The Patent Office issued Honeywell a patent that required correction. The patent, according to Honeywell, did not include the proper claim for the benefit of priority to the filing date of an application that Honeywell had earlier filed. But before Honeywell noticed the error and tried to correct that priority claim, its competitor, Arkema, petitioned the Patent Trial and Appeal Board to institute a post grant review proceeding. Shortly after institution, Honeywell sought the Board’s authorization to file a motion for leave to obtain from the Patent Office’s Director a certificate of correction. After all, the Director often issues certificates to correct priority claims. But the Board refused authorization and ultimately canceled the patent. On appeal, the Federal Circuit vacated the Board’s decision, chastising the Board for abusing its discretion. Honeywell Int’l Inc. v. Arkema Inc., Appeals 2018-1151, 1153 (Fed. Cir. Oct. 1, 2019).
The statute, 35 USC § 255, empowers the Director, not the Board, to decide whether to issue a certificate of correction. But the Board exercises exclusive jurisdiction over a patent involved in post grant review. And the Office’s relevant rule, 37 CFR § 42.20(a), requires the patentee to file a motion to obtain the Board’s leave to seek a certificate from the Director. Before filing a motion, however, another rule, 37 CFR § 42.20(b), demands the prospective movant seek the Board’s authorization to file the motion—yes, the rule requires leave-for-leave! Ultimately, if the Board authorizes and grants the motion, the patentee can petition the Director to issue the certificate.
The Board and the parties discussed in two telephone conferences (both transcribed) the authorization Honeywell sought. Honeywell explained that it first noticed the error in the patent’s priority claim after institution and conceded that the error was neither clerical nor typographical, but determined that this was a minor error made in good faith and, thus, correctable. Honeywell did not, according to the Board, show the error was minor, even if made in good faith. So, the Board refused to authorize Honeywell from even filing a motion. With nearly a decade intervening the priority claim accorded and the one sought, Honeywell’s patent fell prey to the prior-art effect of its own intervening publications that documented the further developments of the claimed invention.
The Federal Circuit said the Board abused its discretion in requiring Honeywell to show during the conferences that it satisfied section 255. The Board also abused its discretion, said the court, by assuming the Director’s section 255 authority to decide whether to issue a certificate. But even in assuming that authority, said the court, the Board never reviewed any evidence of whether the error was inadvertent or made in good faith, or whether correction would prejudice Arkema. Unsurprisingly therefore, and as the court noted, the Board offered no “explanation or a reasoned basis for its decision” denying Honeywell’s request. Slip Op. at 9. Nothing, according to the court, warranted the Board’s conclusion, especially because the Board has previously permitted patentees to seek corrected priority claims via certificates of correction. The court vacated and remanded the case to the Board with instructions to authorize Honeywell’s motion and thereafter decide whether to grant Honeywell leave to obtain a certificate.
By denying Honeywell authorization to file a motion, the Board prevented development of a meaningful record for the Federal Circuit to review. Worse, the Board administered an expensive proceeding and forced the parties to endure an expensive appeal. Perhaps the Board should default to authorizing all motions seeking leave to obtain relief only the Director may grant. After all, the first rule regarding these proceedings, 37 CFR § 42.1, requires the Board to construe the rules “to secure the just, speedy, and inexpensive resolution of every proceeding.” A certificate of correction sometimes may obviate the need for a proceeding. For now, a prospective movant may at least engage a court reporter to transcribe the authority-seeking telephone conference so some record exists for appellate review.