PTAB

PGR2016-00011

Arkema Inc v. Honeywell Intl Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Refrigerant Compositions for Automobile Air Conditioning
  • Brief Description: The ’017 patent claims heat transfer compositions for use in automobile air conditioning (AAC) systems. The compositions consist essentially of the refrigerant 2,3,3,3-tetrafluoropropene (HFO-1234yf) and a polyalkylene glycol (PAG) lubricant.

3. Grounds for Unpatentability

Ground 1: Obviousness over Inagaki, Uemura, Tapscott, and Magid - Claims 1-20 are obvious over Inagaki in view of Uemura, Tapscott, and Magid.

  • Prior Art Relied Upon: Inagaki (Japanese Patent Application Publication No. H4-110388), Uemura (a 1992 conference paper), Tapscott (a 2000 journal article), and Magid (Patent 4,755,316).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the claimed composition is a predictable combination of known elements to solve a known problem. Inagaki taught using hydrofluoroalkenes, including HFO-1234yf, as low ozone-depletion-potential (ODP) refrigerants for use in AAC systems. Inagaki disclosed that HFO-1234yf has a Coefficient of Performance (COP) and cooling capacity equal to or better than R-12, the industry standard refrigerant at the time. Uemura taught that hydrofluorocarbon (HFC) refrigerants like HFO-1234yf are immiscible with mineral oil and require synthetic lubricants, such as PAGs. Since PAGs were the well-established, industry-standard lubricant for the then-current refrigerant R-134a, it would have been obvious to pair HFO-1234yf with a PAG lubricant. Magid disclosed using PAG lubricants with HFC refrigerants in AAC systems and taught weight ratios of refrigerant-to-lubricant (preferably 99/1 to 70/30) that encompass the ranges recited in dependent claims. Finally, Tapscott taught that fluoroalkenes as a class have very low Global Warming Potential (GWP) and that close structural analogs of HFO-1234yf have no substantial acute toxicity, rendering the claimed GWP and toxicity limitations obvious.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine these references to address the well-known industry need for a new AAC refrigerant driven by environmental regulations. The phase-out of R-12 (due to high ODP) and the subsequent pressure to replace R-134a (due to high GWP) created a clear market demand for an environmentally friendly, high-performance alternative. Inagaki provided a promising candidate refrigerant (HFO-1234yf), and Uemura and the established state of the art provided the necessary, standard lubricant (PAG) for such a refrigerant class. A POSA would have been motivated to combine the leading refrigerant candidate with the standard lubricant for that application to create a functional system.
    • Expectation of Success: A POSA would have had a high expectation of success. Inagaki demonstrated that HFO-1234yf possessed the required thermodynamic properties (COP and capacity) for AAC applications. Uemura and general industry knowledge confirmed that PAGs were compatible with and the standard choice for HFC-type refrigerants. The low toxicity and low GWP of HFO-1234yf were also predictable based on its chemical structure and the teachings of Tapscott regarding its close analogs and chemical class. The combination was a straightforward application of known principles and components to a recognized problem.

4. Key Claim Construction Positions

  • "low toxicity refrigerant suitable for use in automobile air conditioning": Petitioner proposed construing this phrase to mean "a refrigerant that has low acute toxicity as measured by inhalation exposure to mice or rats." This construction was based on the patent’s specification and was intended to counter the Patent Owner's prosecution argument that the term implies a stricter "Class A toxicity" standard, which includes chronic toxicity data not disclosed in the prior art or Honeywell’s own priority applications.
  • "an automobile vapor compression air conditioning system usable with refrigerant... (HFC-134a)": Petitioner argued for the broadest reasonable construction, meaning a system "capable of being used with HFC-134a." This construction frames any AAC system designed for the contemporary standard (R-134a) as meeting the claim limitation.
  • "stable": Petitioner asserted that the Patent Owner acted as its own lexicographer, defining "stable" in Example 3 of the patent to mean a composition with "minimal change in the appearance of the contents of the tube" when tested in the presence of aluminum, steel, and copper.

5. Key Technical Contentions (Beyond Claim Construction)

  • Lack of Written Description and Enablement in Priority Applications: A central contention of the petition was that the ’017 patent is not entitled to its claimed priority dates before March 26, 2014. Petitioner argued that Honeywell’s prior applications failed to provide adequate written description or enablement for the specifically claimed invention: a composition of HFO-1234yf and PAG for use in the "distinct technical field" of AAC systems. The priority applications were alleged to contain only generic disclosures of refrigeration systems and a single, vague reference to compositions being "adaptable for use" in AAC, which Petitioner characterized as a mere "wish or plan" rather than a demonstration of possession of the invention. This argument was critical, as it sought to establish the ’017 patent as an AIA patent subject to Post-Grant Review (PGR) and to make intervening prior art available.

6. Relief Requested

  • Petitioner requested institution of Post-Grant Review and cancellation of claims 1-20 of the ’017 patent as unpatentable under 35 U.S.C. §103.