Arkema Inc v. Honeywell Intl Inc

1. Case Identification

• Case #: PGR2016-00012
• Patent #: 9,157,017
• Filed: February 22, 2016
• Petitioner(s): Arkema Inc. and Arkema France
• Patent Owner(s): Honeywell International Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Refrigerant Compositions
• Brief Description: The ’017 patent relates to heat transfer compositions and methods for use in automobile air conditioning (AAC) systems. The claimed compositions consist essentially of HFO-1234yf as a low-toxicity refrigerant and a polyalkylene glycol (PAG) lubricant.

3. Grounds for Unpatentability

Ground 1: Anticipation by Public Use - Claims 1-20 are anticipated under 35 U.S.C. § 102(a)

• Prior Art Relied Upon: Public use of specific vehicle models from Ford, Mazda, and Opel beginning as early as 2012, as evidenced by the Behr Hella Services “Refrigerant and Oil Filling Quantities” guide (2014-15).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the claimed subject matter was in commercial public use in automobiles prior to the patent's effective filing date of March 26, 2014. Specifically, the Ford Transit Custom Bus, Mazda CX 5, and Opel Mocca models used AAC systems charged with HFO-1234yf and a PAG lubricant in compositions that fall within the claimed limitations. For example, the Ford Transit Custom Bus used a charge of 73.3% HFO-1234yf and 26.7% PAG lubricant, anticipating claims requiring at least 70% refrigerant and "about 30%" lubricant. Petitioner contended that intrinsic properties recited in the claims—such as low toxicity, a Global Warming Potential (GWP) not greater than 150, and a capacity/Coefficient of Performance (COP) of about 1 relative to HFC-134a—were all inherent and well-known properties of these publicly used compositions.
  • Key Aspects: This ground asserted that the exact commercial embodiment of the claimed invention was already on the road in nearly half a million cars before the patent application was filed.

Ground 2: Anticipation by International Publication - Claims 1-12 and 14-20 are anticipated over WO '625

• Prior Art Relied Upon: WO 2007/002625 (“WO ’625”), a publication of a Honeywell international application.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that WO ’625, published in 2007, describes every limitation of the challenged claims. Unlike the challenged patent's priority documents, WO ’625 explicitly describes and provides a working example (Example 6C) of an AAC system using a heat transfer composition of HFO-1234yf and a PAG lubricant. The reference taught compositions with "at least about 90% by weight of HFO-1234yf," satisfying the "at least about 50%" and "at least about 70%" limitations. It further disclosed that PAGs are "highly preferred" lubricants for AAC applications in amounts of "about 30 to about 50 percent." WO ’625 also expressly reported that the HFO-1234yf composition achieved a capacity and COP of approximately 0.95 and 0.96 relative to HFC-134a when operating at a condenser temperature of "about 150°F," directly mapping to the performance limitations of the claims.

Ground 3: Obviousness over Industry Publications - Claims 1-20 are obvious over Minor & Spatz and the ’882 patent

• Prior Art Relied Upon: Minor & Spatz (a 2008 SAE symposium paper titled “HFO-1234yf Low GWP Refrigerant”) and the claims of Patent 8,065,882 (’882 patent), assigned to Honeywell.

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Minor & Spatz identified HFO-1234yf as a "global sustainable solution for automotive air conditioning," reporting its low toxicity, low GWP of 4, stability, and performance "within 4-8% of R-134a" when used with PAG lubricants in bench tests of AAC components. The ’882 patent claims, which were prior art, recited heat transfer compositions for AAC containing "about 5% by weight to about 99% by weight" of HFO-1234yf and a PAG lubricant. The ’882 patent also claimed compositions with at least 70% HFO-1234yf and having a capacity and COP "of about 1" relative to HFC-134a. Together, these references explicitly disclosed all components, properties, and performance characteristics of the claimed invention.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA), facing impending regulatory changes mandating low-GWP refrigerants, would have been motivated to combine the general teachings and successful test results from Minor & Spatz with the specific compositional ranges and performance data claimed in the ’882 patent. This combination represented a straightforward optimization of a known, leading solution for AAC systems.
  • Expectation of Success: A POSITA would have had a high expectation of success, as Minor & Spatz demonstrated the suitability of the HFO-1234yf/PAG combination, and the ’882 patent provided specific, successful compositions within that framework.

• Additional Grounds: Petitioner asserted additional challenges under 35 U.S.C. § 112, arguing that the specification does not enable the full scope of the claims without undue experimentation and that key claim terms related to performance are indefinite.

4. Key Claim Construction Positions

• "low toxicity refrigerant suitable for use in automobile air conditioning": Petitioner argued this term should be construed as "a refrigerant that has low acute toxicity as measured by inhalation exposure to mice or rats." This construction was based on the specification's limited disclosure on toxicity and was intended to counter the Patent Owner's arguments during prosecution that the term implied broader, unspecified chronic toxicity requirements.
• "no substantial acute toxicity...": For the purposes of the proceeding, Petitioner proposed this phrase means "essentially no acute toxicity level as measured by inhalation exposure to mice and rats," based on the common and ordinary meaning of "substantial" since the specification provided no specific definition or threshold.
• "usable with refrigerant... (HFC-134a)": Petitioner argued this means "capable of being used with HFC-134a," based on the plain and ordinary meaning of "usable." This construction was important for demonstrating that prior art AAC systems tested with HFC-134a met this limitation.

5. Key Technical Contentions (Beyond Claim Construction)

• Ineffective Priority Claim: A central contention of the petition was that the ’017 patent was not entitled to the priority date of its earlier-filed applications. Petitioner argued that these prior applications, filed before March 16, 2013, lacked adequate written description and enabling disclosure for the specifically claimed invention of HFO-1234yf combined with a PAG lubricant for use in AAC. The priority documents were alleged to contain only generic disclosures of heat transfer fluids, with only a passing, non-enabling reference to being "adaptable for use" in AAC. Therefore, Petitioner contended the patent’s effective filing date was its actual filing date of March 26, 2014, making it subject to Post-Grant Review and rendering intervening publications and public uses available as prior art.

6. Relief Requested

• Petitioner requested institution of post-grant review and cancellation of claims 1-20 of the ’017 patent as unpatentable.