Director Determinations Cannot be Made by an AIA Trial Panel

Motion practice in AIA trial proceedings is typically limited to the handful of motions that may be filed as  a matter of right. (Pro hac, Joinder, Exclude, Amendment).  Prior authorization must be received from the assigned APJ panel to file any other motion.  Such authorization is usually pursued via a party teleconference with the Board.  To date, these teleconferences have been conducted as a motion hearing of sorts where the panel considers the merits of the requested relief before granting authorization to file.  In denying authorization to file, the Board essentially decides the merits of the requested motion.  Recently a non-precedential decision of the  Federal Circuit has frowned upon this practice, finding that Motions for Additional Discovery may be filed as a matter of right.

In a case yesterday, the Court again knocked the practice of deciding issues that have not been fully developed via motion practice.

In Honeywell Int’l Inc. v. Arkema Inc., Honeywell requested permission to file a motion for leave to request a Certificate of Correction. The assigned panel held two teleconferences to discuss the request/opposition with the parties. The Board determined Honeywell failed to show that the requirements of 35 U.S.C. § 255 had been met and refused to grant authorization to file the motion.

Upon review, the Federal Circuit noted that the Board prohibited the filing of a motion for leave because it believed that “at this juncture, there has been a failure to show that [the] requirements of 255 have been met,” and that Arkema would have been prejudiced by the filing of such a motion. The Court found this to be an abuse of discretion because authority to correct a patent was statutorily granted to the Director and had not been delegated to the Board.

The Court explained (here):

[A] patent owner subject to a post-issuance review proceeding must take three steps in order 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 so that the patentee can seek a Certificate of Corre-tion from the Director, 37 C.F.R. § 1.323; MPEP § 1485; and (3) if the motion is granted, petition the Director for a Certificate of Correction under 35 U.S.C. § 255. E.g., Plastic Dev. Grp., LLC v. Maxchief Investments, Ltd., No. IPR2017-00846, Paper No. 16 at 2 (P.T.A.B. Nov. 13, 2017). After those three steps are completed, the Director—not the Board—will evaluate the merits of the patentee’s petition, including whether the mistake is of “minor character” or “occurred in good faith.” See 35 U.S.C. § 255.

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.” 35 U.S.C. § 255. That authority is expressly granted to the Director. Id. The 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. 37 C.F.R. § 1.323; MPEP § 1485.

Most interestingly for practitioners, the Court explained that whether or not sufficient basis exists (correctable mistake) to support the Patent Owner’s request is an appropriate determination for the Board to deny such a request.  But, that,

the 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.”  Specifically, the Board determined that—based solely on the two telephonic hearings—Honeywell “failed to show that the minor character prong has been met.”

.  .   .   . [B]y evaluating the merits of Honeywell’s § 255 request when Honeywell was merely requesting authorization to file a motion for leave to petition the Director, the Board lacked the information necessary to make a reasoned decision.   At that stage, the Board had not seen the language of Honeywell’s proposed correction .   .    .  Nor had the Board seen any evidence of whether the mistake was inadvertent and made in good faith or whether the correction prejudiced Arkema.

The Board also failed to provide an explanation or a reasoned basis for its decision.  The Board provided no explanation for its conclusion that Honeywell “failed to show that the minor character prong has been met” or its conclusion that prejudice to Arkema required denial of Honeywell’s request to file a motion.  This failure impedes our meaningful review on appeal.

(emphasis added; internal citations omitted)

Albeit in slightly different contexts, the Board has now twice faulted the Board’s practice of denying motion practice on a given issue. This time commenting on the limited value of telephonic hearings in creating a meaningful record for review.