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Federal Circuit Abused its Discretion by Rejecting Honeywell Request for Authorization to File Motion for Leave to Petition Director for a Certificate of Correction

On October 1, 2019, in Honeywell Int’l Inc. v. Arkema Inc., Appeals 2018-1151, -1153 (Fed. Cir. Oct. 1, 2019), the Federal Circuit held that the Patent Trial and Appeal Board (“the Board”) abused its discretion by requiring Honeywell Int’l Inc. (“Honeywell”) to show that the requirements of 35 U.S.C. § 255 were met before authorizing Honeywell to file a motion for leave to request a Certificate of Correction from the Director of the U.S. Patent and Trademark Office (“the Director”).

Honeywell owns U.S. Patent No. 9,157,017 (“the ’017 patent”) claiming priority to a list of applications dating back to 2002. Arkema Inc. (“Arkema”) filed two petitions for post-grant review (“PGR”) of the ’017 patent. Arkema argued that the priority applications listed on the ’017 patent did not provide written description support for the issued claims, and thus the claims of the ’017 patent were only entitled to a priority date of March 26, 2014, which rendered the ’017 patent eligible for PGR proceedings.

In the PGR proceedings, Honeywell contended it had inadvertently failed to make amendments to the priority applications listed on the ’017 patent during prosecution and sought authorization from the Board to file a motion for leave to request a Certificate of Correction from the Director. The Board rejected Honeywell’s request for the reason that “at this juncture there has been a failure to show that the requirements of 255 have been met.” After the Board rejected Honeywell’s request, the PGR proceedings continued, and the Board issued a final written decision holding that the challenged claims were unpatentable. Honeywell appealed.

On appeal, the Federal Circuit identified three procedural steps a patent owner subject to a post-issuance review proceeding must take to file a petition for a Certificate of Correction: (1) seek authorization from the Board to file a motion (37 C.F.R. § 42.20(b)); (2) if authorization is granted, file a motion with the Board asking the Board to cede its exclusive jurisdiction (37 C.F.R. § 1.323); and (3) if the motion is granted, petition the Director for a Certificate of Correction under 35 U.S.C. § 255.

The Federal Circuit held that the Board abused its discretion by requiring Honeywell to show that the requirements of § 255 were met when Honeywell was merely requesting authorization to file a motion for leave to petition the Director. The Federal Circuit also held that “the Board further abused its discretion by assuming the authority that § 255 delegates to the Director and deciding the merits of Honeywell’s petition for a Certificate of Correction.”  The Federal Circuit explained, “[§ 255] does not grant the Board with authority to determine whether a mistake in an issued patent is of ‘minor character’ or ‘occurred in good faith.’  That authority is expressly granted to the director.”   Thus, the Federal Circuit vacated the Board’s final written decision and remanded.