Honeywell International Inc. v. Mexichem Amanco Holding S.A. De C.V.
865 F.3d 1348
| Fed. Cir. | 2017Background
- Honeywell owns U.S. Patent No. 7,534,366 claiming heat-transfer compositions comprising at least ~50% HFO-1234yf and a polyalkylene glycol (PAG) lubricant.
- Mexichem Amaneo and Daikin requested inter partes reexaminations; the Examiner rejected many claims as obvious over Japanese patent Inagaki in view of Magid, Acura/Patentee admissions, or Bivens (all teaching PAG use with HFCs).
- The PTAB affirmed, concluding Inagaki taught HFO-1234yf and its compatibility with lubricants, and that combining it with known PAGs would have been obvious and reached by routine testing; the PTAB also treated stability/miscibility evidence as inherent and unpersuasive.
- Honeywell submitted evidence that HFOs and PAGs were viewed as unstable/reactive at the time, and that the claimed HFO-1234yf + PAG combination showed unexpected stability and miscibility (secondary considerations).
- Honeywell appealed, arguing (1) the PTAB erred on motivation/reasonable expectation of success and misapplied inherency, (2) the PTAB improperly rejected Honeywell’s secondary considerations, and (3) the PTAB relied on Omure (a reference) as a new ground of rejection without giving notice.
Issues
| Issue | Honeywell’s Argument | Mexichem/PTO’s Argument | Held |
|---|---|---|---|
| Whether PTAB properly found a motivation to combine references with a reasonable expectation of success | Combination was not obvious because art was unpredictable; HFOs and PAGs were thought unstable; unexpected stability/miscibility would not have been predicted | Inagaki taught HFO-1234yf and general compatibility with lubricants; PAGs were known for HFCs, so routine testing would yield the combination | Vacated and remanded: PTAB erred by misusing inherency and treating unpredictability as supporting obviousness; motivation/expectation must be reassessed with proper treatment of unpredictability and objective evidence |
| Whether PTAB lawfully treated claimed properties as merely "inherent" and thus not entitled to patentable weight | Stability and miscibility are properties of the combination and may be unexpected; inherency cannot negate unexpectedness | PTAB treated stability/miscibility as inherent properties of the refrigerant and not weighty | Vacated and remanded: Court found legal error—properties characterized as inherent required further analysis for unexpectedness and patentable weight |
| Whether PTAB properly discounted Honeywell’s secondary considerations for lack of nexus | Secondary evidence (unexpected results, long-felt need, skepticism) shows nexus to claimed composition | Because refrigerant HFO-1234yf was known, PTAB found insufficient nexus to the specific refrigerant+PAG combination | Vacated and remanded for reconsideration of nexus and secondary considerations consistent with correct inherency and expectation-of-success analysis |
| Whether PTAB relied on Omure as a new ground of rejection without notice | Honeywell had no notice or opportunity to address Omure because Examiner never relied on it; PTAB’s use of Omure constituted a new ground of rejection | Mexichem argues PTAB only used Omure to explain Examiner’s finding and to respond to arguments | Vacated and remanded: Court held PTAB did rely on Omure as a new ground; instructed PTAB to designate any continued reliance on Omure as a new ground so Honeywell gets notice/opportunity to respond |
Key Cases Cited
- In re Elsner, 381 F.3d 1125 (Fed. Cir.) (de novo review of Board legal determinations)
- In re Gartside, 203 F.3d 1305 (Fed. Cir.) (substantial-evidence standard for Board fact findings)
- Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034 (Fed. Cir.) (obviousness factors include motivation, reasonable expectation, objective indicia)
- In re Rijckaert, 9 F.3d 1531 (Fed. Cir.) (caution on using inherency in obviousness)
- PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186 (Fed. Cir.) (distinguishing cases where inherency was appropriate because properties were expected)
- Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir.) (unexpected results need show they were unexpected to skilled artisan)
- Rambus Inc. v. Rea, 731 F.3d 1248 (Fed. Cir.) (Board may not rely on new facts/rationales not presented by examiner; fair opportunity to respond required)
- In re Stepan Co., 660 F.3d 1341 (Fed. Cir.) (applicant must have notice of examiner’s rejection to be obligated to respond)