain of the '017 patent."

The Court therefore concluded that the Board had erred in rejecting Honeywell's request to file a motion for leave to petition the Director for a Certificate of Correction, and vacated the Board's Final Written Decision.  The Court also remanded to the Board, indicating that on remand the Board should authorize Honeywell to file a motion seeking leave to petition the Director for a Certificate of Correction, and then review Honeywell's motion for leave to evaluate whether prejudice to Arkema requires accommodation.

Honeywell Int'l v. Arkema Inc. (Fed. Cir. 2019)
Panel: Circuit Judges Newman, Reyna, and Hughes
Opinion by Circuit Judge Reyna